Maiorana, P.C.

What Does My U.S. Patent Cover?

A U.S. patent allows you to enforce the rights defined by your claim against others. The rights include the ability to prevent someone else, or another company, from making, using, or selling your invention. U.S. patent rights also prevent others from importing an infringing product into the United States.

The United States economy is still a dominant portion of the world economy. The gross domestic product (GDP) is approximately 25% of the global economy. It is very likely that if a potential infringer tried to “knock off” your invention, their product would ultimately get imported into the United States. Under this scenario, you would have rights to prevent such importation, and potential rights to enforce against the U.S. based activities through an ITC 337 action.

While this sounds fairly comprehensive, there are limits. For example, your U.S. patent would not let you enforce against a party that made a product in one country (for example, China), and sold it in another foreign country (e.g., Europe). This is where your international filing would come into play. A fairly comprehensive world coverage can be implemented by filing in Europe, China, Japan, and Taiwan. For the European phase, additional countries would need to be selected after passing the European examination. These countries are typically the U.K. and sometimes Germany or France. The individual countries depend on the particular business you are in.

The downside of international filing is the cost. Each country tends to cost between $2,000-$7,000 for the initial filing, with additional annuities that accumulate, sometimes on an annual basis. I discuss that here. A PCT application allows you to defer the filing in the individual countries by 30 months from your original priority date. I discuss that here.

You can always ask one of our Patent Lawyers for additional information on filing in foreign countries. MI - 586-498-0670 CA - 408-890-6549