Protecting Technology and Inventions Internationally

by Ladas & Parry LLP

Overview from “Patents are of National Origin”
As noted in “Patents are of National Origin,” obtaining a patent in one country, does not give the owner of the patent worldwide protection for the invention. Instead, a patent application must be filed in or for each country where protection is desired. Moreover, such applications must be filed by a deadline set by each particular country. As is discussed in greater detail in “Patent Perspectives,” patent applications often must have an effective filing date which predates any public disclosure of the invention. This requirement can place quite a burden on the filer in meeting time limits and having enough funds available for filing foreign patent applications. Fortunately, there are treaties which many of the countries around the world have ratified which help to ameliorate this situation. Two of the commonly used treaties are the Paris Convention and the Patent Cooperation Treaty (PCT).

The Paris Convention
The Paris Convention is a treaty which first came into force more than 100 years ago and which most industrialized countries have joined (the most notable exception is possibly Taiwan). In very broad terms, this treaty offers to parties filing patent applications in a member country a grace (or priority) period within which patent applications can be filed in other member countries. In the case of a design patent (and a trademark, for that matter), the grace period is six months. In the case of a utility patent (also known as a patent of invention), the grace period is one year. Thus, this treaty affords an individual or a corporation a grace period within which to file foreign patent applications in member countries, the grace period being measured from the date of filing the first patent application directed to the invention (or design) in a member country. Since most major countries are members of the Paris Convention, the individual or corporation can usually file a patent application in its home country and then later (within the grace period) file corresponding patent applications in other member countries.

Claim to Priority
When a foreign application is filed under the Paris Convention in a country which has ratified this treaty and within the applicable grace period, it is filed with a claim to “priority”. That is, the application in the foreign country will be treated as if it had been filed on the same date as the first application filed in another Paris Convention member country. Another way of expressing this concept is to say that the foreign patent application has an effective filing date which is the same as the actual filing date of the first application. The benefit of this claim to priority is readily apparent to Intellectual Property lawyers. If you are not an Intellectual Property lawyer, consider an invention which the owner has maintained in secrecy prior to filing a patent application in their home country (which is assumed to be a member of the Paris Convention). After the patent application has been filed, the owner may make the invention public (for example, by selling a product embodying the invention or by other promotional activities). The owner can still obtain patents for the same invention in other countries which are members of the Paris Convention, provided the other patent applications are filed within the grace period noted above and a claim for convention priority is made. You may find an example helpful to understand these concepts better.

Non Paris Convention Countries
While many countries have ratified the Paris Convention, there are a number of countries which have not done so. One such country is Taiwan. Since Taiwan follows the general rule noted in “Patents are of National Origin” regarding the required novelty of inventions, Taiwanese patent applications must be filed (as a general rule) before the invention is made public in any way anywhere in the world. However, just because a country is not a member of the Paris Convention, that does not necessarily mean that there is not some other way of making a priority claim. Taiwan is a member of the World Trade Organization whose members are given rights under the TRIPS Agreement as if they were members of the Paris Convention. Taiwan and the United States will honor priority claims based on patent applications (for a one year priority period) and design applications (for a six month priority period) filed on or after that date in the other jurisdiction.
As the reader can readily appreciate, the Paris Convention offers a tremendous advantage to patent applicants. However, despite this advantage, many inventors are still not prepared, even after a one year grace period, to undertake the expense of foreign filings. Fortunately, the Patent Cooperation Treaty, known as the PCT, offers the inventor yet another avenue to defer such expenses.

mapThe Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) has been subscribed to by a large number of countries. Many members of the Paris Convention are also members of the PCT, but there are important exceptions. The countries shown in blue in the map to the right are PCT members. The number of countries which are members of the PCT seems to increase year by year, so do not rely on this map being the last word on which countries are members of the PCT. A current list is usually maintained by the World Intellectual Property Organization (WIPO), but it can be difficult to find WIPO’s list of PCT members. As you can see, most of the major countries of the world are PCT members.

Under the PCT one can file an “International Patent Application” which effectively buys a period of time within which to proceed with a full program of national or regional (such as the EPO) patent applications. The PCT offers an initial phase known as Chapter I and a second phase known as Chapter II. The countries which have ratified the PCT have the option of ratifying only Chapter I of the treaty or of ratifying both Chapters I and II of the treaty. Initially, many countries, including the United States, only ratified Chapter I of the PCT and at that time Chapter I had a fixed length of 20 months while Chapter II had a fixed length of an additional 10 months.

