Executive summary:
The rights granted under a United States patent extend only throughout the territory of the United States and have no effect in other countries. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with that country's requirements. Fortunately, there are several international treaties that aid in applying for international patent protection, including the Paris Convention Treaty and the Patent Cooperation Treaty, otherwise known as the PCT.
In spite of the fact that each country's law is different, there are several important common factors that should be considered when contemplating international patent protection:
* foreign filing license,
* common differences from U.S. patent law,
* Paris Convention Priority, and
* Patent Cooperation Treaty (PCT).
Foreign Filing License:
Under United States law it is necessary, in the case of inventions made in the United States, to obtain a license from the Commissioner of Patents and Trademarks before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States. The filing of an application for patent constitutes the request for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the United States filing, a license is not required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Commissioner of Patents and Trademarks during the period the order of secrecy is in effect.
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Common Differences from U.S. Patent Law:
The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the application will bar the right to a patent. This distinction is what makes it advisable to file the U.S. application prior to public disclosure of the patent even though the U.S. patent law provides for a one year grace period. Since other countries do not have such a grace period, the prior disclosure of the invention will prevent the filing of international applications in most cases.
Maintenance fees are required in most countries, but they will differ in timing and amount from U.S. maintenance fees. In addition, most countries require that a patented invention be manufactured in that country after a certain period, usually three years. This requirement is generally referred to as the "working requirement." If there is no manufacture within this period, the patent may be void in some countries, although in most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
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Paris Convention Priority:
The Paris Convention for the Protection of Industrial Property is an international intellectual property treaty adhered to by more than 100 countries. The Paris Convention, as it is usually called, provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens.
The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right means that, on the basis of a regular first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in all the other member countries. These later applications will then be treated as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over applications for the same invention which may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the first application, will not be invalidated by any acts accomplished in the interval. The period of time mentioned above, within which the subsequent applications may be filed in the other countries, is 12 months in the case of first applications for patents and six months in the case of industrial designs and trademarks.
It is this right of priority under the Paris Convention which allows public disclosure after the filing of a U.S. patent application but before international application are filed. Without this claim to priority, no international applications could be filed after public disclosure. For patent applications claiming Paris Convention priority, however, date that is relevant for determining whether the invention had been previously disclosed is the filing date of the first application. Thus, disclosures made after the U.S. filing are irrelevant to international applications claiming priority under the Paris Convention. Note, however, that this analysis applies only for countries which are members of the Paris Convention. Although most industrialized countries are members of this treaty, applications in non-member countries should still be filed before public disclosure. Note also that conduct which constitutes public disclosure of an invention can vary from country to country.
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Patent Cooperation Treaty (PCT):
Another treaty, known as the Patent Cooperation Treaty or PCT, facilitates the filing of applications for patents on the same invention in member countries. The PCT provides for centralized filing procedures whereby a single application filed in a PCT governmental receiving office can constitute an application for patent in one or more (including all) member countries. Once the application is filed, one of the eligible PCT governmental searching offices will perform a patent search on the application. When the search is completed, the applicant may then elect to enter what is known as "Chapter II" of the process, a PCT governmental office evaluates the patentability of the application pursuant to patentability standards set forth in the Patent Cooperation Treaty. Eventually, the applicant will be required to have the PCT application officially entered into the national patent office of each of the countries from which the applicant desires patent protection.
There are several advantages to the PCT process. First, the applicant can file a single PCT application rather than filing a series of national applications. The single PCT application is much less expensive than the individual national filings. Although the applicant will eventually be required to incur a cost similar to the national filings when the PCT application is entered in each national patent office, the PCT procedure allows these costs to be delayed for up to eighteen months. This period of time will allow the inventor a better chance to analyze the patentability and profitability of the invention, and therefore the applicant can make a more informed decision regarding where the patent application should be filed.
A second advantage of the PCT process is that the evaluation of patentability made by the PCT governing body handling the examination should lead to more uniform results in connection with the patentability of the invention in each country. Although individual countries are not bound by the determination made during the PCT process, a positive PCT decision on patentability is often persuasive evidence in a national patent office.
Additional advantages of the PCT process include advanced application manipulation designed to achieve such results as obtaining an early search result from the European Patent Office; delaying entry into the U.S. Patent Office, and utilizing the patentability requirements of the PCT document rather than the U.S. Patent Act. These advanced applications should be discussed with a qualified patent attorney with experience in handling PCT applications.
