Ten Things to Know about Applying for Non-US Patents

Brian M. Gaff, McDermott Will & Emery LLP
Joanna M. Dombrowski, General Electric Company

Pages: pp. 9-11

Abstract—Although US patent protection ends at the border, knowing the key factors to consider for non-US patents can help inventors extend the scope of protection.


AUS patent grants its holder certain rights for a limited period of time—usually 20 years. Those rights include the power to exclude others from making, using, selling, offering to sell, and importing the patented invention. The inventor or patent owner (for example, the inventor's employer) might exercise those rights in places where the invention is being exploited without authorization. Outside the US, such exploitations usually require patent holders to have a foreign patent to cover the invention.

Applying for foreign patents isn't difficult and is typically done around the same time as the filing of the US patent application. The structure and content of most foreign applications are similar to what's used in the US. Indeed, many foreign applications, when first filed, are identical to their US counterparts, and required format changes are sometimes delayed until the foreign patent office specifically requests them.

As the cost for foreign filing can be high, a comprehensive patenting strategy should detail the rationale for whether and when to file foreign patent applications as new inventions are developed.

For an expanded discussion on this topic, listen to the podcast that accompanies this column at www.computer.org/portal/web/computingnow/computing-and-the-law.

FIRST, SOME BACKGROUND

Well over 100 countries around the world offer some type of patent protection. When an inventor wants to file a patent application in more than one country, it isn't always necessary to file the application in each specific country of interest. Thanks to the Patent Cooperation Treaty (PCT), the inventor can file a single international application that can be used to pursue a patent in one or more of the 147 countries that have signed the treaty.

It's important to remember that a PCT application doesn't mature into a single “international patent” providing worldwide protection; it's just a document that each signatory country has agreed to accept as an application for a patent. Also, as not all countries have signed the PCT—notable examples include Taiwan, Argentina, and Iran—inventors who want to file patents there must do so directly with those countries.

There are smaller, regional alternatives to filing a PCT application. These include filing an application with the European Patent Organization, which provides a common application for many countries in Europe, or with the various regional organizations in Africa, the Middle East, and Eurasia. All have a smaller geographic scope compared to the PCT, which is a reason why the PCT application is a common mechanism for pursuing foreign patent filings.

The inventor has 30 months after the US filing or the priority date, whichever is earlier, to choose the other countries in which to file the application—this is known as nationalization. At that point, the PCT application becomes a pending patent application in the chosen countries. The US patent attorney or patent agent who files an inventor's US application typically handles the filing of the counterpart PCT application and usually works with other patent attorneys in those countries to handle the necessary country-specific filings.

After a PCT application is nationalized, each chosen country then examines the application according to its patent laws. This patent prosecution phase is similar to what occurs in the US—the inventor should expect to receive office actions that require amendments be made to the claims. The US patent attorney will continue to work with the patent attorneys in the chosen countries to conduct the prosecution. Successful prosecution ends with the issuance of one or more foreign patents.

TEN CONSIDERATIONS

When making a decision on whether and where to file non-US patent applications, keep the following 10 points in mind.

Deadlines

Foreign filings should be made within one year of the priority or first filing. It's important to decide whether to file foreign applications well ahead of the 12-month deadline, to avoid incurring additional fees required for expediting documents. Before the 12-month deadline, the applicant must decide whether to file patent applications directly in the countries of interest or to file a PCT application. If filing a PCT application, it must be nationalized, or filed within each desired country, within 30 months from the filing date of the priority application.

Public disclosure, novelty

To be patentable, an invention must be novel, and different countries have different novelty requirements. If there has been a public disclosure of the invention, some countries allow for a grace period after that disclosure to file a patent application on the invention. In other countries, absolute novelty is required, which means that an application must be filed before any public disclosure is made. In such countries, once public disclosure is made without an application already being on file, the inventor is no longer eligible for a patent on the corresponding invention.

Technology

The scope of what's patentable varies from country to country, which means that only certain types of subject matter are eligible for patent protection. For example, in some countries, a patent may not be obtained on any type of software-related invention, computer program, or method of doing business.

Because a patent only gives its holder the right to exclude others from an infringing activity, a primary factor to consider is the applicant's ability to enforce an issued patent in a specific country.