Today, all countries which have ratified the PCT permit an applicant to take advantage of both Chapter I and Chapter II. Thus, the full period of time within which to proceed with a program of national or regional (such as the EPO) patent applications is 30 months from the filing date of the earliest patent application to which priority is claimed or 30 months from the filing date of the International Patent Application if no priority is claimed. The International Patent Application may be filed within the 12 month grace (priority) period provided by the Paris Convention (discussed above) by making a claim for convention priority.

The Chapter I stage involves the filing of the application and the publication of an International Search Report while Chapter II involves “International Preliminary Examination” and the eventual issuance of an International Preliminary Examination Report (IPER) or International Preliminary Report on Patentability (IPRP). Originally, in order to be entitled to the full 30 month time period provided by the PCT under Chapter II, an applicant had to file a “Demand for International Preliminary Examination” prior to entering

Chapter II procedures.
The filing of the Demand for International Preliminary Examination has become optional for almost all PCT member countries and the International Search Report is now combined with a Written Opinion regarding the patentability of the invention. It seems that most applicants have been more interested in obtaining the benefits of the 30 month time period than in amending an application under Chapter II and that the patent offices have had problems in staffing their offices with suitably trained Examiners. So, the PCT has been moving to meet the applicants’ desire and to reduce the examination backlogs at the patent offices by making the filing of a Demand for International Preliminary Examination optional while still giving applicants the desired 30 month time period to file National and Regional Stage Applications. Additionally, the issuance of a Written Opinion, which heretofore only occurred during Chapter II, will now issue with the International Search Report during Chapter I.

In addition to making the filing of a Demand for International Preliminary Examination largely optional (for most countries) and pushing the issuance of a written opinion into Chapter I, the recent changes to PCT practice have also blurred the deadline date for entering Chapter II. But, for those countries which encoded the original PCT Chapter I and Chapter II regimes into their national laws, the deadline date for filing of a Demand for International Preliminary Examination is still 19 months from the filing date of the earliest patent application to which priority is claimed or 19 months of the filing date of the International Application if no priority is claimed. For those countries that either did not encode the original PCT Chapter I and Chapter II regimes into their national laws or have amended their national laws to agree with current PCT practice, the deadline for filing the now optional Demand for International Preliminary Examination is either (i) 3 months from the publication of the International Search Report or (ii) 22 months from the earliest priority date (or the filing date of the International Application if no priority is claimed), which ever is later.

Several countries (including France and Italy) which have ratified the PCT permit their designations to be in terms only of a regional patent application and not a national patent application. When you combine this fact with the fact that some countries still follow the original PCT Chapter I and II regime, trying to figure out that which needs to be done when and where can be a bit confusing.

Filing under the PCT is typically done at one’s home country patent office. In PCT parlance, the filing of the application is done at the “Receiving Office” and the filed application is called an “International Patent Application”. Under PCT Rules, the Receiving Office which an applicant may use depends upon the party’s nationality or country of residence. Fees must be paid when the application is filed and those fees are based on a number of factors, including the length of the application and, originally, the number of countries which were designated.

The Patent Cooperation Treaty is effective for patents of invention only. Unlike the Paris Convention, the Patent Cooperation Treaty has no impact on design patents (or trademarks, for that matter). Thus, you cannot use the PCT to prolong the relatively short six month grace period for filing foreign design applications provided by the Paris Convention.

The International Patent Application
The filing of an International Patent Application is treated as the effective filing of separate patent applications in each PCT member country designated in the International Patent Application. The International Patent Application can often be filed in your native tongue. Thus, for United States applicants the International Application is filed in the English language while for Japanese applicants the International Patent Application is filed in the Japanese language.

Originally, designation fees had to be paid and the applicant had to designate countries specifically in the International Application. Today, the need to specifically designate countries has largely, but not completely, disappeared. The need to pay specific designation fees has now gone. However, there are instances when not designating a particular country can be important.

It is to be noted that the International Application does not mature into some sort of international patent. Quite to the contrary, it acts primarily as a delaying vehicle. This is because eventually National (or Regional, where appropriate) Stage Applications must be filed before patent offices of the member PCT countries designated in the International Application in order to secure patents. These patent offices are referred to as “Designated Offices” in PCT parlance. Failure to take such action causes the International Patent Application to lapse in the country for which no action was taken. However, an International Application may pend for up to 30 months as mentioned above. Thus, instead of having only a twelve month time period within which an inventor must file foreign applications in order to claim priority, with the PCT, the inventor can gain an additional eighteen months before having to incur the relatively large expenses of completing the applications at each of the Designated Offices (entering the “National or Regional Stage” in PCT parlance) which entails translating the International Application into the official languages used at the Designated Offices, paying the requisite official fees, etc. Those additional months can be crucial to the exploitation of an invention. They may give the inventor additional time to raise the funds required to file patent applications in a large number of countries, or provide additional time within which to gage the economic importance of the invention, or to find licensees or even partners in the enterprise. The reader may find that some examples will assist the reader in appreciating the foregoing. You should review at least the second example since it describes a trap for the unwary.

