Is My Patent Protected?

Is my patent and/or trademark internationally protected? This is the question we posed to patent attorney Christopher DeBacker. Chris is an attorney at the Law Office of Mark Brown and has been our patent attorney at the Make48 competitions since season 1. Chris graciously wrote the following blog regarding international intellectual property and is your patent or trademark protected.

The answer is largely dependent upon when certain events occurred. Patents and trademarks
stem from territorial rights and are only applicable in the countries where they have been filed and are
only enforceable in those countries where granted. As long as an applicant follows these directions and
files their application within certain time windows, their application will be internationally pending once
it is filed.

One of the easiest mistakes to make is an untimely sale or public use of an invention prior to
filing a patent application. The United States does allow for an inventor to file for a patent application
on their invention up to one year after such an offer for sale or public disclosure, but most jurisdictions
outside of the United States bar an applicant the ability to file and obtain patents after the product has
gone on sale or was otherwise publicly made available (e.g. through a Kickstarter® campaign).
Disclosures by third parties will also cut off the applicant in the U.S. For those reasons, inventors should
file an application in their home country prior to selling their product or making public disclosures. Non-
disclosure agreements and “secret sales” may help to alleviate such a risk in some instances, best
practice would suggest filing an application prior to any such public use.

For utility patent applications, once an initial patent application is filed, most countries allow for
a patent application to be filed claiming priority back to the initial application for up to one year after
that initial filing date. This time limit can be extended by filing what is called a Patent Cooperation
Treaty (PCT) application within one year of the initial filing date of the application. While many
countries are members of the PCT, some are not. A list of member countries to the PCT can be found at
https://www.wipo.int/export/sites/www/pct/en/list_states.pdf, and more information on PCT filings
can be found at https://www.wipo.int/pct/en/. Generally, the PCT will extend the required time to file
patent applications in foreign countries for up to thirty (or in some instances thirty-one) months after
the initial filing date of the first patent application.

For design patent applications, applicants have only six months to file for foreign design
protection in other jurisdictions. While there is no PCT process for design patent applications, an
applicant can file under the Hague System to secure design patent rights in industrial designs in 69
contracting countries. A list of these participating countries can be found at
https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf.

While common law trademark rights only apply for the geographical area where goods or
services are being offered, trademark applications for Federal registrations have their own rules
regarding international protection. Generally the applicant must file in foreign jurisdictions within six
months of their original application to claim priority in their first filed application. Many countries,
including the U.S., require actual commercial use (sales) before a registered trademark will be granted.
An applicant can always file for a trademark application in a foreign jurisdiction after that six month
period; however they will not be able to claim priority back in their earlier application. There is also a
Madrid Protocol system similar to the PCT process for patents. Basic information on the Madrid process
can be found at https://www.wipo.int/madrid/en/how_madrid_works.html.

Chris’ practice encompasses all aspects of intellectual property protection. Chris has a background in construction and engineering. He has experience in all ranges of intellectual property protection, including software, agricultural, electrical, medical, as well as toys and consumer products. He enjoys working with start-up companies to protect their intellectual property.  He has contacts to help inventors with manufacturing and marketing their invention, as well as access to mentors in the Kansas City area for new inventors.  He has been involved with the Make48® inventor’s competition since 2016. To contact The Law Office of Mark Brown for more information visit their website at https://midwestip.com or call at (913) 248-4477

 

Leave a Reply

This site uses Akismet to reduce spam. Learn how your comment data is processed.