INTERNATIONAL PATENT PROTECTION

It must be remembered that US patent prohibit the unauthorized manufacture, use or sale of patented goods within the US. This includes prohibiting the importation of goods manufactured off shore. Filing for patent protection for foreign markets requires separate action. It is a relatively complex and expensive endeavor. However, there are useful guides and summaries available. The USPTO website, www.uspto.gov contains a link to the World Intellectual Property Organization (WIPO) website. Information, including filing fees and schedule, is available at this site regarding filing for patent protection under the Patent Cooperation Treaty (PCT) system.

As indicated, the PCT is established and governed by international treaty. Not all countries of the world are signatories. Fortunately most of the industrialized nations are members. The non member countries include the Philippines, Thailand, Pakistan, Iran, Kuwait, Saudi Arabia, Angola, Nigeria, Argentina, Chile and Venezuela.

The PCT does NOT grant patent protection. Rather, it is clearing house or holding point for the initial filing of international applications. It provides a single point for starting the filing process that ultimately will require filing in individual countries or country groups, e.g., the European Patent Organization (EPO). This article provides only the briefest summary of the steps and procedures.

First, the patent law of most countries requires absolute novelty. Unlike the United States, there is no one year period after the first public disclosure or sale in which a patent application can be filed. However, the treaty will recognize the filing of a US application containing certain formalities such as at least one claim and an oath or declaration of inventor. (Note, these formalities are not requirement for a US provisional application.) If an applicant has filed a US application meeting the formality requirements, the PCT treaty grants the applicant a one year period in which to file a PCT application. If there is a compliant US application, the applicant can make use or sell the invention during the one year period without losing its entitlement to file a patent application under the PCT treaty.

Before the end of the one year treaty period, the applicant may file a PCT application meeting the separate formalities set forth in the rules and regulations implementing the treaty. The actual application can be filed with the USPTO acting as the “receiving office” for the PCT. The forms required to filed with the application can be downloaded via the USPTO website. As indicated, the USPTO website also contains a link to the WIPO website. A valuable resource available on line is the “Applicant’s Guide”.

Filing of the PCT application starts the “Chapter 1” or “International Phase” of the PCT process. The application can be filed in English. However, at last reading, the documents were required to be filed on A4 paper, unlike the standard 8.5 x 11 inch paper stock. The PCT filing fees vary with the size of the application, but a rough budget estimate would be $2,500.00. Remember, this is a filing that must be done within the first year of the US application process or foreign patent rights will be lost in the PCT member states.

The PCT will publish the application 18 months from the “priority date”, i.e., the date of the first patent filing. This may be the date of the US provisional application.

The PCT will also perform a patent search and issue a report to the applicant. This can be a valuable resource in determining the merit of proceeding further with international patent protection.

There is also an opportunity to request an International Preliminary Examination of the application. This examination request, termed a “demand” under the treaty, is to be made between the 19th and 20th months after the priority date (which is likely the date of the initial US filing). There is a cost for this request.

For a few countries, e.g. Switzerland, if the “demand” is not made by the 20th month after the priority date, the applicant is required to begin the “Chapter 2” or “National Phase.” This requires a filing of a patent application meeting the specific requirements of the applicable foreign country. Most countries, however, delay this step until at least the 30th month after the priority date, regardless whether a “demand” for International Preliminary Examination was made. Fortunately, Switzerland is also a member of the European Patent Organization (EPO), which delays the entry of the Chapter 2 phase until the 30th month.

Note that there are counterpart organizations in other geographic regions similar to the European Patent Office. Note also that the US is not a member of the European Patent organization and it will be necessary to engage a patent attorney within one of the member states in order to file with the EPO. The specific rules and costs of filing a Chapter 2 or National Phase application are beyond the scope of this article. However, note that most countries require the payment of annual maintenance fees.