Pursuing international IP protection

The United States allows patent applicants a one-year grace period between the first public disclosure of an invention and the patent application filing date. During this grace period, an inventor or an inventor-originated prior public disclosure is not available as prior art against the invention claimed in the inventor’s later filed patent application. Many other countries, however, will not grant patents in cases where public disclosure precedes the patent application filing date. Because of this difference, companies that take advantage of the U.S. grace period may find themselves ineligible to receive foreign patent protection. For a comparison of the grace period or lack thereof in Europe, Japan, the Republic of Korea, the People’s Republic of China, and the United States, see the IP5 Offices’ Catalogue of Differing Practices.

Before you file or cause or authorize to be filed in any foreign or international IP authority an application to protect an invention made in the United States, you must first obtain appropriate authorization from the USPTO. The ways such authorization may be obtained are: (1) filing an application with the USPTO (which is considered to include a petition for a foreign filing license) and waiting for a foreign filing license to be issued, (2) filing an express petition for the issuance of a foreign filing license, or (3) waiting six months after filing an application in the USPTO at which time a license on that subject matter is no longer required as long as no secrecy order has been imposed. The penalties for failing to obtain any necessary license to file an application abroad are set forth in 35 U.S.C. 182, 35 U.S.C. 185, and 35 U.S.C. 186 and include loss of patenting rights in addition to possible fine or imprisonment. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention that is subject to a secrecy order. See section 140 of the Manual of Patent Examining Procedure for more information on foreign filing licenses.

The Paris Convention for the Protection of Industrial Property is a treaty that provides, among other things, a “right of priority” for IP, including patents, industrial designs, and trademarks. When a patent applicant files a first application for an invention in one Convention Contracting Party, the applicant may file subsequent applications for the invention in any other Contracting Party within 12 months. These subsequent applications will be treated, subject to compliance with certain requirements, as if they had been filed on the same day as the first application. Hence, the subsequent applications are accorded “priority” over applications that other applicants may have filed in the time between the first and subsequent filings: the subsequent applications are treated as if they had been filed first. A similar “right of priority” is provided for trademarks, except that the subsequent applications must be filed within six months.

For more information on the Paris Convention, see Appendix P of the MPEP or the World Intellectual Property Organization (WIPO) website.

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For more information on the PCT, see:

• USPTO PCT webpage
• WIPO How to File your International Application
• WIPO PCT FAQ

To be entitled to file an international design application, an applicant must:

• Be a national of a Contracting Party or of a member state of an intergovernmental organization that is a Contracting Party (e.g., the European Union),
• Have a domicile or habitual residence in the territory of a Contracting Party, or
• Have a real and effective industrial or commercial establishment in the territory of a Contracting Party. 

For more information about the Hague Agreement, see WIPO's Hague – The International Design System webpage or read WIPO's "The Hague System for the International Registration of Industrial Designs: Main Features and Advantages."

A trademark owner may be able to use its USPTO trademark application or registration as the basis for obtaining trademark protection in other countries through the Madrid Protocol, a treaty formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. It allows trademark owners to apply for registration in any of the member countries (or intergovernmental organizations), through the filing of a single “international application.” The Madrid System is administered by the World Intellectual Property Organization (WIPO).

To utilize the Madrid System, the trademark owner first applies for or obtains a trademark registration in a country that is a member of the Madrid Protocol and which the owner is a national of, or is domiciled in, or in which the trademark owner has a real and effective industrial or commercial establishment. That application or registration can then serve as the basis (called the “basic application” and the “basic registration”) on which an international Madrid application can be filed.

The trademark in the international application must be the same as the one in the basic application or basic registration, and the goods or services identified in the international application must be the same as, or narrower than, the goods identified in the basic application or basic registration.  

When preparing the international application, the trademark owner identifies (“designates”) the country or countries that are Madrid members and in which it wishes to obtain protection, and submits the required fees.

Although WIPO administers the Madrid System, the trademark owner submits its international application directly to the trademark office that issued the basic registration or is reviewing the basic application. That trademark office certifies the international application to verify that the applicant, the trademark, and the associated goods or services in the international application are consistent with those in the “basic” documents and then forwards it to WIPO. WIPO, in turn, examines the application for compliance with certain formality requirements, an "international registration" is created, and WIPO then forwards a request for extension of the protection of the international registration to whichever countries the trademark owner identified in the application.  

Those countries then examine the application according to their own laws. If they find that the trademark is entitled to protection, they will issue an "extension of protection" of the international registration in their country. These extensions of protection have the same effect as if they were national registrations but which can be renewed simply by renewing the international registration at WIPO.

Note that if the basic application or registration is abandoned, canceled, or expires at the national trademark office within five years from the date of the international registration, the international registration and all of the extensions of protection will be canceled in each of the countries in which it was in effect. The date of the international registration is either:

• The date the national trademark office received the international application from the trademark owner, if WIPO receives it within two months of the date the national office receives it, or
• The date WIPO receives the application, if it receives it more than two months after the national office received it.

If you wish to file an international application via the Madrid System based on a USPTO application or registration, and to use that application to request protection in any other member of the Madrid Protocol, an online application is available in the Trademark Electronic Application System (TEASi).

For more information, see the USPTO's Madrid Protocol webpage.

Priority Document Exchange (PDX) is a program that allows applicants to avoid the fees and work associated with ordering and providing a certified priority document in applications. To obtain the “right of priority” under the Paris Convention, the applicant is required to provide a certified copy of the first application to each office where they file a subsequent application. This ordinarily requires the applicant to obtain separate certified copies of the original application (usually for a fee) and separately provide a certified copy to each subsequent office (frequently through a local attorney or agent, for a fee).

To relieve these burdens and costs, applicants can authorize participating IP offices to utilize the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) Exchange to enable the secure transmission of certified copies of priority documents. For patents and designs, this authorization can be provided to the USPTO on the application data sheet (ADS) form with the filing of the U.S. priority application. More information is available on the WIPO DAS webpage and the USPTO PDX webpage.