International Clients seek US Patent Protection
The United States is one of the world’s largest marketplaces for goods and services from around the world. Grant’s Law Firm is dedicated to helping International Clients by providing information to those seeking patent protection in the United States of America.
U.S. Patent Law for the International Client
Fortunately for international clients, achieving patent protection in the United States is straightforward. Unfortunately, a single patent covering all countries of the world does not exist. If an inventor wants to protect an invention in a number of countries, then individual patent applications in each desired country must be filed. However, there is a “global” patent filing mechanism through the Patent Cooperation Treaty (commonly referred to as “PCT”), a treaty administered by the World Intellectual Property Organization (WIPO). The PCT allows an inventor to file a single application that can later be examined in any number of PCT member states which cover most of the major industrial countries of the world. The following information discussed below is only intended for general information purposes. Please contact a qualified patent attorney in the United States for specific legal guidance.
Patent Cooperation Treaty (PCT) Basics
The concept of filing an “international” patent application has an obvious appeal. By choosing the international route, Applicants (Clients – International & Domestic) can apply for several national and/or regional patents using a single application (in one language with only one initial set of fees and dealing, initially, with one authority) instead of filing several national applications in the countries where they are seeking the protection for their invention. This can save the applicant time, work and money. Filing an “international” patent application under the Patent Cooperation Treaty (PCT) offers an applicant the ability to preserve the opportunity to obtain a patent in any, or all, of the PCT Contracting States. There are currently over 142 PCT Contracting States.
Any national or resident of one of the PCT Contracting States is entitled to file a PCT international application. An applicant may file an international patent application with the Patent Office in the PCT Contracting State of residence, which will then act as a PCT “receiving office.”
PCT Application Process
To initiate the PCT machinery, an applicant must first file a PCT application in a national Receiving Office. A single search is performed by the Receiving Office, from which an international search report (ISR) along with a written patentability opinion is generated. Optionally, an international preliminary report on patentability (IPRP) is available upon demand. The ISR and written patentability opinion effectively narrow the issues for the national offices, pointing out potential novelty, obviousness, and technical background references. Notably, many companies opt to file with the European Patent Office (EPO) in order to obtain an opinion from that office.
An international application is published 18 months after the filing or priority date. Generally, the ISR is published along with the international application. The PCT application must also enter national phase within 30 months of the PCT filing or priority date. This 30-month period is a notable advantage to PCT filing.
It should be appreciated that the PCT does not automatically result in a patent being issued, and that an applicant must take measures to nationalize in each country desired prior to having the application examined and a patent issued. For national phase filing in the U.S., for example, an applicant must file the national fee; a copy of the international application and an English translation of the international application, if it was filed in another language; preliminary amendments, if required, to the specification, drawings and claims, placing them in compliance with U.S. regulations (e.g., amending the claims to U.S. format if the PCT claims were in the so-called “Swiss-form”, amending figures to comply with USPTO drawing guidelines); an oath or declaration of the inventor complying with U.S. regulations; and a translation into the English language of any annexes to the IPRP, if conducted.
Important Aspects of PCT Applications:
An international patent application generally has the effect of a national patent application in the PCT Contracting States that are “designated” in the application. Alternatively, an international patent application generally has the effect of a regional patent application in the PCT Contracting States that are a party to a regional patent treaty, such as those listed above, provided the region was “designated” in the application. The national, or regional, offices are responsible for the granting of a patent, but the start of the national, or regional, application processing is generally delayed until 30 months from the application’s priority date. Additionally, an applicant may avoid the costs that would arise if separate applications were filed for all the PCT Contracting States by filing an international application under the PCT.
A PCT application may claim the priority, under the Paris Convention, of a previously filed national, regional, or international application covering the same invention, for up to 12 months after the filing of the first filed application.
International Searching Authorities are established patent offices that have been specially appointed to perform “international searches” on international patent applications. There are currently ten International Searching Authorities. The International Searching Authorities report the findings in an “international search report” that is generally available four to five months after the initial filing of an international application. The international search report provides lists of prior art documents relevant to the claims of the international patent application and may provide indications as to the relevance of the prior art to the questions of novelty and inventive step, or non-obviousness. The international search report allows the applicant to evaluate the likelihood of obtaining patent protection in the designated countries.
