Legal Question in Intellectual Property in California

Patent Law & foreign filing

I have invented a process and I wish to file for a foreign patent before filing for a utility patent here in the United States. I am a citizen of the United States and I was wondering if I could file abroad first and skip getting the 'license to foreign file' altogether provided that I file for a patent here in America within 12 months of my date from the foreign filing.

Basically what I am asking is the following:

a) can a U.S. citizen be held criminally liable for filing a patent abroad before receiving the 'license to foreign file'; OR

b) will filing abroad before receiving the 'license' hurt the patent application in anyway or bar it from being issued?

Thank you


Asked on 10/03/07, 2:08 am

2 Answers from Attorneys
Amy Ghosh Law Offices of Amy Ghosh

Re: Patent Law & foreign filing

It is my understanding that as long as you file the US application within one year of foreign filing you should be fine.

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Answered on 10/05/07, 2:54 pm
Cathy Cowin Law Offices of Cathy Cowin

Re: Patent Law & foreign filing

My office does "soft IP" which does not involve filing patents (which requires that the attorney pass a special Patent Bar in addition to the regular bar exam) and I refer out patent filings. You should be aware that a patent lawyer should provide you with a "patenting strategy" relating to foreign filings. These filings can become expensive and should be tailored to your specific product and marketing plans to use your dollars wisely! If you would like a referral to a patent specialist, I would be happy to pass you along. By attempting to file in a foreign country without filing in the U.S., you may lose rights here and so I believe this would be a dangerous strategy.

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Answered on 10/03/07, 11:37 am


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