U.S. citizens who seek to expand their patent rights into foreign countries must be mindful that in most foreign countries, public disclosure of an invention is an absolute bar to seeking foreign patent protection. This rule is in sharp contrast to the U.S. law, which extends a one-year grace period to inventors who have publicly disclosed their invention. Thus, if an inventor has taken advantage of the United States one-year grace period, it is unlikely that valid patent protection can be obtained outside of the United States.

Consequently, it is important to consider the foreign patent protection issue before an invention is disclosed. There are a number of tactics that can be developed to defer and reduce the cost of obtaining foreign patent protection, without compromising the breadth of rights obtained. We work with our foreign associates to help our clients develop these strategies and maximize the protection obtained within each of our client's budgetary constraints.

The first step for any U.S. citizen who makes an invention in the U.S. is to file a U.S. application and seek an export license for the claimed invention. Once the invention is deemed not to be material to the national interests of the United States (which is the usual case), and an export license is granted, a U.S. inventor may file corresponding foreign patent applications.

One useful tool in deferring the costs associated with filing patent applications in many foreign countries is filing an International application under the Patent Cooperation Treaty (PCT) also known as a PCT application. Using the PCT procedures, a patent applicant can defer filing applications in about 130 countries around the world for 20 or 30 months after filing their United States patent application but still retain the rights associated with the United States filing date.

In order to obtain the benefit of the filing date of the United States patent application in foreign countries, applications must be filed in the foreign countries within one year of the United States application's filing date. When this is done, the effective date of the foreign filing is the date of the United States filing.