Can foreign applicants file US utility patent applications?
Inventors located outside the US can file US patent applications. Foreign inventors, however, must be careful to follow the patent laws of the country in which the invention was made. While US patent law does not forbid foreign applicants from applying for US patents, the foreign country in which the invention was made might have strict laws about where the first patent application must be filed.
Are you a foreign business looking to apply for a US patent? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
Where was the invention made?
Many governments require that a patent for an invention made in their country must first be filed in their country. For example, an invention made in China must first be filed with the Chinese patent office. For an invention made in China, you cannot file the first patent application with the USPTO.
In most cases, each region’s patent office will routinely issue a foreign filing license that will enable the applicant to file patent applications abroad.
When is the deadline to file a US utility patent application?
The deadline for filing a US utility patent application will vary depending upon whether a foreign utility application has been filed. The following deadlines apply when an applicant wants to benefit from the earlier filing date of their foreign utility patent application.
If a foreign utility patent application has been filed, then a US utility patent application must be filed within 12 months of the foreign filing date.
If a PCT application has been filed, then a US national stage application must be filed within 30 months of the priority date.
Can a foreign applicant file a US utility patent if more than one year has passed from the foreign filing date?
Suppose more than 12 months have passed from the foreign filing date. A foreign applicant can still file a US patent application without the benefit of the earlier foreign filing date.
There is one caveat to keep in mind. A one-year grace period is provided for filing US patents on any inventions that have already been publicly disclosed.
Example: Foreign Patent Owner Wants to File a US Utility Patent Application
Let’s use an example. Suppose a China company filed a China utility patent application for a new product concept two years ago.
It’s too late to claim priority to the China application since more than 12 months have passed from the foreign filing date. Can they still file a US utility patent application? It depends. Remember that the US has a one-year grace period.
Many patent offices will publish a pending utility patent application around 18 months after the filing date. In our example, let’s assume the China patent application was published about 6 months ago (i.e., 18 months after the filing date). The publication of their China patent application will not block them from filing a US patent application since it was within the one-year grace period.
However, what if the company launched the product 14 months ago? In that case, this company would not be able to file a US patent since the public disclosure occurred more than a year ago. It does not matter if the product launch was made in the US or a foreign country, as long as it was made public.
Is there a duty of disclosure in all US patent applications?
The US imposes a duty to upon applicants to disclose all known relevant prior art in all US patent applications. Therefore, any prior art in the record of a counterpart foreign application should be disclosed to the USPTO in an Information Disclosure Statement (IDS).
Need help in filing a US utility patent application?
Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file your US utility patent application.