An International Patent Application follows the general form of patent applications in that it must include a technical description of the invention, drawings (when appropriate) depicting the invention and claims setting out the metes and bounds of the subject matter for which patent protection is being sought, in addition to certain formal documents which must also be submitted when the International Application is filed.

Qualified PCT Applicants
A party may file an International Patent Application only if the party is a citizen, resident or domiciliary of a PCT member country and also provided that the applicant files preferably at the Receiving Office designated for their country or at the International Bureau (IB) of WIPO in Geneva. The applicant may be a corporate entity, although if the United States is a designated country, then the applicant for the purposes of the United States must be the inventor or inventors.

Typically, the Receiving Office for a given PCT member country is the local national patent office although all qualified applicants also have the option of filing an International Patent Application with the IB if they prefer. A qualified party, that is, a party that is a domiciliary, resident or citizen of a member PCT country, may file their International Patent Application initially at their Receiving Office or at the IB (that is, without first having filed a regular domestic patent application at the patent office in their home country) or they may wait to file at their Receiving Office or at the IB near the end of the one year grace period provided by the Paris Convention if they started out by filing a regular national patent application. Countries which join the PCT must also be members of the Paris Convention, and thus the International Patent Application can be filed within the one year grace period provided by the Paris Convention. Often the applicant elects initially to file a patent application at their home patent office as a regular domestic patent application rather than as an International Patent Application. Then the Applicant files an International Patent Application at their Receiving Office close to expiration of the one year grace period provided by the Paris Convention. A majority of the International Patent Applications filed follow this latter route and are filed at the applicant’s Receiving Office rather than at WIPO.

It should be perhaps noted, in passing, that the choice of the Receiving Office to be used can be complicated by laws governing the export of technology for the inventor’s home country and/or where the invention was made.

Chapter I
Chapter I enables one to file an application at the PCT Receiving Office and have it pend for a period (normally 30 or 31 months depending on the country of interest from either (i) the filing date of the International Application (if no priority date is claimed under the Paris Convention) or (ii) the earliest claimed priority date. A priority date would normally be claimed to the home country filing date if the International Application is filed at the Receiving Office within one year of the home country filing date. As such, PCT Chapter I gives the applicant an additional time period beyond the twelve month grace period provided by the Paris Convention before the substantial expenses associated with entering the National (or Regional) Stage must be incurred.

During Chapter I a search of the prior art is accomplished. Applicants often have the choice of using a different patent office for doing the search than the patent office which serves as the Receiving Office for the applicant. The prior art search is reported in an International Search Report which is discussed more fully below. Under the new PCT regime, a Written Opinion regarding the patentability of the claims will accompany the International Search Report. If no Chapter II Demand is filed, the International Search Report and the accompanying Written Opinion will form the International Preliminary Report on Patentability (IPRP) that will be published, in due course, by WIPO.

Chapter II
Chapter II provides a mechanism for an application to undergo an interactive International Preliminary Examination of the patentability of the invention. Chapter II also increases the pendency of the International Application from twenty to thirty months from the priority date, if claimed, or from the international filing date, if no priority was claimed, for those countries which continue to adhere the original PCT regime. To take advantage of interactive examination available under Chapter II one must file a Chapter II Demand and pay an additional fee, called a Chapter II Demand Fee, at the PCT Office which is to attend to the interactive examination. The International Preliminary Examination process is discussed in greater detail below.

Search and Publication of the Invention under Chapter I
While the Paris Convention serves primarily to enable one to obtain a grace period for filing foreign patent applications, the PCT offers more. Once a party has filed an Intentional Patent Application at their Receiving Office, a search of the prior art is conducted for the invention to apprise the owner of what prior art appears to be relevant to the invention. This search is made under Chapter I and a report called the International Search Report normally is made available to the applicant (and to the public) shortly before the deadline date for entering Chapter II. Under the new PCT regime, a Written Report regarding the patentability of the invention is made available to the applicant. If it appears to the applicant that the prior art disclosed in the search and discussed in the Written Opinion renders the invention unpatentable (or less important than first thought), the owner of the application may then choose to allow the International Application to lapse as opposed to going forward with the expense of entering the National Stage. Additionally, under Chapter I of the PCT, a copy of the patent application (together with the aforementioned International Search Report) is published 18 months from the priority date (if claimed) or the international filing date (if no priority is claimed). This publication puts the public on notice that the applicant is seeking to protect the invention and also effectively precludes another party from obtaining a patent on that invention in many countries since the PCT publication will create a prior art bar to subsequent applicants. Of course, in countries, such as the United States, which have a grace period, that bar (due to publication of the PCT application) will occur one year later for inventors who had previously made the same invention.

