Shop4Patents

Question: My company owns the rights to a product that has a US patent and trademark.
I am currently receiving some interest from overseas buyers, but the product is not internationally
protected. The inventor did not register the patent internationally and the patent is a few years old. I am
considering filing a trademark application under the Madrid protocol but wondered if there is anyway to protect the product from being copied overseas. Are there such things as international trade agreements or non-disclosures that would prevent foreign parties from copying the formula and packaging?

Answer: Hello Rob, This is Steve replying.
Only if we could see into the future…. We would know whether to
invest in patenting inventions overseas or not. What I recommend to my clients is that they file for an International Patent Application via the Patent Cooperation Treaty (PCT) after filing for their patent applications in the United States.

For a relatively small fee, one can file an International Patent Application under the Patent Cooperation Treaty (PCT). This opportunity is available for 12 months
following the filing date of your U.S. Patent Application (Provisional or Non-Provisional). Although different scenarios may allow filing after 12 months, these rarely occur so I will not discuss them here.

You now are asking yourself, “That’s great… but what will the PCT
Application do for me”? Without the PCT Application you have 12 months
to file in most other foreign countries. This could be expensive to
file for example in Canada, United Kingdom, Germany, France, Japan,
China, and so on…. All this when you do not even know yet whether
your U.S. Patent Application will be granted or not because it has not
yet even been examined. By filing the PCT Application, you buy
yourself with almost all countries at least 30 months from your
earliest filing date. In most cases, you will at least have received
one Office action from the U.S. Patent Office so you will be able to
assess the risk of moving forward with patenting overseas. Recall
that filing overseas requires paying to file in each foreign country
or authority (e.g., European Patent Office)where patent protection is desired.

In summary Rob, it sounds like it is too late to worry about patenting
overseas. Perhaps you have a new feature to your invention for which you
could file a new patent application. You can always contact my office
via calling 877-279-3003 or the website, www.youinventit.com and then
we can evaluate your best options.

As to the trademark matter, there are possibilities there for
International protection particularly as you mentioned using the Madrid
Protocol. This could help protect your packaging.