An international application is published by the International Bureau approximately 18 months after the priority date. The International Bureau also forwards the international application and the international search report to the patent office of each designated country.
An applicant may elect to have an international preliminary examination (IPE) of the application performed. The IPE is carried out by the International Preliminary Examining Authority (IPEA) based upon the international search report. The applicant may participate in the IPE by submitting amendments and arguments to the IPEA. The results of the IPE are set out in an “international preliminary examination report.” The international preliminary examination report provides the applicant with an additional basis for evaluating the chances of obtaining patent protection in the designated countries. The international preliminary examination report is authoritative, but not binding, and the ultimate decision as to whether a patent issues remains with the national or regional offices designated in the international application.
Traditionally, once an international patent application has been filed, all national procedures in the designated States are delayed until the end of the 20th month from the priority date or, if international preliminary examination is requested before the end of the 19th month from the priority date, until the end of the 30th month from that date. The delay gives an applicant at least 8 months (or 18 months where preliminary examination has been sought) more, before having to fulfill the national requirement, than by not using the PCT.
Recently WIPO and PCT member countries elected to give most applicants the additional 10 months, previously only afforded those that requested the international preliminary examination report, for free. Therefore, it is no longer necessary to file a “Chapter II Demand,” or have an international preliminary examination to obtain the benefit of the full 30 month PCT period in countries that have changed their national laws to conform with this change. Over one dozen countries have elected not to adopt the new 30 month rule, therefore consult a qualified international patent attorney and pay close attention to impending deadlines. When in doubt, file the Chapter II Demand to be safe! Upon entering the national phase, the applicant generally must appoint a local agent.
The international route allows the applicant to delay entering the national phase by up to 30 months from the priority date. As opposed to the otherwise applicable priority period of only 12 months from the filing to take a decision regarding the extension of an application to further countries, the applicant thus gains an extra 18 months. This is a considerable period of time that can be used to test-market, to decide in which countries it is worth it to obtain protection, to prepare translations, to assign agents and to pay administrative and lawyers’ fees as well as translation costs. Additionally, the search report and written opinion as well as the optional preliminary examination report provide valuable information to help take the appropriate decision, allowing the modification of the application, thus enhancing its chance for obtaining the respective protection.
Entering the United States National Phase
The United States Patent & Trademark Office receives international applications in the United States Receiving Office and the oversees the prosecution of international applications before the United States International Searching Authority, the United States International Preliminary Examining Authority, the United States Designated Office, and the United States Elected Office.
Timing & Deadlines For: Entering the United States National Phase
Once an applicant has decided to seek patent protection in the United States, and has already filed an international application, various requirements for entry into the national phase must be fulfilled. These requirements include paying national fees and, in some cases, filing translations of the application as filed and/or as amended, and appointment of a United States patent attorney as a local agent. These steps must be taken before the end of the 20th or 30th month from the priority date.
Requirements For: Entering the United States National Phase
1. All applicants must be inventors. In other words, a business entity may not be an applicant. Additionally, the names and addresses of all inventors must be provided in the request upon filing.
2. An oath or declaration executed by the inventor(s) must be furnished within the time limit applicable under PCT Article 22 or 39(l). This requirement may be fulfilled after the expiration of the time limit in response to a notice sent to the applicant, provided a surcharge is paid.
3. A declaration as to the applicant’s entitlement to claim priority of an earlier application must be provided. This requirement may be satisfied if the corresponding declaration was made in accordance with Rule 4.17.
4. An Information Disclosure Statement (IDS) should be filed within three months of entering the national phase.
5. Nucleotide and/or amino acid sequence listings must be provided in computer readable form.
6. A local agent must be a registered United States patent attorney or agent.
7. Examination of an application by the USPTO may start earlier that the expiration of the time limit applicable under PCT Article 22 or 39(l) if an express request is filed along with the basic national fee, a copy of the international application, a translation of the international application (if required), and an oath or declaration of the inventor.
Necessary Elements For: A Patent To Entering Into The United States National Phase
1. A declaration from the inventors.
2. A power of attorney.
3. A copy of the original international application filing and translation, if required.
4. A copy of all amendments and translation, if required.
5. The basic national government filing fee.
Contact a lawyer providing International Patent Legal Services for international clients.