Protecting Inventions Internationally – PCT Example

by Ladas & Parry LLP

Exemplary Foreign Filings under the PCT

The United Kingdom, Japan and Norway, are all members of both the Patent Cooperation Treaty and the Paris Convention. The British Patent Office acts as the Receiving Office for the United Kingdom, the Japanese Patent Office acts as the Receiving Office for Japan and the Norwegian Patent Office acts as the Receiving Office for Norway. We will now discuss two hypotheticals. In the first hypothetical, it is assumed that the International Patent Application is filed claiming priority to a domestic patent application. In the second hypothetical, it is assumed that the International Patent Application is is filed before any other patent applications are filed.

Hypothetical number one: Filing Domestically First

Consider now the following hypothetical situation. A Japanese national, hereinafter called the “Japanese filer”, makes an invention in Japan, keeps their invention secret and then files a patent application at the Japanese Patent Office on January 10, 2010. Soon thereafter the Japanese filer advertises and sells products incorporating the invention. Purchasers of the products can readily deduce the invention after they have purchased the product. The Japanese filer also desires to obtain patent protection on the invention in the United Kingdom and Norway and perhaps in other PCT member countries as well. In order to obtain such protection, the Japanese filer must file an International Application by January 10, 2011 at the Receiving Office in Japan, designating Norway and the United Kingdom, along such other PCT member countries in which the Japanese filer is interested in obtaining patent protection.

In the short term, this is financially a very advantageous action to take. Had our Japanese filer not used the Patent Cooperation Treaty, they would have had to pay patent filing fees and translation charges for filing separate applications in Norway, Great Britain, as well as perhaps several other countries, by January 10, 2011. These charges would had to been incurred in order to secure filings in those countries within the one-year grace period provided by the Paris Convention. By instead filing under the PCT, the Japanese filer need file only one application at the Japanese Receiving Office, and pay the relevant fees. No translation is needed until the National Stage is entered eighteen months later (assuming the Japanese filer opts for Chapter I and II proceedings). The delay afforded by the PCT becomes more and more important as the number of countries of interest increases.

Turning again to our Japanese filer, they could file their International Application at the Japanese Receiving Office on January 6, 2011, which is within one year from their Japanese filing date, and still have available up to eighteen more months within which to enter the National Stage.

If the Japanese filer also desires patent protection in countries, such as Pakistan or Argentina, which are not members of the Patent Cooperation Treaty, but are members of the Paris Convention, then the Japanese filer will need to file both an International Application and a domestic application in each of the non-PCT member countries by the January 10, 2011 deadline date set by the Paris Convention.

Hypothetical number two: Filing under the PCT First

Now let us consider a second example. In this example, it will be very beneficial for the applicant to file first at the Receiving Office rather than at their domestic patent office. This situation often comes up in the context of a United States Continuation-In-Part (CIP) patent application. A CIP is a type of patent application which is only found in the United States. Other countries permit something similar to the U.S. CIP practice to occur, but they impose certain restrictions which tend to keep patent applicants from falling into a trap for the unwary which hopefully will become clear to the reader as this hypothetical unfolds.

For those who are not aware of just what a CIP application is, let us explain briefly. Inventions are not static, they are dynamic. The inventor makes an invention and immediately starts to improve upon it. In many ways inventing is a continuing process. The CIP practice found in the United States recognizes this fact. Here is how it works.

An inventor makes an invention (we will call it invention “A”) in June 2007 and files a first patent application on invention “A” in September 2007. The inventor continues to make improvements and by May 2008 the inventor is ready to file another patent application which includes the new subject matter (we call the later improvements invention “B”). The latest patent application is denominated a CIP application since it includes both the original subject matter “A” and the later subject matter “B”. That CIP application is filed at the USPTO as a domestic patent application which is treated as having two filing dates, a September 2007 date with respect to the original “A” material and a May 2008 date with respect to the later “B” material. Just as inventing is a continuous process, so too is the CIP practice. That is to say you can file a series of CIP applications in time with the development of the invention and the claims of a particular CIP application will have different filing dates associated with them depending on when the subject matter which provides support for the claims first appeared in a patent application in the stream of CIP applications.

