UL Lafayette: Intellectual Property: Foreign Patent Applications

UL Lafayette: Intellectual Property: Foreign Patent Applications: "

Foreign Patent Applications
PATENT LAW YOU CAN USE™ By Howard M. Eisenberg © 2000
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Abstract - A United States patent is effective only in the United States. Separate patents must be obtained in each country where patent protection is desired. As a property right, a patent is effective only in the particular country that issued the patent. A U.S. patent provides patent rights only in the U.S. and in no country other than the U.S. Therefore, a patent application must be filed and prosecuted in each country where patent protection is desired. In this issue, I will discuss some of the issues that you should be aware of when patenting outside of the U.S. Primarily, I will focus on the differences between U.S. and non-U.S. patent practice. I will mostly provide generalities regarding the most notable differences between U.S. and foreign patent practice. Please don't take this article as legal advice relating to any particular issue. If you have a particular question or issue related to patents in a particular country, I advise you to contact a patent attorney or agent in that country. The United States is a signatory nation to what is called the Paris Convention for the Protection of Industrial Property. According to the Paris Convention, an applicant for a patent in any of the signatory countries, such as the U.S., may later file the same patent application in any of the other signatory countries and receive the benefit of the filing date in the first country. What this means is that the later-filed application in the foreign country will be treated as if it were filed in that country on the same date that it was filed in the U.S. This only applies if the later-filed application is filed within one year of the original filing date. This deadline is important, and is not extendible. Of course, the application may be foreign-filed after the one-year deadline. However, in this case, the foreign application will have a priority date as of the date it was foreign-filed, not the date it was filed in the U.S. The expenses involved in foreign patenting may be extremely high. Your attorney in the U.S. cannot prosecute the patent application in the other countries. You will therefore need to find a patent attorney or agent in each of the countries. Typically, your U.S. attorney will arrange for the foreign patent associates and will oversee their work to ensure that your interests are being served. Other fees that must be paid are the official fees, such as filing fees, in each country and costs of translation of the application from English into the language of the country. The official fees and translation costs can be very expensive. One major difference between the U.S. and other countries is that the U.S. patent law provides a one-year "grace period" from the time an invention is used or disclosed in a printed publication to the time a patent application must be filed. It is only after a year has passed that a patent will be barred. This is not the case in most other countries. Most countries have a rule referred to as "absolute novelty." This means that if there is any public disclosure or use of the invention at any time before the priority date of the patent application in that country, the application is barred and will not issue as a patent. What this means is that, even with the one-year period provided by the Paris Convention and the one-year grace period under U.S. law, if there was a public disclosure even one day before the U.S. priority date, then foreign patenting will not be available. A few countries do have a limited grace period for public disclosure. Canada and Japan, for example, permit a patent application to be filed within 6 months of a public disclosure, if the disclosure was made by the applicant or by someone under the control of the applicant. To be safe, however, it is best to remember the general rule that there is no grace period at all for filing a foreign patent application following a public disclosure. Another difference between U.S. and some foreign countries is that in the U.S., applications that are filed are automatically examined in turn. In some other countries, once an application is filed, it will not necessarily be examined. In these countries, the applicant may elect to keep the application pending for several years without it being examined. Eventually, the applicant may file a Request for Examination. It is only at that time that the application will be reviewed for patentability. Countries with this type of system typically charge a maintenance fee to keep the application pending during the time between filing and examination. The U.S. is alone in having a "first-to-invent" system, in contrast to the "first-to-file" system of other countries. This means that, in the U.S., if two inventors file separate patent applications claiming the same invention, the inventor that can prove the earliest date of invention will be entitled to the patent. Even if the first inventor filed a patent application later than the second inventor, the first inventor will get the patent and the second inventor will not. The contest to determine who is the first inventor and is therefore entitled to the U.S. patent is called an "interference". Patent interferences do not exist in other countries. Under their "first-to-file" systems, the applicant that is the first to file the patent application is entitled to the patent, even if the later applicant was the first inventor. The actual patent application process differs somewhat between U.S. and foreign practice. In the U.S., an application must be filed in the name of the inventor or inventors. It is very important to correctly identify inventors for U.S. applications as incorrect naming of inventors can be the basis for invalidating the patent. In foreign countries, correct inventorship is not the same type of issue because the application may be filed in the name of the owner of the patent, which may be a university or a company. In the U.S. a patent application is required to disclose the "best mode" of the invention. This is the subjective best way in the mind of the inventor to practice the claimed invention. Other jurisdictions do not have this requirement. This difference in best mode is important, especially in view of the new rules regarding publication of U.S. patent applications that took effect in November 2000. If an applicant wishes to keep the best mode secret until a U.S. patent issues, the applicant may do the following. File the U.S. application, which must of course contain a disclosure of the best mode. File the foreign applications within one year and leave out the best mode from the foreign applications. Then, request that the U.S. application be published only to the extent that it was filed in the U.S., that is without the disclosure of the best mode. In this way, the inventor may maintain a trade secret on the best mode until the time that the U.S. application issues as a patent. Another difference is that foreign countries, unlike the U.S., generally do not have the duty of candor during prosecution of patent applications. In the U.S., any material prior art that is known to the inventor must be submitted for review by the Patent Office. This is not required in other countries. In both the U.S. and in other countries, only one invention may be claimed in an application. There is a difference, however, in how it is determined whether more than one invention is claimed. In the U.S., an application will be found to contain more than one invention if the claimed inventions are independent or distinct. "Independent" in this context means that the two inventions have no disclosed relationship to each other. "Distinct" means that the two inventions may be practiced separately and that they are patentable over each other. In other countries, a different standard is used to determine if an application claims more than one invention. Under the "unity of invention" standard, as long as the claims contain the same "special technical feature" which links the claims so that they form a "single general inventive concept," they will be examined in a single application. An example of this is the situation where there is an application claiming a DNA sequence, a protein encoded by that sequence, an antibody produced in response to the protein, and a method of treatment or diagnosis using the antibody. In the U.S., it is likely that the Examiner would rule that the application claims two, three, or even four different inventions, each requiring that a separate application be filed and examined. Under the unity of invention standard used in most foreign countries, it is possible that the claims would be examined in a single application. Many countries provide for a period of opposition before a patent issues. The opposition period does not exist in U.S. law. In countries that have an opposition procedure, after a patent application is determined to be patentable, there is a period of several months during which another party may oppose the grant of the patent and may present evidence to show that the patent should not issue. The evidence may be in the form of prior art that the Examiner did not consider or may be evidence to show that the opposing party publicly used the invention before the priority date of the application that is about to issue. In the U.S., which has no opposition procedure, once a patent application is found to be allowable, it issues without input from other parties. A party that feels that the patent should not have issued may only contest the patent in a reexamination proceeding or during the course of a litigation involving the patent. This article has briefly covered some of the major differences between U.S. and foreign patenting. However, this subject is extremely complex and cannot adequately be covered in a single short article. The major points I want to emphasize are the one-year period for claiming the priority date of an earlier filed application, the lack of any grace period after public disclosure, and the high costs associated with foreign patenting. Your attorney is in the best position to advise you regarding foreign patent filing in your particular circumstances.
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Reprinted by permission from the author. Howard M. Eisenberg is a biotechnology and life sciences patent attorney who represents a number of university clients. His particular area of concentration is in patents involving human or veterinary medicine.

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