A negative aspect of the publication is that if the owner of the International Application has not previously filed in foreign countries which are not designated in the PCT application, then the applicant will be precluded from thereafter seeking patent protection of the published invention in those countries (unless the country in question has a national grace period or the PCT publication is not prior art in the country for some other reason). This reiterates that which was noted earlier in “Patents are of National Origin” that a publication of the invention prior to filing a patent application for the invention will preclude patent protection in most countries. However, in many, but not all PCT countries, this publication of the invention can enable the owner of the International Application to seek damages in subsequent patent infringement litigation back to the date of publication of the International Application. This ability to seek backdated damages arises if a patent is ultimately granted for the invention in countries which allow such backdating of damages. It may also involve translation of the claims of the International Application or otherwise putting an unauthorized user on notice in order for the backdating to occur.

Examiner’s Review of the Invention under Chapter II
In Chapter II the proceedings are called “International Preliminary Examination”. Under the old regime, an Examiner would review the prior art documents reported in the International Search Report and issue an International Preliminary Examination Report (IPER) regarding the patentability of the invention. The IPER was based not only on the prior art references mentioned in the search report, but also considered whether the claims in the International Patent Application meet other criteria for patentability, including such matters as the clarity of the claims, and prior art which may be known to the Examiner but which did not appear in the International Search Report.

Under the new regime, the Examiner instead issues an International Preliminary Report on Patentability (IPRP) which is expected to have the same content as the older IPER.

Prior to issuance of the IPRP or IPER, a Written Opinion should issue. Under the old regime, the Written Opinion would issue after the Demand had been filed if any claim was not patentable. Under the new regime, a Written Opinion is to be prepared under Chapter I in connection with the International Search Report. However, if the office performing the search and the office performing International Preliminary Examination are different offices, then a separate Written Opinion may still be issued by the office doing the examination after a Demand is filed, if any claim is not patentable.

The owner of the patent application has the opportunity to respond to a Written Opinion and argue for the patentability of the claims as well as make amendments to the claims (assuming that the Examiner takes a negative view of at least some of the claims in the application). Under the new practice, this response must be filed with the Chapter II Demand if the Applicant desires that the claims be amended and/or desires that its views regarding the patentability of the claims be considered. Any arguments and any amendments made to the claims will be reviewed by the Examiner and may cause the Examiner to change his mind regarding the patentability of the claimed invention. Irrespective of whether the Examiner’s initial opinion changes with the subsequent submissions, the Examiner will issue an IPRP setting forth the Examiner’s position regarding the patentability of the claimed invention. Unfortunately, in the past, IPERs have sometimes issued long after the deadline date for entering the National Stage has passed and any delay in issuing the IPER/IPRP does not excuse the applicant from filing the National (or Regional) Stage applications in a timely fashion.

Ultimately the IPER/IPRP is passed to the countries designated in the International Application in order to assist the examiners at the various national patent offices in reviewing the eventual National Stage applications. This should expedite the review of the applications in those countries and give the applicant a higher degree of confidence as to what will be the outcome of the national examination processes. Thus, there is a possible cost savings for the applicant in that an initial examination of the application under a single authority occurs which examination can be used in the Designated Countries hopefully to convince the examiners in those countries to allow the applications to mature into patents with no or little additional amendment of the applications. In some instances, if appropriate arguments and amendments are made during Chapter II, this can result in the applications being granted as patents with a minimum of additional interplay with the examiners before the Designated Offices. Moreover, in countries where no real examination is undertaken, the PCT International Preliminary Examination may offer the application the sole opportunity to prosecute the application before it matures into a patent. Thus, the PCT procedures may not only offer a welcome delay in deciding where (and whether) to file patent applications, but can ultimately save one money in securing foreign patents. Unfortunately, few applicants are interested in this latter feature of the PCT.

Other International Agreements
The foregoing has introduced the reader to two international vehicles available to enable one to delay certain foreign filings. There are other international treaties and bilateral agreements which a practitioner will consider when counseling a client regarding protecting Intellectual Property rights in foreign countries. Some of these include the Eurasian Patent Convention, the European Patent Convention, the OAPI (whose member countries are a number of African nations), the Pan-American Treaty, ARIPO (whose member countries comprise a different group of African nations) and certain bilateral agreements.

Those interested in biotechnology will also be interested in the Budapest Treaty on Deposit of Microorganisms. Many countries require that microorganisms, which are the subject of patent applications, be deposited at a national depository. This treaty permits the deposit of the microorganism to be done instead at one of a group of International Depository Authorities.

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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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