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International Patents: Managing Patent Rights outside of US

It is a common misnomer that you can apply for an international patent. Patents must be filed, examined and issued in each country where patent protection is sought. However, the right to file a foreign patent application is automatically preserved by treaty for 12 months. This time can be extended by a PCT request for up to 30 months. During this time, you can determine whether patent protection may be valuable to pursue in any of the participating foreign countries.

A US patent application provides a licensable, transferable property right in many foreign countries during the first 12 months. Patent rights under the U.S. application can be sold, transferred or licensed in any country that participates in international patent treaties.

Before the first 12 month expire, these patent rights may be extended for up to 30 months by filing a Patent Cooperation Treaty (PCT) request. The PCT request will be published 18 months after the original patent application filing date. About the same time, you will receive an International search report. The International search report will be a good predictor of your U.S. search. You may file a response to the International search report, including possibly amendments.

Before the first 30 months expire, you must file a patent application in each country where you will seek patent protection. You may file a foreign patent application through your U.S. patent attorney, who will correspond with foreign counsel to secure foreign patents. To file a patent application in a foreign country, the patent application must be amended to conform to local patent laws. The patent application may go through an examination process, similar to the US examination system. The patent application may be subject to annuities or VAT taxes. The procedures, costs and rights vary from country to country.

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