Taking that Patent Beyond the United States

November 16, 2004

By: H. Roy Berkenstock

Patents are national in character. The United States patent provides rights for the inventor or the assignee in the U.S. and its territories. If a business entity has substantial activity beyond the U.S. borders, the entity must look to the law of the particular countries or regions where that activity takes place, and decide whether patent protection there merits the expense.

The U.S. law provides that an inventor has one year from the date of first use, sale, publication or offer of sale of a product or process embodying the invention to file a patent application in the Patent Office. The United States is one of few countries with such a protracted period for the filing of a patent application. The general rule outside the U.S. is that a patent application on the invention must be filed in an appropriate patent office prior to any of the above-enumerated activities. Therefore, unless the U.S. business entity files a patent application in the Patent Office before any commercial activity, the right to a patent in most countries will be forfeited. The only notable exception is Canada, which permits filing after commercial activity.

Most countries (other than the U.S.) require that the patent application be filed by a professional who is authorized to deposit the application in the patent office, thereby necessitating the finding of such an ?agent.? Since the application is to be processed within that office, there is usually a requirement that the application be written in the local language. Most local international patent agents offer translation services.

The customary method for U.S. businesses is to file the U.S. application first and then file separate applications in the selected countries. Virtually all developed countries are members of a convention under which an applicant may claim a priority of the date of the U.S. application, so long as the local application is filed within one year of the filing date of the U.S. application. The U.S. application must still meet the local law requirement of being filed prior to any commercial activity (if such is the law).

There are essentially two options for filing international patent applications. The first option is to select the particular countries in which patent protection is thought advantageous and to file corresponding applications in those countries. This option commits the business entity to an early choice and expense, perhaps well before the technology is commercially proven. A second option is to use the Patent Cooperation Treaty (the ?PCT?), which allows the filing of a special application in the entity's home country, effectively reserving a later decision on the specific countries in which patent protection will be sought. The U.S. Patent Office has a PCT, or international, branch which handles such applications. The PCT application provides up to 31 months (depending upon the specific country) after the filing date of the base application to file in the selected international countries. During this time, the International Branch performs an examination of the relevant prior art and renders an opinion on patentability. No action need be taken by the applicant in response to this report. The examination report is advisory and the patent office of the country where protection is ultimately sought is not bound by the report. The PCT application permits a significant period for commercial experience with the invention prior to deciding whether to file in specific countries.

In addition to the patent offices of the individual countries, there are a few Regional Patent Offices, the most familiar of which is the European Patent Office. There are also regional offices for the Arab States of the Gulf, and the Eurasian Patent Organization (the former USSR). The advantage of filing with a Regional Office is that a single application is prosecuted for the group of countries. There may be appreciable savings in having such a consolidated examination procedure.

Finally, costs! The prosecution and maintenance of international patents is expensive. The filing of the PCT application costs approximately $3,000 to $4,000. Filing in foreign countries ranges from $3,000 to $12,000 per country. There is also the fee of the local agent. Assuming a successful examination, there is the cost of the patent grant -- which can be another $3,000 to $10,000 per country. Once the patent is granted, there are usually annual maintenance fees, which increase significantly each year after grant of the patent. The presumption is that the patent becomes more valuable as the commercial experience with the patented product grows.

The message to be taken is this: Seek advice from a professional and plan ahead to ensure that your invention is protected outside the U.S.