International Patent Filing & Protection Strategies: Initial Considerations

Public Disclosure-­ The Novelty Requirement

Most countries are “first to file” countries-­ in other words, you have to file a patent application to establish rights. The U.S. has historically been a “first to invent” system;; but as of March 16, 2013, the U.S. officially changes to a first-­to-­file patent system pursuant to The Leahy-­Smith America Invents Act (AIA). Furthermore, if you do not file first in these countries, but publicly disclose the invention before filing, you are usually precluded from filing the patent in that country. Each country’s law’s definition of “public disclosure” is different and would need to be assessed on a country-­by-­country basis as applicable to the situation. For example, some countries require absolute novelty (which, in practical terms, means that a patent application must be filed before any public disclosure), while other countries give inventors or applicants grace periods, following disclosure, for filing patent applications.

Major exception to the general rule: If you filed a U.S. patent application prior to public disclosure (but have subsequently disclosed the invention), you will probably have a 12-­month window within which to file a corresponding patent application in a foreign country. See more below on this.

Paris Convention One-­Year Grace Period

The U.S. has entered into treaties with almost every industrialized country such as the Paris Convention, which allow U.S. applicants to file patent applications with the party nations within 12 months of the earliest U.S. filing date and get the benefit of the U.S. filing date. When filing an international application that relies on the Paris Convention one-­year grace period for a priority date, the time period for filing the foreign application is calculated from the date of the first-­filed national application. For most U.S. applicants, the first-­filed national application is a regular nonprovisional U.S. application. Please note that if a U.S. provisional application is filed as the first-­filed application, the one-­year grace period begins with the filing of this provisional application and not with the filing of the “conversion” regular non-­provisional U.S. application that claims priority over the provisional application. Thus, if a provisional application is filed, the conversion date for the nonprovisional U.S. application and the Paris Convention bar date for the filing of international applications fall on the same day. Therefore, the international application and the U.S. regular application need to be filed on the same date.

Patent Cooperation Treaty (PCT)

In addition, the U.S. is a party to the Patent Cooperation Treaty (PCT), which allows applicants to file a single international application within 12 months of the earliest U.S. filing date and also get the benefit from an U.S. filing date. The applicant, however, will have to file the international or PCT application nationally in select countries within 30 or 31 months from the earliest filing date. Therefore, PCT filings preserve future foreign patent rights and permit an applicant to delay national entry into PCT member countries for up to 30 or 31 months from the priority date. This delay period may provide opportunities for further market analysis, obtaining a licensee or business partner for the invention, etc.

Although PCT applications are examined and applicants are able to amend the application before entering the national stage, PCT applications do not grant. Rather, each national patent application must be prosecuted individually. The European Patent Convention (EPC) similarly allows applicants to file a single patent application within 12 months or 31 months when entering with the PCT application of the earliest filing date. Unlike the PCT application, however, the European patent application is prosecuted at the European level and later registered in the elected countries after the grant. The most important thing to remember about foreign filing is that missing a filing deadline likely results in a loss of foreign patent rights.

Cost Estimates

The costs associated with foreign patents vary, but as a rule of thumb expect the PCT application to cost at least $5,000 and each national filing will be approximately $5,000 each for English speaking countries and $10,000 for non-­English speaking countries. The EU is an additional $10,000. Applicants will likely pay at least the same amount to prosecute applications in each country or region. The cost for filing foreign patent applications consists mostly of patent office fees. Therefore, there is little that can be saved by shopping around for the least expensive agent. Bigger savings can be realized in prosecution by using strategies similar to those for the U.S. Of course the most prudent strategy is to limit foreign filing to only those countries where it makes good business sense to do so.

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