Defending Patents from Overseas Infringers

In the global economy, innovators must stayvigilant against copycats not only in the countries where they work, but also in far-away places. Over the years policymakers and diplomats have crafted a variety of international rules to address this problem. Inventors in America are often faced with questions about how much to invest in overseas patent applications and defense.

The limited geographic scope of a U.S. patent

Perhaps the first thing to understand about an invention that is patented in the United States is that its patent protections only apply within the boundaries of the United States and its territories. Someone with a valid U.S. patent can prevent others from exploiting an invention—making it, using it, selling it, offering it for sale, or importing it—only within the U.S. This raises some important considerations. First is the problem of jurisdiction. A U.S. court will not hear cases against defendants over which the court does not have personal jurisdiction, or where the defendant’s activities have not crossed into the United States. In simplified terms, this means that if the infringer is operating entirely outside the United States, it may be difficult to establish why a court should hear the case, because the court may have no authority to make a binding judgment against an overseas defendant, or because the defendant’s activities haven’t met the geographical test for infringement under U.S. law.

A second important consideration is that a U.S. court may lack the ability to provide the plaintiff with a meaningful remedy. An injunction that prevents infringing behavior within the U.S. may address only a small part of the problem. For example, saythe defendant is located in Myanmar and selling knockoff products primarily in India and China. The holder of the U.S. patent sues and is able to get an injunction to prevent the infringer from selling its products in the United States, but the real market for the products is not here, but abroad. A similar problem may arise for money damages. A plaintiff with a big cash judgment may find collection impossible if the defendant has no assets within reach of the U.S. legal system.

Diving into the diverse world of overseas patent law

Whether the limits of U.S. patent protections really matter will depend on the holder’s goals for the patent. In some cases the activitythat falls within the reach of U.S. courts is so lucrative that the early rise of a copycat that is operating exclusively overseas may not matter. But in an increasingly globalized marketplace the value of overseas markets is no longer an insignificant component of a patent’s potential. Some markets, like China, India, and the EU, may be large and important enough to warrant serious consideration in a business’s overall patent strategy.

As a rule, an invention must be patented in each country where the owner wishes to enforce its rights. There is no global patent registry with universal applicability. But there are treaty regimes that facilitate patents in foreign jurisdictions:

• The Patent Cooperation Treaty (PCT), made effective in 1978, includes over 150 signatory countries. It harmonizes elements of the patent laws of member states and, crucially, allows a patent filing in one member state to be simultaneously submitted to the patent regulators in other countries. The PCT prescribes a single, “international” application form, which is submitted to each jurisdiction where the inventor wishes to claim a patent (including the United States). Following this “international stage” is the “national stage” where each country’s patent office reviews the application according to local law. We can help you with planning and protecting your innovations. Contact us to learn more. CONTACT US

• The Paris Convention is a treaty among 177 member countries. A significant benefit of the treatyis that an inventor can use its filing date in one country to establish priority in another. The applicant for a U.S. patent has up to one year for most patents, or six months for design patents, to use its U.S. filing date in other signatory jurisdictions. The Paris Convention also contains the principle of national treatment, which ensures that foreign filers are treated in the same way as domestic filers.

The PCT and Paris Convention are joined by a host of other IP treaties with varying levels of participation. The World Intellectual Property Organization (WIPO) administers many of them, and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is another important one. For inventors the first thing to understand about this complex mix of treaties is that the goal of many of them is to harmonize patent laws around the world. To some degree this means that patent systems in many countries resemble that of the United States in important respects. But substantial local differences remain.

Thinking about international patent strategy

For inventors the global patent arena can be daunting. Coming to grips with how an invention fits into the interlocking web of treaties and overseas applications can make heads spin. There are three main ideas that inventors may want to think about:

• First, as part of the process of preparing a U.S. patent application an analysis of global patents may be warranted to ensure that no one can submit a priority claim under the Paris Convention, relying on an overseas patent.

• Second, hiring a specialized service company to monitor overseas patent activity may be warranted to ensure that if a competitor files an infringing application in a foreign jurisdiction a choice can be made whether to pursue registration using the Paris Convention priority.

• Third, the process of obtaining patents overseas can be complicated, expensive, and time intensive. Even with the PCT’s “international stage” application, inventors must still comply with local rules.

The good news is that the international aspect of patents is not new. Patent lawyers around the world have developed networks to facilitate the process for clients. With more than 14 years of experience providing patent counsel to Silicon Valley businesses, Christopher Peil is well versed in the international dimension of patent defense. We help clients craft strategies to protect their inventions’ value at home and abroad. To find out how we can help your business.