Corona, CA asked in Intellectual Property for California

Q: Is it possible to get an outside USA patent for the same product that has a USA patent?

Assume there is a product with a USA patent. Can someone who is not the inventor apply for a patent in another country?

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1 Lawyer Answer

A: Generally speaking, if no international application was filed based on the U.S. application before it issued as a patent, it's too late to file in other countries. In that scenario, the U.S patent would be considered "prior art" to the later filed international applications on the same subject matter thereby barring the belated international applications from becoming patents in other countries.

Assuming that a U.S. patent application is still pending and no deadlines have been missed (e.g., under the Patent Cooperation Treaty (PCT)), an applicant other than the inventor might be able to apply for international patent protections if rights in the patent application(s) have been assigned to the applicant from the inventor. For instance, if an individual inventor is an employee of a company and is obligated to assign the invention to the company via an employment agreement, then the company can be the applicant.

If someone is merely copying a U.S. patent in order to file an international patent application, and if that person is not an inventor or rightful applicant, the application would likely be invalid for improper inventorship.

You can read more about the U.S. patent process here www.uspto.gov and about the PCT process here: https://www.wipo.int/pct/en/faqs/faqs.html.

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