Initial costs

Not surprisingly, the cost of filing a patent application varies by country, from approximately US$1,000 to $12,000. In many countries, the number of claims in the filed application affects the filing cost because many countries charge additional fees based on the number of claims. Additional initial requirements that could add to the costs of filing include translating the application into the official language and obtaining legalization or authentication of documents.

Ongoing costs

Other additional ongoing costs to consider include the costs for replying to search reports or office actions from the patent office, paying issuance fees, fees incurred during opposition, and annuities/maintenance fees. In many countries, there are fees for initiating the examination of the patent application, or “requesting examination.”

Applicants also incur fees when the patent office sends out an office action or examination report because a patent attorney must review and respond to each. Many countries require payment of an issue fee once the applicant has received a Notice of Allowance before they will grant the patent. In addition, some countries require payment of an annuity fee each year the application is pending, even before the patent has been granted. Other countries require payment of yearly (or other periodic) maintenance fees after the patent has been issued.

Business and market considerations

Business location factors such as where the applicant conducts business, where the applicant manufactures products, where the competitors conduct business, market size, location of manufacturing centers, and location of emerging markets will determine where patent protection is needed and the corresponding countries in which to file.

Enforceability

Because a patent only gives its holder the right to exclude others from an infringing activity, a primary factor to consider is the applicant's ability to enforce an issued patent in a specific country. In some countries, it's relatively easy to enforce patent rights. In others, it's more difficult or nearly impossible to enforce a patent because of the rules and regulations governing litigation. Not surprisingly, the cost to enforce a patent differs greatly by country. For this reason, choose wisely when selecting countries in which to file—it usually doesn't make sense to obtain patents in countries where there will be little or no chance of successful enforcement.

Time

Technology life cycles vary widely, and in some countries, it can take many years to obtain a patent. Consequently, in some cases it might be advisable to file direct national applications in the countries of interest instead of filing a PCT application. Although the delay in nationalization that a PCT application provides gives the applicant more time for marketing, product development, and so on, it might also create an advantage for competitors that is intolerable for products with short life cycles.

Prosecution consistency and application management

Each country's patent office individually examines the patent application filed in that country. The examination varies from country to country, so filing a PCT or regional patent application might provide for greater prosecution consistency. For example, the search report provided in response to filing a PCT application provides the applicant with the opportunity to assess the patentability of the invention and amend the claims as needed before nationalization. The PCT search report might reduce search and examination costs in certain countries where patent offices adopt that search report.

In addition, filing a regional patent application, such as with the European Patent Office (EPO), instead of a direct national application in European countries, will provide consistent claim coverage across all European countries in which the issued European patent is recognized or validated. Further, by filing with the EPO, the applicant only needs to comply with the requirements of that office, rather than the formalities of each individual European country.

However, what occurs during the examination of the application in each country's patent office might need to be disclosed to the patent offices in other countries that are examining a counterpart application at the same time, and it's the applicant's burden to make that disclosure. For example, if an examiner in the EPO locates prior art relevant to the European application, and a counterpart application is pending in the US, it's usually advisable to tell the US examiner about the EPO examiner's findings. Failure to disclose could render the patent that issues from that application unenforceable and, therefore, worthless.

Other types of protection

Some countries might have other ways in which to obtain protection of an invention. A utility model, innovation patent, and petty patent are similar to a full-fledged patent but typically have a shorter term and less stringent requirements. A design patent protects the ornamental design of an article. Trademark, copyright, and trade secret protection are other types of intellectual property protection available in countries outside the US.

There can be a lot at stake in deciding whether to pursue non-US patents. Although they can be expensive, non-US patents can protect the patent owner's revenue should competitors attempt to infringe on the patent. Keeping these 10 things in mind and including them in your patent strategy will facilitate decision making about filing non-US patents.

About the Authors

Brian M. Gaff is a senior member of IEEE and a partner at the McDermott Will & Emery LLP law firm. Contact him at bgaff@mwe.com.
Joanna M. Dombrowski is a patent counsel at the Global Patent Operation of General Electric Company. Contact her at joanna.m.dombrowski@ge.com.
FULL ARTICLE
CITATIONS
72 ms
(Ver 3.x)