Originally published Spring 2004
The issue of whether to obtain patent protection outside the United States, and in what countries, is an important component of a company’s strategic patent plan. The costs of foreign filing tend to mount quite rapidly; accordingly, the goal should be to formulate a global strategy that will adequately protect the company’s proprietary technology within a sound budgetary framework.
Companies should consider filing patent applications in countries in which they have and/or expect to develop substantial sales of their patented products or services. Companies also could look at those markets in which their competitors are most likely to manufacture infringing products. In this way, a patent owner may be able to stop an infringing product at its source rather than pursue the infringer in each geographic market.
One complicating factor is that competitors, to keep costs low, may manufacture the infringing goods in developing countries where patent protection is nonexistent or nominal at best. United States patent law (similar to the laws of most other industrialized nations) does prohibit importation of infringing goods made outside of the country. If the U.S. will be the primary market for the products incorporating the patented technology, foreign patent protection may not be as essential and the company’s resources may be better spent in fortifying the U.S. patent portfolio.
In addition, if money is tight, it may be advisable to forgo protection in countries where filing will involve significant translation fees (e.g., Japan and Korea), or in which enforceability will be difficult (e.g., China).
In any case, the volume of present and projected future sales in various geographies likely will be the principal consideration for most companies in terms of narrowing the options of where to seek patent protection.
Patent planning activities ideally should take place before the launch of any public marketing efforts, or sales of or offers to sell the technology, whether in the U.S. or abroad. Unlike the U.S., which permits a patent application to be filed within one year from the date of public disclosure or sale of the invention, most foreign countries require that a patent application be on file before any public disclosure or sale has occurred. Without a filed patent application, a company may forfeit its right to obtain patent protection on the divulged invention in foreign countries. If a disclosure must be made to another party, an appropriate nondisclosure agreement should be used to try to safeguard confidentiality and preserve the right to file outside the U.S.
If possible, companies should seek to file a U.S. patent application before any activities have taken place, whether within or outside the U.S., that potentially could be considered divulgation of the invention. In this way, the right to seek foreign patent protection likely is secured for one year from the filing date of the U.S. patent application in all the countries that are signatories to the Paris Convention, which includes most industrialized nations. (Although Taiwan is not a Paris Convention member, the national laws of Taiwan permit a one-year priority claim to an originally-filed U.S. patent application.)
There are several ways to file a foreign patent application. If a company is confident about the success of its product or service in a specific foreign market, and especially if the company also has a well-established presence and distribution network in such country, it may be appropriate to file a patent application directly with the individual foreign patent office on or before the one-year anniversary of the filing date of the U.S. application to expedite the foreign examination process. If this path is chosen, the company should expect substantial up-front expenses to cover fees associated with the filing and translation (if necessary) of the application, as well as the engagement of patent professionals in the foreign country.
Alternatively, a regional patent application may be filed. There currently are four regional patent filing systems available: (i) the African Regional Industrial Property Organization, whose members include the English speaking African countries; (ii) the African Intellectual Property Organization, whose members include the French speaking African countries; (iii) the Eurasian Patent Organization, which includes the Russian Federation; and (iv) the European Patent Convention (EPC). Using the EPC as an example, a regional application, which designates some or all of its member countries, can be filed with the European Patent Office (EPO). The European application is examined by the EPO rather than the patent offices of the individual member countries. If allowed, the application then can be validated in each country that was designated at the time of filing.
A regional filing strategy provides several advantages. Up to the point of validation of a patent in individual countries, companies need to file and prosecute only one application to obtain patent coverage in all of the designated EPC countries, currently twenty-seven. Further, usually only one foreign agent is needed to file and prosecute the application before the EPO. Finally, a European patent application can be filed and prosecuted in English up to the point of issue, so the costs associated with translation can be delayed until the patent issues.
Another option is to file an international application under the Patent Cooperation Treaty (PCT). Currently, there are one hundred and twenty-three countries that are signatories to the PCT. Notable exceptions include Taiwan, Malaysia, Thailand, Uruguay, and Venezuela. A PCT application may be filed in English with the U.S. Patent and Trademark Office (USPTO), which acts as the receiving office for U.S.-originated PCT applications. A PCT application can be a desirable option as it enables companies to delay filing patent applications in foreign regions and individual countries for a period of at least thirty months (counting from the filing date of the original U.S. application). This delay may provide companies time and opportunity to find licensing partners or investors to share the burden of patent-related costs.
Under the current rules, PCT applications filed on or after January 1, 2004, automatically designate all signatory countries and regions for a standard international filing fee. At the time of filing, a search fee also is paid. A U.S. applicant can request the USPTO or the EPO to perform a patentability search and to prepare an initial patentability report. U.S. applicants often choose the EPO because it is known for high-quality searches and will provide another indication of patentability separate from the USPTO, where a related application typically is undergoing examination. The report may be used by the applicant in deciding whether to continue to pursue patent protection abroad and to amend the claims to address issues of patentability that later may be raised in foreign jurisdictions in which patent protection is sought.
The PCT application process does not entail stringent formal requirements, however, it is expensive. Substantial expense can be expected upon the initial filing; at about twenty months thereafter if a second patentability report is desired based on amendments to the claims in response to the initial report; and at about thirty-months from the initial filing date, by which time the PCT application will need to be filed in the national and regional patent offices of choice. Some countries and regions do provide for a later entry date. For example, Australian and European patent applications can be filed subsequent to a PCT application as late as thirty-one months from the priority date. In Canada, a national application can be filed up to the forty-second month if a late fee is paid.
Obtaining foreign patent protection requires a substantial investment. A company should assess the various options available and seek to build a portfolio that addresses the company’s particular needs in a cost-effective way to maximize the company’s return on its investment.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.