Category Archives: Patents

An International Economy Means I Need An International Patent, Right?

Now that your interest is piqued, let me clarify that if you’re new to the world of patents, an international patent does not exist.  Patents must be filed on a country-by-country basis.  However, there is an international patent application (PCT), and filing with the World Intellectual Property Organization (WIPO) that allows you 30 months to decide which individual countries are the best fit for your product and business model.

However, the question of how to protect your product in an international marketplace is increasingly common now that some of the major online retailers such as alibaba.com and aliexpress.com are based outside the United States.  Having the ability to sell your product to an international market can seem like the ideal opportunity. However, you may need protection from counterfeiters who also think that selling your product outside the United States is the ideal opportunity—and trust me, they won’t be sending you revenue.

If you’re anticipating working with an overseas manufacturer, you may need to obtain a patent in that country.  The other situation to consider is if you are already manufacturing your product in another country, and want to begin sales in the United States.  I’ll also discuss this scenario further in this article.

Before selling your product outside the United States, you need to take into account the vastly different cultural and market preferences outside the country.  As anyone who has ever gone into an international supermarket knows, packaging, taste and product selection can differ greatly from what is available on shelves in the U.S.  You need to conduct some market research to ascertain the depth of product demand before making the leap.  Some countries may be culturally similar to the United States, and your product would only require minor modifications.  Additionally you will need to develop relationships with local distributors, which can be another substantial hurdle to overcome.  Before investing millions in manufacturing your product for an international market, you will want to conduct this extensive research.

The irony is that even if you have no intention of selling your product internationally, there may be a company specializing in manufacturing counterfeit merchandise who thinks otherwise.  A trend I’ve seen more and more is inventions, which have been illegally copied, appearing on Chinese domestic (Taobao) and international (Aliexpress) online retail websites.  Since China is the second largest market and manufacturer in the world, it does make sense that this would happen.  Fortunately, we can protect your interests with a China-based patent, respected by the online retailers, which gives us the legal “teeth” to ask for them to remove the counterfeit products from their websites.  I closely monitor those situations for my clients, (which does turn into a marathon game of Whack-A-Mole), but the quickest way to eventually erode market share in the United States is to let these counterfeiters continue.

Fortunately, the process of obtaining patent protection for your product outside the United States is made somewhat simpler thanks to the Patent Cooperation Treaty (PCT).  This provides a common patent application format accepted by the local patent offices of most countries of the world (except Taiwan) to meet a consistent set of standards which the participating countries have agreed to accept.  If you are considering manufacturing in Taiwan, you would need to file there directly before the one-year term of the U.S. provisional patent expires.

Here’s an overview of the timing for the process.  If you start with a U.S. provisional application, you have one year to get your PCT on file.  That moves the deadline out to 30 months from the date of the original provisional application to decide which countries to obtain a patent in.  Keep in mind that some countries require a translation if your original application is in English.

If your product is really taking off, you can file the PCT application immediately in the countries you are interested in.  However, most inventors find it takes longer than 30 months to develop a foreign market, and have to make the decision to file before success in the country is established.

Feeling stressed? The best part about working with me is that I will keep track of all of these details and deadlines for you along the way.

If you are an international inventor or manufacturer who is looking to expand into the United States, you need to talk to me before you make your product public anywhere in the world or offer it for sale in the U.S.  A point to consider is where to file the provisional application, either in the United States or your home country, and unfortunately, there isn’t an easy answer, each case needs to be discussed individually.  We will also need to discuss the adaptations you will need to make to enter the market, and there is a high probability that some of those modifications will be patentable as well.

 

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Nowotarski Argues Against Obviousness Rejections in the Post-KSR Era

Mark Nowotarski, Principal of Markets, Patents & Alliances L.L.C., will present new tools for
 overcoming “obviousness rejections” in patent applications, at this
year’s “Patent Forum 2009” in San Francisco. He will serve on the panel 
entitled “Redefining Obviousness in the Post-KSR Period: The 
Implications & Impact on Litigation.” Commonsense Approach Nowotarski will argue that, far from… Continue Reading

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