May 4, 2016 | Posted in:Patents

Why does this matter for a small inventor or inventive entity with a potential patent on a day-to-day item?

…WHAT EVERY LAWYER SHOULD KNOW

The Patent Guys, attorneys from the law office of Gertner Mandel, wrote this article about the process of protecting your patent in foreign countries for the Bergen County Bar Association Intellectual Property Committee.

One year from filing a nonprovisional patent application with the United States Patent and Trademark Office, a patent applicant can preserve its rights to file in any or all of the 187 member country participants of the Patent Cooperation Treaty (PCT). Here’s how it works in broad strokes. First, a patent applicant files its utility nonprovisional application with the USPTO. This only applies to utility applicants, not design or plant patents. Within one year from that filing, the patent applicant can file an international application under the PCT electing one, several or all of the member countries to the treaty. The USPTO is an international PCT receiving office, so the filing of the international application can take place right here in the United States. Thereafter, the applicant can “go national” in any or all of the PCT member countries within 30 months from the initial patent application filing date in the USPTO.

So, if a client asks you how it can protect its intellectual property here in the United States as well as certain select countries throughout the world, you can tell them that it all can be done – at least initially – through the USPTO with your United States based patent lawyer. Of course, often when an applicant chooses to “go national” in a specific country or countries, local patent counsel in that country is retained to prosecute the patent application. Make no mistake, PCT filing fees are not inexpensive (in excess of $2,000.00) just for the initial filing not to mention legal fees and the fees required to “go national” in each member country and those legal fees.

So, the question becomes, why does this matter for a small inventor or inventive entity with a potential patent on a day-to-day item? The answer is that the best way to financially exploit a patent is to sell or license it to a large (often international) company who produces and distributes similar items. These companies are often concerned with foreign patent rights and failing to at least protect the right to file for foreign patent protection could reduce the value of your client’s patent. Further, the internet has truly made the sale of items – especially consumer focused items – global. So, the practice of protecting patent rights in other countries has become more routine for many patent owners.

Now for some background on how all of this works. The World Intellectual Property Organization (WIPO) is an agency of the United Nations. This organization is based in Geneva Switzerland and administers 26 international treaties including the PCT. The United States is a signatory to the PCT along with 186 other member nations. Most of the countries you would expect are signatories to the PCT (i.e., Germany, England, Japan, France, Israel) and some you may not have expected (i.e., Russia and China). Several national patent offices have been declared international application receiving offices for PCT filings; the USPTO is one such office. So, the national patent application can be filed in the USPTO and the initial PCT international application can also be filed there.

Some people in the patent trade refer to the PCT international application with the international receiving office as filing a provisional (a term used by the USPTO for a place keeper application that is not examined to preserve a filing date) with world-wide effect. This is because the documentation necessary to file the PCT international application is minimal. Basically, the PCT filing requires a cover sheet designating some or all member countries, identifying the owners of the patent application and the claims, specification and drawings (basically, the contents of your US filing one year earlier). So, with this one filing, you preserve the applicant’s right to seek patent protection throughout the world.

Of course, the real work begins when the patent applicant decides on which countries it will “go national.” At that point, the applicant must submit a translation of the application to each foreign patent office in the countries it wishes to pursue and, if not already done, pay the PCT fees as well as the fees required by the foreign patent offices.

The advantages to this arrangement take the following forms: (i) streamline the process of fulfilling diverse formality requirements; (ii) postpone the major costs associated with seeking multinational patent protection; (iii) provide a strong basis for patenting decisions because the national offices (in the countries where you “go national”) will be given the PCT international search report be the international receiving office – the USPTO in our case.

For the reasons set forth, knowledge of what the PCT is and how it works are necessary tools in advising your clients who own, sell or encounter patents as part of their business.

Facts from the Patent Guys

Content us for Patent Protection in Foreign Countries

The Patent Guys are attorneys in the Intellectual Property Practice Group of the law firm of Gertner Mandel LLC providing legal support for legal, technical & business issues.