Publication

Intellectual Property

Foreign Patent Considerations

December 1995

The Paris Convention is an international treaty that dictates when foreign patent applications must be filed if maximum international benefits are to be obtained. Most of the countries of the world subscribe to this Treaty. Under the Paris Convention, and subject to the absolute novelty rule (which will be described below), if an inventor files a patent application in his home country, he then has one year (called the Convention year) from that application's filing date (called the priority date) in which to file applications for foreign counterpart patents in all of the other participating "Convention countries." If the counterpart patent applications are placed on file within that Convention year, the other countries will recognize that priority date when applying their laws to the counterpart application. In some cases, patent applications can be filed abroad after the Convention year ends. However, those non-Convention applications do not get the benefit of the priority date under the foreign patent laws.

The Paris Convention also requires that each Convention country must apply its law equally to all patent applications it receives, whether the applicants are citizens of that country or are from another Convention country.

In the United States, the U.S. patent law provides that an inventor may disclose (including market) the invention for up to one year prior to filing a U.S. patent application. This is often referred to as a grace period. Most foreign countries do not have any equivalent provision in their patent laws.

Rather, most foreign countries significantly limit the amount or type of disclosure which can be made prior to the inventor's filing of his home country patent application, if counterpart patent applications in those countries are not to be barred. Many countries permit little or no prior disclosure. This is called the absolute novelty rule. For U.S. inventors, it essentially negates the grace period if the U.S. inventor wants to retain the option of seeking foreign patents. Therefore, it is important for a U.S. inventor to consult with the attorney prior to any disclosure, marketing or sales of the invention, so that the attorney can advise as to the appropriate actions which the inventor should take to maintain foreign filing options for those countries which the inventor considers important.

For every foreign country which has a patent system (a few do not), it is possible to file a patent application with the Patent Office in that country. Almost every country requires that the actual filing and prosecution of applications in that country be done through a patent attorney or agent who is licensed in that country. Gordon & Rees maintains an extensive worldwide network of foreign associates, foreign attorneys and agents with whom we work, to see that our clients' counterpart applications are properly filed and prosecuted in all countries. We instruct the foreign associates about the technology of the inventions and the scope of the patents which the clients wish to obtain. The associates in turn advise us about the proper forms of the applications and the patentability of specific inventions under their laws. The associates also normally translate the applications and related documents into their countries' languages, and provide us with English translations of the correspondence from their Patent Examiners . Direct filing normally must be completed before the end of the Convention year, unless the application is to be a non-Convention application. Direct filing is the only option available in those countries which do not participate in international or regional patent filing treaties.

Under a second international treaty, the Patent Cooperation Treaty, an inventor can file a single PCT application and obtain more time to evaluate the invention without losing potential international patent rights. Over 100 countries (including the major industrial countries) currently participate in the PCT. A list of the PCT Countries is included on a separate page with this brochure. Only two major country groups, Latin America and the Near Eastern countries, have few members participating in the PCT.

Use of the PCT does not result directly in issuance of a patent. Rather, the PCT system provides a simplified (and less costly) procedure by which an inventor can proceed with an international patentability examination, with only limited translation costs (most of the proceedings are conducted in English) and without the need initially to retain foreign associate attorneys or agents.

Also under the PCT, the inventor can initially reserve the option to seek patents in any or all of the participating countries, and only later decide specifically in which of the countries he actually wants to seek counterpart patents.

A U.S. inventor's PCT application is filed at the U.S. Patent and Trademark Office. It is usually cost-effective to ask initially to include all PCT countries, and only later designate selected ones for seeking actual patents. To avoid duplication with the U.S. examination, the PCT patentability examination is usually done at the European Patent Office. During the two-phase PCT procedure, a patent search is made in Chapter I, then a patentability report is prepared in Chapter II. After eighteen months, the applicant must enter a separate national phase, in which copies of the PCT application and report are transmitted to the national Patent Offices of each of the countries or regions which the applicant has selected from the original list. For the most part, only then do foreign associates and translations become involved for the selected countries. Most selected countries give credence to the PCT report in applying their own patent laws to the national phase applications, so that national examination is often substantially reduced, with a concomitant savings in cost. If the invention is ruled patentable under a selected country's laws, a patent for that country will be issued.