Saint Paul, MN asked in Copyright, Intellectual Property and Patents (Intellectual Property) for Minnesota

Q: Would a US Patent only cover my rights in the US or could I use a patent cooperation treaty with a US patent to further

2 Lawyer Answers
Ahaji Kirk Amos
Ahaji Kirk Amos
Answered
  • Intellectual Property Lawyer
  • Raleigh, NC

A: A US patent is valid only in the US. You can use a PCT application, if you are still within the time limits, to file in other PCT countries. That requires a new application.

Peter D. Mlynek agrees with this answer

Matthew Bycer
Matthew Bycer
Answered
  • Intellectual Property Lawyer
  • Phoenix, AZ

A: A patent covers, and provides the right to stop someone from making, using, offering or selling

patented invention within the United States. 35 U.S.C. § 271(a). Therefore, if any substantial portion of the action occurs in the US, your US patent should provide a right to sue. It becomes more complicated if only a portion of the invention is made/sold in the US.

The Patent Cooperation Treaty (PCT) opens an opportunity to obtain further rights in foreign jurisdictions. For instance, if your product or process is made in one foreign country and exported to another, you would require a patent in at least one of those foreign jurisdictions to enforce your rights.

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