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For an IP litigation lawyer, enforcing patent rights internationally is a country-by-country strategy shaped by where the infringement is happening, which treaties apply, and which venues offer the strongest enforcement tools. Experienced counsel can help you choose the right approach before you commit resources to the wrong jurisdiction.
If a competitor is manufacturing, selling, or importing your patented technology in another country, your U.S. patent does not help you. Patents are territorial, which means they only protect you in the countries where they have been granted.
Enforcing your rights across borders requires a coordinated strategy that accounts for the specific laws of each country involved, the international treaties that shape how those laws interact, and the practical realities of cross-border enforcement.
The patent litigation lawyers at Gearhart Law work with businesses to build and execute international patent enforcement strategies. This post covers what that process actually looks like and what has changed in recent years.
International Treaties That Shape Patent Enforcement
International treaties and agreements play a pivotal role in shaping the patent infringement litigation process across borders.
The Paris Convention
The Paris Convention for the Protection of Industrial Property establishes the principle of national treatment, meaning that member countries must give the same protection to foreign patent holders as they give to their own nationals.
It also established the right of priority, allowing a patent applicant to use their original filing date in one member country as the priority date in other member countries for up to 12 months. This 12-month window is what gives inventors time to file in their home country first and then pursue protection internationally without losing their priority date.
The Patent Cooperation Treaty (PCT)
The PCT allows inventors to file a single international patent application that preserves the right to seek patent protection in over 150 countries. It does not grant an international patent (there is no such thing), but it streamlines the process of entering national phases in multiple countries and buys time before those national filings are due. For businesses building an international enforcement portfolio, PCT filing is usually the right starting point.
The TRIPS Agreement
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), administered by the World Trade Organization, sets minimum standards for IP protection and enforcement that all WTO member countries must meet.
TRIPS requires member countries to provide civil judicial procedures for enforcement, the ability to seek injunctive relief, and damages adequate to compensate the rights holder. It is the legal backbone that makes cross-border patent enforcement practically possible in most of the world’s major economies.
The Unified Patent Court (What Changed in 2023)
In June 2023 the Unified Patent Court (UPC) became operational across participating EU member states. Before the UPC, enforcing a patent in Europe meant filing separate actions in each country. The UPC allows patent holders to bring a single infringement action covering all participating member states simultaneously.
But the UPC is a double-edged sword. A single action can enforce your patent across all participating states. Similarly, a single revocation action can invalidate it across all states too.
U.S. Tools for Enforcing Patent Rights Against International Infringement
Even when infringement is occurring abroad, U.S. patent holders have domestic enforcement tools that can be highly effective, particularly when the infringing products are being imported into the United States.
Federal District Court
If a foreign company is selling infringing products in the United States, you can sue them in U.S. federal district court for patent infringement. Some of the broad remedies available include:
- Injunctive relief
- Lost profits
- Reasonable royalties
- Treble damages for willful infringement
For New Jersey businesses in particular, that means the United States District Court for the District of New Jersey, which has significant experience handling complex patent disputes.
The International Trade Commission
The U.S. International Trade Commission (ITC) is one of the most powerful tools available for stopping infringing imports. An ITC Section 337 investigation can result in an exclusion order, which is a directive to U.S. Customs to stop infringing products at the border without the need to prove damages.
ITC proceedings move faster than district court litigation, typically resolving within 12 to 18 months. For businesses facing competition from foreign manufacturers flooding the U.S. market with infringing products, the ITC is often the right first move.
Steps in International Patent Infringement Litigation
Initial Assessment
The first step involves evaluating the infringement claim’s validity, including the scope of the patent and the alleged infringing activities. This assessment determines the feasibility of litigation and the most efficient strategy for achieving your business objective.
Gathering Evidence Across Borders
Collecting evidence in a foreign jurisdiction requires working with local counsel and understanding the discovery rules of each country involved. U.S.-style broad discovery is not available in most other jurisdictions. Building a strong evidentiary record before filing is essential.
Choosing the Right Jurisdiction
Deciding where to file the lawsuit is strategic, often influenced by the location of the infringing activities and the patent protection in place. Germany, the United Kingdom, the Netherlands, and the United States are generally considered among the most favorable jurisdictions for patent enforcement.
Preliminary Injunctions
Seeking a preliminary injunction can prevent further infringement during the trial. The availability and standard for preliminary injunctions vary significantly by country. Germany in particular is known for granting them quickly and reliably.
Remedies and Enforcement
If successful, the court may award damages or order injunctive relief to prevent future infringement. A judgment in one country is not automatically enforceable in another and may require separate recognition proceedings.
When to Involve a Patent Litigation Lawyer
International patent enforcement is not a process you should navigate without experienced legal counsel. The decisions made at the outset, including which jurisdictions to pursue, whether to approach the ITC or district court, and how to coordinate U.S. and foreign proceedings, have long-term consequences that are difficult to reverse.
The right time to bring in an IP litigation lawyer is before you send any demand letters, before you file in any jurisdiction, and before you take any action that could affect your rights in other countries.
The patent litigation team at Gearhart Law works with U.S. and international businesses to build enforcement strategies that match the scope and geography of the infringement affecting their business. Send us a message to schedule a free half-hour consultation before you decide on your next move.
Frequently Asked Questions About International Patent Infringement Litigation
1. Does my U.S. patent protect me in other countries?
No. A U.S. patent only protects you in the United States. If a competitor is manufacturing, selling, or importing your patented technology in another country, you need patent protection in that specific country to enforce your rights there. This is why building an international patent portfolio early through PCT filings and national phase entries is important for businesses that operate globally.
2. What is the fastest way to stop infringing imports into the United States?
The ITC Section 337 investigation is often the fastest route. An ITC exclusion order can stop infringing products at the U.S. border without requiring proof of damages, and proceedings typically resolve within 12 to 18 months. The patent litigation lawyers at Gearhart Law can help you assess whether an ITC action is the right first move for your situation.
3. What is the Unified Patent Court, and how does it affect enforcement in Europe?
The UPC allows patent holders to bring a single infringement action covering all participating EU member states simultaneously. Before the UPC, enforcing a European patent required separate actions in each country. The UPC makes enforcement easier in a lot of ways, but then you also run the risk of a single action invalidating coverage across all participating states at once.
4. Which countries are most favorable for patent enforcement?
Germany, the United Kingdom, the Netherlands, and the United States are generally considered among the most favorable jurisdictions for patent enforcement based on how fast the courts are and the available remedies. The right jurisdiction for your specific dispute depends on where the infringement is happening and where your patent coverage is the strongest.
5. What is the TRIPS Agreement, and why does it matter?
TRIPS is the international treaty that sets minimum standards for IP protection and enforcement across WTO member countries. It requires member countries to provide civil enforcement procedures, injunctive relief, and adequate damages. Ultimately, TRIPS makes cross-border patent enforcement practically possible in most of the world’s major economies.
6. How do I enforce a patent judgment in a foreign country?
A judgment in one country is not automatically enforceable in another. Enforcement typically requires separate recognition proceedings in the country where you want to enforce the judgment, governed by that country’s domestic law and any applicable bilateral or multilateral treaties. Working with local counsel in the enforcement jurisdiction is essential.