A patent application in the United States may serve as a basis for filing patents in foreign countries with the benefit of the US filing date. This is provided for under an international treaty called the Paris Convention. However, getting the benefit of the US filing date is not the only concern. A patent applicant should also be mindful of the procedural and substantive laws of the foreign countries that are important to its business.
For example, many countries exclude certain methods of medical treatments. In other words, what may be patentable in the US may not be patent eligible in a particular foreign country. With a knowledge of which countries the US patent might be further filed, our attorneys can assist in finding alternative ways to protect such a medical treatment, thus rendering it effectively protected in those foreign countries through the US application. Sometimes this holds true even if protection for a particular aspect of the method in the US is not possible.
There are many variations on this theme with different types of technologies and different countries. The simplest way to proceed is to figure out the range of possible foreign filings for the initial US patent application and then draft that first application with all the relevant US and foreign laws in mind. Our firm has several experienced intellectual property attorneys with foreign filing experience who can help you navigate these international complexities to your – and your company’s – ultimate benefit.