INVENTIVE STEP

So, you’ve got a new US patent.  You find out that someone in another country is copying your invention.  Can you stop them?  What if you see the invention in the US and find out that it was made in China?

With certain exceptions, US patents only cover infringement activity that occurs in the US.  A US patent holder can stop third parties from making, using, selling, or offering for sale the patented product in the US.  The patent holder can also stop a third party from importing the patented product into the US.

What can you do if you have a great new invention and want to stop people  in other countries from practicing the invention as well?

Patents are generally only enforceable in the country where the patent is issued.  A US patent is only enforceable in the US, a Japanese patent is only enforceable in Japan, etc.  Thus, an applicant must file a patent application in each country in which a patent is desired.  This is a costly and time-consuming venture, but for important inventions it can be worthwhile.  In today’s global marketplace, patent protection outside the US may be a necessity.

Effective Filing Dates

Under the Paris Convention, a patent application that is filed within one year of the filing date of a first patent application is effective as if filed in that country on the filing date of the first application.  For example, if an applicant files first in the US and then files in Japan within 12 months of the US filing date, the Japanese application is effective as if filed in Japan on the same date as the US application.  This generally includes provisional applications as well.  If the first filed application is a provisional application, any applications filed within 12 months and claiming priority are effective as if filed on the date of the provisional application.

Patent Cooperation Treaty

Another mechanism that is designed to make foreign filing easier is the Patent Cooperation Treaty (PCT).  A PCT application is an international application that is filed through the World Intellectual Property Office (WIPO), where an applicant can designate a large number of countries in which he desires to file his patent application.  Currently, 139 countries are members of the PCT.

A PCT application does not give the applicant an “international patent”, as all patents are national in nature (although certain organizations like the European Patent Office (EPO) issue a “European Patent” that must be registered in each member country where the applicant desires the patent to be in effect).  Instead, the PCT provides a mechanism that gives the applicant 30 or 31 months from the earliest filing date (the first filed patent application) to determine whether to file the patent application in various individual countries.  A PCT application can either be the first filed application for an invention or it must be filed within 12 months of the first filed application.

The PCT also provides an International Search Report and an examination, if desired, so that the applicant can get an early search performed to see if the invention is patentable.  The delay also permits the applicant to determine whether the invention is commercially valuable and whether it is worth spending the money to obtain a patent in each country.  While applicants may designate all 139 countries at the time of the PCT filing, they can decide later in which individual countries they would like to pursue patent protection.

A PCT application can also save money on translation costs early in the process.  While most individual countries require patent applications to be filed in the native language of that country, PCT applications permit applicants to delay the cost of translating the application into the various languages.

Once the 30 or 31 month period from the first filing date elapses, a PCT applicant must “enter the national stage” in each country where a patent is desired.  Otherwise, the application is abandoned and patent protection cannot be obtained.  It is at this stage where translations must be obtained and filing costs for the various countries must be paid.

Each country usually requires that the applicant work through an attorney or patent agent who is registered to practice before that country’s patent office.  Thus, to obtain a patent in Brazil, the applicant must work with a Brazilian patent attorney or agent.  These attorneys and agents charge fees for their services, further adding to the costs of obtaining patent protection in various countries.

If the PCT procedure is not utilized, applicants must file in each individual country within a year of the filing date of the first filed application.  The translation, filing, and agent costs are due at that time.  A primary advantage of the PCT is the 18 to 19 month delay for these costs.

Patent Laws Vary

When formulating a strategy for foreign patent protection, it is also desirable to know a bit about how the patent laws of various countries differ from the laws in the US.  For example, in most countries outside the US, a patent is awarded to the first applicant to file a patent application for an invention, rather than the first to invent the invention.  The result is that applicants should file their applications earlier in the “race to the patent office.”

Also, while the US has a one year grace period from the first public use or offer for sale before an application must be filed, most other countries require absolute novelty.  This means that no grace period is permitted.  A patent application must be filed prior to the first public disclosure or offer for sale; otherwise, patent protection is forfeit.

Anther consideration is that patentable subject matter may vary from country to country.  In many countries, software, business methods, methods of treating humans for medical conditions, and pharmaceuticals may not be patentable.  In other countries, some types of medical patents may be subject to a compulsory license.  This means that for a license fee, the patent owner must allow others to practice the invention.  Some countries require the invention to be practiced in that country within a certain amount of time after the patent is granted or be subject to a compulsory license.

Conclusion

Patent protection is generally limited to the country that issued the patent.  While inventors may seek patent protection for their invention in other countries, this can be a complicated and expensive process that should be undertaken with the advice of a patent attorney and consideration of the value of the invention and required investment.  In today’s global world, multi-national patent protection may be a necessity for certain inventions.

This entry was posted on March 2, 2009 at 11:10 am and is filed under Patent Strategies. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.