Expert: Rene Hasekamp - 3/8/2011

Question
Thank you for taking my question. Our company (there are 5 partners) have a product that is protected in the US with "patent pending" status. Filed with a patent attorney in Florida. We may manufacture this product over-seas. I am concerned that we should also have an industrial patent on this product if we do this. Not much to stop someone over-seas to copy our product and sell it, correct (if we do not have and industrial patent?) Cost is relevant as this is a start-up. But cutting corners (to cut costs) could "bite us in the butt" later, I'm afraid. Advice on this?

Answer
Hello,

You doubtless know already that a product, protected by a patent, may be produced, sold, etc. only by the patentee and his/her (possible) licensees.
You have a "patent pending" in the US, by which you probably mean that a patent application has been filed, but no patent has been granted yet. If the patent will be granted in good time, you can sue any third party that has infringed it, even during the period while it was not yet granted. So you have some protection already. That is point one I would like to make clear.

But another basic thing about patents is, that a patent is ONLY valid in the country where it was granted. So your US patent, after it has been granted, will ONLY be valid in the US. In ANY other country your product may be manufactured or sold freely by anybody.

You can apply for parallel patents (= patents for the same product) in (almost) all countries in the world by filing a patent application there WITHIN A YEAR from the filing date in the US. In that case your filing date in the US will also count in other countries where you apply for a patent.

I do not understand what you mean by an "industrial patent". Patents are for new technical inventions that are applicable industrially. So you probably mean what I understand as "patent" by an "industrial patent".

The above is all background and theory. Now a few words about a sensible patent practice.

For the best protection you should have parallel patents in all countries where the product may be manufactured or sold, by you or by any competitors. In practice you would like to have protection in the US, Europe, Japan, China and some other low-cost salary countries at least.
That will be a costly business, I am afraid. So maybe you would like to make a choice.

In that case I would advise the following:

I understand that you plan to manufacture the product over-seas. That means tat you need a parallel patent in that (those) country (countries) where you want to produce your product. And certainly too in those countries where you will want to sell the product. This would be the minimum you want. (I hope a year since filing the US patent application has not yet passed.)

For a more complete protection you would also want a parallel patent in countries where competitors want to sell you product, made elsewhere. And in the best case you would also want a parallel patent in the countries where you expect that competitors might want to produce it.

The patent system is complicated, as you see, but let us use our common sense:

If you believe there is only a really interesting market for you in the US, leave things with a US patent (as you already applied for) and apply for a parallel patent only in the country (countries) where you want to manufacture it.

Disclaimer: I cannot pretend that my answer is complete and covers all aspects. It is, however, to the best of my knowledge and a bit simplified to make it accessible. I cannot be held responsible for any mistakes!

This was a very long answer! I hope it is understandable.  I wish you the best of success with your product!

Rene Hasekamp.