INVENTIVE STEP

A patent permits its owner to exclude others from making, using, selling, offering for sale, or importing the patented invention without his permission.  A patent is, however, unique to the country where it is granted.  Thus, if a patent owner does business in more than one country, it would be necessary to obtain a patent in each country to protect the invention.

Some countries have restrictions on what can be patented.  For example, some countries do not permit patenting software, business methods, drugs, or methods of treatment for humans.

PCT Applications

One way to obtain patent protection in multiple countries is to file an application under 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 142 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.

While 142 countries are currently members of the PCT, there are several significant countries that are not members; these include Argentina, Chile, Paraguay, Uruguay, Venezuela, Taiwan, and the Middle East.  To obtain patents in these countries, a patent application must be filed in each within 12 months of the first filed application.

Patent Prosecution Highway

The United States PTO has entered into an agreement with 15 other patent offices called the Patent Prosecution Highway.  Under this program, once a patent claim is found to be allowable by the patent office where the application was first filed, the applicant may request that other patent offices fast track examination of the application.  This is a type of work-sharing program intended to cut reduce redundancy in examination.

Issues Unique to US Patent Law

It is also important to remember that, at least as of today, the US is a first-to-invent country, while the rest of the world awards patents to the first-to-file.  In the US, interference proceedings determine priority when more than one applicant has filed an application claiming the same invention. 

The US also permits applicants to “swear behind” or prove an earlier invention date any prior art that is dated within one year of the application filing date.  Evidence of conception in a NAFTA or WTO country can be used as evidence of earlier invention.

Finally, the US has a one year grace period that permits applicants to file a patent application within one year of a public disclosure, publication, or commercialization activity such as a sale.  Most of the rest of the world requires absolute novelty.  These activities would constitute a bar to obtaining a patent.  Australia, Canada, and Japan have some form of grace period.

Enforcement of Patent Rights

To enforce patent rights, a patent owner generally must bring a civil lawsuit in each country where infringement has occurred.  The patent owner may be able to obtain damages or an injunction in each country.  The validity of the patent may be challenged in the suit.  Many countries also permit administrative challenges to a patent through a procedure such as an opposition or reexamination.

In the US, patent owner may also file an administrative suit in the International Trade Commission (ITC) to obtain an exclusion order against importation of infringing products.  Damages are not available in such proceedings, but it not be necessary to obtain personal jurisdiction over the respondent making such cases easier to initiate against foreign entities.

Exhaustion

In the US, once a patented product has been lawfully sold, the patent rights are “exhausted.”  This means that subsequent purchasers can obtain the product free of patent rights.  The theory behind exhaustion is that a patent owner should be able to recover or obtain royalties only once for a given product.

A product covered by a US patent that is lawfully sold outside the US (by virtue of not being patented in the country of sale or by permission of the patent owner in the country of sale) and then imported into the US may still be liable for infringement.  A foreign sale would not exhaust US patent rights.  Other countries may take a different approach to this issue.