Article I, Section 8, Clause 8, of the United States Constitution grants Congress the enumerated power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Patents give inventors or applicants 20 years of monopoly in the US starting from filing dates. Patent rights are territorial and only enforceable in the granting countries. Thus a U.S. patent gives no rights outside of the U.S., however, a U.S. patent holder can block importation and sale, machine, manufacture or composition of matter in the U.S. and can sue for damages. Suit can be brought against foreign companies in U.S. federal district court or international trade commission (ITC), as long as the patent holder can serve the infringer by service of process.
Furthermore, if an infringer sells the infringing product to a third-party, and the third-party, directly or through a distribution chain, imports and/or sells the infringing product in the U.S., then the infringer, the third-party, the entire distribution chain, and end users may be liable for direct (importers, sellers, and end users) or indirect infringement (the source of the product and portions of the distribution chain not involved in importing or selling the product).
Services provided via the Internet utilizing a patented new or useful process are a special case, where there is no literal importation, but there could be sales or offers to sell in the U.S. A suit in U.S. federal district court is possible in such a case.
If you want to take actions against overseas patent infringement, and particular foreign markets (such as Japan, China, South Korea, Australia, Canada, or European countries) are of interest to you, you can and you should file patent applications in individual countries of interest under the Patent Cooperation Treaty (PCT).
Foreign applications can be filed directly with individual countries via Paris Convention, or initially via a PCT World Intellectual Property Organization (WIPO) patent application, followed by instructions to enter the national stage in countries of interest. Both paths have their advantages and disadvantages. Filing patent applications overseas or even domestically in US are not do-it-yourself (DIY) projects. There are so many pitfalls on the path from patent applications to granted patents.
PCT’s initial cost could be high, however, fees during national stage in countries of interest could be lowered in terms of government fees because world intellectual property organization (WIPO), which accepts your PCT applications, has to conduct search, provide search reports and written opinions. After filing your PCT, you could have a chance to amend claims.
More specifically, prior to the international publication of the above-identified PCT application, the Applicant has one opportunity under PCT Article 19 to amend the claims as a result of information discovered in the Search Report or otherwise known. In the countries that provide provisional patent protection for a period prior to the grant of a patent, such provisional protection will be based on the published claims. Provisional protection will not vest unless the patent application becomes a granted patent.
While an amendment containing comments may be filed with respect to the Written Opinion, these will not be considered unless these comments are filed with a Chapter II Demand filing as an Article 34 Amendment. In this regard, the Demand must be filed later of the 3-month deadline date of transmittal date of the ISR or by the 22-month deadline date of priority filing.
But please note, this process can get expensive and litigating in foreign countries is even more expensive. This typically only makes sense for large, well-funded companies with large foreign markets.
If you have questions about international patents and trademarks I am happy to provide a free 1/2 hour call. Please choose a time on my calendar.