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Protecting Your Invention Abroad: Put Your Money Where It Counts Most

If the market for your product or technology is global, it’s likely that you will consider applying for patent protection in several countries. Multiple filings, however, can cost thousands of dollars; and what if the foreign market fails to develop? Obviously, it would be preferable to put your company’s capital where it counts most. By filing a single international patent application under the Patent Cooperation Treaty (PCT), a U.S. applicant can postpone the need to file in most foreign countries for up to thirty (30) months. This may be time enough for corresponding foreign markets to take shape. This article summarizes the steps in an international PCT application, by which one may seek patent protection simultaneously in as many as 115 countries around the world through a single initial filing.

Any U.S. national or resident can file a PCT patent application. The PCT application may be filed in English in the U.S. Patent and Trademark Office (“PTO”), which acts as the “Receiving Office.” Provided that it complies with the minimum requirements for obtaining an international filing date, an international application has the effect of a national patent application in each PCT-contracting country “designated” by the applicant in the application.

Because an international patent application is effective in all of the countries initially designated by the applicant, an applicant initially need only pay a single set of fees. Filing a patent application in each country would cost significantly more. The “break-even” point is initially generally thought to occur at about 2-4 countries. In other words, when seeking protection in more than four or five countries, the PCT is less expensive than filing in each country. Some important cost-saving features of the PCT are described below.

The International Search Report

An International Search Report is generally provided about 4 or 5 months after the application is filed. The Report contains no comments on the allowability of the invention - it merely lists prior art documents considered by the examiner to be relevant to the claims of the application. The Report also gives an indication of the possible relevance of the cited art to the questions of novelty and inventive step (non-obviousness), which are the touchstones for patentability. A favorable Report, that is, one in which the citations of prior art would appear not to prevent the grant of a patent, are helpful in the subsequent prosecution of the application in the designated countries.

What if the Report is unfavorable? The Report may, for example, list prior art documents questioning the novelty and/or inventive step of the invention. The PCT process, however, offers an opportunity to amend the claims in this international phase. This may be desirable to better distinguish the invention from the prior art prior to nationalizing the application in the individual countries.

The International Preliminary Examination Report

Upon demand, an applicant may obtain an international preliminary examination of the application by opting to enter a second phase, referred to as “Chapter II,” of the PCT process. An international preliminary examining authority, similar to the international searching authorities, conducts a substantive examination of the application. An applicant may also submit amendments and arguments at this stage in an attempt to distinguish theclaimed invention over the prior art.

The results of the Chapter II examination are summarized in an International Preliminary Examination Report (“IPER”). Copies of the IPER are also sent to each of the countries originally designated by the applicant. The IPER consists of an opinion on the application’s compliance with international application criteria, and provides an even stronger basis upon which to evaluate the likelihood of obtaining patent protection in the selected countries. Thus, if the IPER is favorable, an applicant has a stronger basis upon which to prosecute the application before the selected patent offices of the designated countries.

The National Phase

The decision to grant a patent, however, remains the ultimate responsibility of each of the designated national or regional patent offices. It is only after the applicant has evaluated the overall likelihood of success that the applicant must fulfill the various national requirements for entry into the post-PCT “national phase.” It is important to note that the applicant can withdraw the application from the process at any time before entering the national phase. If the applicant chooses to nationalize the application in any of the countries initially designated, it must then pay the national fees and, in some cases, file translations of the application. Typically, these steps must be taken before the end of 30 months following the filing date of any prior patent application upon which the international patent application depends for its corresponding filing date, which is also known as the “priority date.”

Prosecution of the application in the national phase, i.e., in each designated country, is typically handled by a local agent under the direction of your U.S. patent counsel. The process at that point is the same as proceeding in any individual country. The difference is that the applicant can direct resources toward protecting inventions that appear from the PCT examination to be more likely patentable. Most important, however, is the fact that resources are not wasted pursuing foreign protection unavailable to begin with or where no corresponding market exists.

The information presented in this Intellectual Property & Technology Bulletin is intended only as a general overview; it is not intended as legal advice. Situations vary and require individualized assessment. Therefore, one should consult an attorney to discuss specific situations. Any member of our Intellectual Property & Technology Group would be happy to assist you.



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