A Framework for Protecting Your Invention Outside the U.S.

Rothwell, Figg, Ernst & Manbeck, P.C.
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Patent protection outside the U.S. can be important for a company to enter the global market and to build relationships with partners and investors both domestically and internationally.  In general, there are two options to file a patent application outside the U.S.: (1) file a Patent Cooperation Treaty (PCT) application and then enter the national phase of countries of interest; and (2) file a patent application directly in a foreign jurisdiction.  For both options, the foreign application can be based on and claim priority from a U.S. application.

Filing a PCT Application

The most common route for seeking patent protection in multiple countries is by filing a PCT application.  This type of application is filed under the Patent Cooperation Treaty, which is a treaty between over 150 countries that allows an applicant to enter the examination phase in a foreign country based on an application filed in another country while maintaining the applicant’s priority filing date.

Typically, within 12 months of the filing date of a first-filed application in the U.S. (e.g., a provisional application or a non-provisional application) the applicant can file a PCT application based on the first-filed U.S. application.  After the PCT is filed, within 30 or 31 months (for most countries) of the filing of the first-filed application (i.e., 18 or 19 months after the PCT is filed), the applicant can file one or more “national phase applications” in the countries of interest based on the PCT application.

There are some important benefits to seeking foreign patent protection via a PCT application.  First, filing a PCT application gives the applicant more time to consider whether or not foreign filing is desirable and, if so, the foreign jurisdictions in which the applicant should seek patent protection.  This is especially important for emerging companies whose product development is still at an early stage when filing the first patent application.  Filing and pursuing patent protection in multiple countries can be very expensive and the lengthy pendency under the PCT system offers the applicant time to determine in which global markets they may seek to operate and need patent protection.

Second, the PCT process can provide some insight into how to prosecute the application.  A PCT application will be examined by an “International Search Authority (ISA),” which is the patent office of a country or region selected by the applicant.  The ISA’s examination opinion does not bind any patent office in the national phase, however, it gives the applicant some guidance on the potential rejections the application may face after entering the national phase.  Based on the ISA’s opinion, the applicant can amend the application when entering the national phase to avoid similar rejections, which would place the application in a better position for allowance.

Third, if one or more claims are found allowable in the ISA’s opinion, the applicant may be able to pursue these claims in certain countries in an expedited examination program called “Patent Prosecution Highway,” which can give the applicant a granted patent within a relatively short period of time.  We will discuss more details about the Patent Prosecution Highway program in a future post.

Filing in Countries Directly

An applicant also has the option to file a patent application in a foreign jurisdiction directly.  This option allows an application to enter the examination process faster than the PCT route.  For example, an applicant may choose to file an application in a country or region (e.g., the European Patent Office) where the company will first commercialize or where the examination process is typically easier and/or shorter so they can have a granted patent faster, which may be helpful for an emerging company’s fundraising activities.  Also, some jurisdictions (e.g., Taiwan, Argentina) are not covered by the PCT and an applicant must file their application in those jurisdictions directly if they need patent protection there.  If needed, an applicant may also choose to file a PCT application and in certain jurisdictions directly in parallel.

Considerations when seeking patent protection outside the U.S.

Below are some important factors to consider when seeking patent protection outside the U.S.

Where to file

Where to seek patent protection outside the U.S. depends on the business needs of an applicant.  Foreign patent protection is typically sought in areas that are the potential markets and where important partners, investors, distributors, manufacturers, and/or competitors are located.  Common foreign jurisdictions for seeking patent protection include Europe, Canada, Japan, China, South Korea, and Australia.

Timing

In general, a foreign application (either a PCT or a direct foreign filing) can be filed within 12 months of the filing date of a first-filed U.S. application.  A common approach for a U.S. applicant is to file a provisional application and within 12 months, file a foreign application.

It is important to note that patent systems in many foreign jurisdictions (e.g., some European and Asian countries) require “absolute novelty” for patentability.  Namely, any public disclosure or marketing activity (even by the inventor) before the filing (or priority date) of a patent application will prevent patent protection in such jurisdictions.  This is different from the U.S., which provides a grace period to seek patent protection after the inventor discloses the invention.  Thus, when seeking patent protection outside the U.S., an applicant should avoid pre-filing disclosures or activities that would undermine the patentability of the invention in absolute novelty jurisdictions.

Foreign Filing license requirement      

For a U.S. applicant, a foreign filing license is required for filing any foreign patent applications on inventions made in the U.S.  The requirement is to allow the U.S. government to make sure that certain information is not inadvertently exported or disclosed to foreign governments.

An applicant would need to petition for a foreign filing license before filing an application outside the U.S.  However, a foreign filing license is usually granted automatically after an applicant files a U.S. patent application (provisional or non-provisional).  In these cases, the granting of the foreign filing license will be indicated on the filing receipt of the U.S. application.  Thus, in general, no separate petition is needed as long as the applicant files a U.S. application before any foreign filing.

However, a foreign filing license will not be granted if an applicant requests non-publication of their U.S. application.  The applicant can withdraw the non-publication request and get a foreign filing license before they decide to file outside the U.S.  The consequence of failing to obtain a foreign filing license before foreign filing is serious and can result in the invalidation of all related patents in the U.S.  Thus, an applicant should be very careful when requesting non-publication of their U.S. applications.

Conclusion

Patents outside the U.S. can be a very valuable asset for companies that plan to enter the global market and engage potential partners and investors in the U.S. and other part of the world.  Choosing the foreign filing option that supports a company’s business goals is an important part of the patent strategy.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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