Getting back to the trap, here is how our unwary inventor gets trapped by this practice. In this example, our inventor has filed a first patent application on, say, September 10, 2007, for invention “A”. By May 2008 our inventor has created improvement B to invention A and a fresh CIP application may now be written for inventions A plus B is written and filed at the United States Patent and Trademark Office on, say, May 25, 2008. The original patent application for invention “A” is still pending at the United States Patent and Trademark Office. Moreover, since the invention is still in development, the inventor keeps everything very secret.

The Paris Convention one-year grace period date comes up on September 10, 2008 and our inventor is busily considering his or her options in late 2008 regarding the possible filing of foreign patent application. The inventor decides to do nothing since (a) money is short, (b) no public disclosure of the invention will occur for some time and (c) our inventor just received a first official action from the USPTO rejecting most of the claims in the original application. It just does not seem to be a good time to even think about filing foreign patent applications.

A second Paris Convention one-year grace period date comes up in May 2009 based on the CIP application. In April 2009 things are starting to really hum. An official action has issued in the CIP application which is very encouraging and the US patent Examiner allowed the original application in response to the arguments which were filed in response to the first official action. In fact, the first US patent will issue that very month! Now foreign patents seems to make much better sense so an International Application is filed on May 10, 2009 for inventions “A” and “B” and claiming priority to the CIP application filed on May 25, 2008. The International Application designates every PCT member country since the invention is looking to be economically lucrative. Everything looks great for our inventor! By the time the National Stage needs to be entered in the designated countries our inventor will have more than enough money to cover those expenses.

So what is wrong with that picture? If you saw the trap, take a bow. If not, read on. When the National Stage applications are filed and prosecuted our inventor learns to his or her dismay that their U.S. Patent which issued in April 2009 is prior art! That really takes in the wind out of the sails of the foreign patent applications since the only claims can now be granted will be on the improvements “B”. But the broadest and economically most important claims are supported by invention “A” and those are the very claims which are now barred overseas! How did this happen? How could it happen?

Recall that under the Paris Convention priority can only be claimed to the first filed foreign application. Consider an European Patent Application which is filed as a result of the International Application discussed in the hypothetical. That application claims priority to the U.S. Patent Application filed in May 2008. However, that U.S. application was only the first application with respect to invention “B”. It is a second patent application with respect to invention “A” and thus priority cannot be claimed to it.

Accordingly, the European Patent Application is treated as claiming a proper Paris Convention priority only with respect to invention “B”. As to invention “A” there is no valid priority claim. The May 2008 application is not a first application and the September 1993 application was filed outside the one year grace period provided by the Paris Convention. As to invention “B” the European Patent Application only has a May 10, 2009 filing date (i.e. the date on which the International Application was filed), and that date postdates the grant of the US Patent in April 2009. The applicant’s own US Patent is prior art!

Getting around the trap is easy, if you see it coming. The bottom line is that the International Application must be filed before the U.S. Patent grants or there is any other publication or divulgation of the invention. Instead of trying to remember that the International Application must be filed before the granting of the U.S. Patent in April as opposed to before the Paris Convention date in May, we suggest that you strongly consider the filing of an International Application whenever ever you might file a CIP application. If the May 2008 application had been filed as an International Application (designating the U.S. for a CIP application as well as the rest of the world), then the filing date of the European Patent Application would have been in May 2008, and clearly predate the grant of the U.S. Patent almost a year later. Also, you have the option of claiming priority to the first application (in which case the inventor must enter the National Stage earlier) or the priority claim can be subsequently dropped (so that the National Stage dates are exactly the same as in the hypothetical).

The filing of an International Application instead of a domestic patent application certainly has its advantages in this hypothetical. It provides more flexibility (with respect to possibly claiming priority to the first application), it save money (not a lot, but some – trust us) and most importantly it saves you from getting into an awkward position (so say the least!).

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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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