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Questions regarding international patent protection

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Questions regarding international patent protection

Post  Admin on Sat 17 Sep 2011 - 9:28

Gerry emailed us a couple of very good questions we thought would be helpful to everyone so we wanted to post his questions and the answers. Below is what Gerry asked.

I have a few questions regarding international patent protection that I was hoping someone here could help me understand.

I know the USPTO rules state that a person has 1 year from the time their idea is made public or offered for sale/public use to file a patent application in the USA.

Is it true that a person immediately loses the right to file for international patent protection once the disclosure is made or it's offered for sale/public use in the USA? If this is the case, does this mean that any individual or entity in a foreign country that wanted to copy the idea and sell a knock-off product in their country or another country could do so? If this is also true, could they legally sell the knock-off product in the USA, or does the US patent prohibit them from doing so, despite the fact that they can legally manufacture and sell a knock-off in the international community?

Thank you for the help!

Gerry

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Re: Questions regarding international patent protection

Post  Tran on Thu 29 Sep 2011 - 10:03

Hi Gerry
In certain countries, once the product is available for sale any where in the world, that product can be used as prior art against the inventor. Thus, it is possible for a person to immediately loses the right to file for international patent protection once the disclosure is made or it's offered for sale/public use in the USA. In those countries, any individual or entity in a foreign country that wanted to copy the idea and sell a knock-off product in their country or another country could do so if the product is on sale in the US. However, if you have a US patent, they cannot import, use, or sell the knock-off product in the USA.
Hope that helps
Bao Tran, Esq.
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What countries do? Is there a list of them?

Post  hungrrrry on Tue 5 Jun 2012 - 16:14

What countries then, would honor the US patent outside the USA for use and/or patent, by the original inventor (since the prior art would be his own), in their own country? Is there a listing somewhere? What is the likelihood China and/or India are such a country?

Lastly, If I have only a provisional application for patent on a product can I still have it manufactured oversees and then brought back to the USA for distribution?
Thank you!
Barry
hungrrrry


Last edited by hungrrrry on Tue 5 Jun 2012 - 16:15; edited 1 time in total (Reason for editing : missed a key word)

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Re: Questions regarding international patent protection

Post  blakesq on Tue 12 Jun 2012 - 9:41

No country that I am aware of honors a USA patent outside the USA. To enforce a patent in a country, you need a patent in THAT country. China and India only "honor" Chinese and Indian patents, respectively.

With respect to your provisional application question, yes. In fact, you do not need a patent application, or a patent to have it manufactured overseas and then brought back to the USA. It sounds like you should talk to a patent attorney!


hungrrrry wrote:What countries then, would honor the US patent outside the USA for use and/or patent, by the original inventor (since the prior art would be his own), in their own country? Is there a listing somewhere? What is the likelihood China and/or India are such a country?

Lastly, If I have only a provisional application for patent on a product can I still have it manufactured oversees and then brought back to the USA for distribution?
Thank you!
Barry
hungrrrry

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Re: Questions regarding international patent protection

Post  hungrrrry on Tue 12 Jun 2012 - 13:55

blakesq wrote:No country that I am aware of honors a USA patent outside the USA. To enforce a patent in a country, you need a patent in THAT country. China and India only "honor" Chinese and Indian patents, respectively.

With respect to your provisional application question, yes. In fact, you do not need a patent application, or a patent to have it manufactured overseas and then brought back to the USA. It sounds like you should talk to a patent attorney!


hungrrrry wrote:What countries then, would honor the US patent outside the USA for use and/or patent, by the original inventor (since the prior art would be his own), in their own country? Is there a listing somewhere? What is the likelihood China and/or India are such a country?

Lastly, If I have only a provisional application for patent on a product can I still have it manufactured oversees and then brought back to the USA for distribution?
Thank you!
Barry
hungrrrry

Thank you blakesq!
One more question on the topic...Given the possibility that there is no prior art on a product, lets say I decided to make my product public internationally the very day the P.A.P. is intiated in the USA on said product...I can sell anything I don't have a patent on (unless I get sued for infringement somehow) thus, by making this available in all these countries I am not (to my knowledge) infringing on anyone but myself, technically! Would I still be able to pursue applying for and receiving the patents (on this product) in those other countries. Is the likelihood yes? Am I given priority (12 months or what have you) in those other countries due to first public exposure there as well, from that date of first public delivery/advertisement, etc.? Or, does this disqualify me in some crazy way?
If you could add some insight here, I'd very much appreciate it. Part of me would be satisfied with just working it here in the US, but the greedy part of me thinks "the grass is always greener..."

As for getting a PA...I am still contemplating it but I want to understand it before I discuss it with a PA. Grey area disturbs me and I hate to burn money...grey area just fans the flames. At this stage I am just contemplating PAP or go straight to a non-provisional utility patent. Not covering this with the hope I make the fast buck is not a good plan for me.

Thank you
Barry

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