How do I patent my invention in foreign countries?
Before filing for patent applications in foreign countries, all applicants for foreign patents on inventions made in the United States must first petition the government for a foreign filing license. This license is usually granted automatically and is contained on the filing receipt returned by the USPTO a month or two after the filing of the United States application. In some cases the license is not specifically granted or denied, in which case the license requirement is waived as long as the applicant waits at least six months after the filing of the United States patent application to file a foreign patent application.
Filing a foreign patent application is also defined to include the act of sending the invention description to a foreign attorney or translator for preparation of the patent application. The policy of this requirement is to provide the government with the opportunity to review the invention to make sure that no secrets related to defense or energy are being inadvertently exported to foreign governments. The penalty for failing to properly receive a foreign filing license is that any resulting United States patent may be rendered invalid, and those involved (including the attorney, inventor, and company) are subject to a fine and imprisonment for not more than two years.
Beginning with a United States patent application, applications for foreign patents usually take one of three routes: filing via the Patent Cooperation Treaty (PCT), filing with the European Patent Office (EPO) or filing directly in individual foreign countries. Your United States patent attorney can assist with selection of the option which makes the most sense for your application, as well as with the start of the application process.
The first method of filing your patent application in foreign countries is through a Patent Cooperation Treaty Receiving Office. The Patent Cooperation Treaty (PCT) is an agreement between some 165 or so member states and groups of states which sets basic rules for filing patent applications and greatly streamlines the international patent search process and preliminary examination of the filed applications. Nearly every commercially important country in the world is a member, and additional countries continue to join the group. The application process through the PCT system is somewhat complicated, and because of the number of countries being regulated by this agreement, the dates and various deadlines are rigidly enforced.
One of the wonderful characteristics of the United States patent system is that, although there are hundreds of ways as an inventor to get into trouble with the USPTO through missed response deadlines and bounced fee checks, there are nearly as many ways to petition for an extension for or revival of an abandoned application. True, petitioning the government to correct a procedural mistake costs money, but careless inventors and careless attorneys in America are generally able to buy their way out of Patent Office trouble.
Other individual countries also have various “forgiveness” processes when deadlines are missed. The PCT, however, is not so forgiving. Failing to take the appropriate steps on time will result in the fatal abandonment of the application.
The PCT process starts with the filing of a PCT patent application. The PCT application may claim the priority filing date of previously filed United States provisional or nonprovisional patent applications filed within the previous one year. It is essential, however, that either the PCT application or the United States application claimed as the priority application was filed prior to public disclosure or other loss of novelty of the invention, such as publication or public use.
The PCT application designates a list of countries that may be selected by the applicant for later national filing. Following the PCT filing, the PCT application is published approximately 18 months after the priority date. A patent search occurs, followed by a preliminary examination. Once the preliminary examination is complete and before the 30th month after the priority date, the PCT process ends and the application may be converted into national phase applications to any of the previously designated countries. Each individual country will require a separate filing fee and possibly a translation into the native language of the country.
As an alternative, applications for patents that will be sought in only Western European countries, can be efficiently filed in the European Patent Office (EPO). Applications for EPO patents can be filed and prosecuted in English, French or German; however, translation into the national language of each of the selected countries is required following completion of the EPO application process. The average EPO patent takes about 44 months to be examined.
There are several advantages to filing a patent with the EPO when only European patent protection is desired. First of all is the cost savings. The EPO enables the cost-efficient filing with and examination by all the contracting states with payment of just a single fee. Since your patent attorney will only need to deal with one patent office (the EPO), there is also a significant saving in legal fees.
A second reason for choosing the EPO is that it is highly regarded throughout the world for performing thorough and comprehensive patent searches. A patent that is examined by the EPO carries with it the confidence that the related prior art has been well-researched. This is especially useful, since a number of the European states do not perform substantive patent examinations – they merely register patents, so every litigation proceeding involving a registered patent must then involve the equivalent of a trial to determine validity. The EPO examination, therefore, increases the value and effectiveness of a registered patent.
Following examination of the patent by the EPO, the Office issues the equivalent of an EPO patent. Within three months of issuance, this EPO patent must then be translated and registered with the individual countries. This final step of translation and registration is a seemingly unnecessary step. However, each country has a strong financial interest in the registration fees and annual maintenance fees that are paid by inventors into their national treasuries. Also, all countries strongly desire to have their country’s patents translated into the national language of that country. The whole point of the patent system is to store and disseminate knowledge for the public good; little public good is served if the populace cannot read the patents. Few countries are willing to abandon their official language requirements for the sake of global expediency.
In addition to the PCT and EPO routes to foreign patent filing, the third method of filing your patent application in a foreign country is to file directly into the individual countries of interest. Direct national filings, that is, filing your patent application separately in individual countries, is cost effective if there are only one or two foreign countries of interest, or if the countries of interest are not signers of the Patent Cooperation Treaty (PCT). The reason that direct national filings are more expensive is that each country performs its own patent search and patent examination. Individual country filings do not enjoy the cost savings of the EPO and PCT filings in which searches and examination results are shared.
Work through your United States patent attorney to gain access to a competent attorney who practices in your country of interest. He or she will likely have a working relationship with a law firm in that foreign country who can help you file and efficiently prosecute your patent application.
Learn more by visiting our microsite Filing A Foreign Patent, a resource to assist you in protecting your inventions and ideas outside of the U.S.
Contact John Ferrell at JFerrell@carrferrell.com if he can further assist you.
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About the Author
John Ferrell is a founding partner of Carr & Ferrell LLP, one of Silicon Valley's foremost technology law firms, and specializes in patent and intellectual property law matters. He is the Chair of the firm's Intellectual Property Practice Group.
jferrell@carrferrell.com
650.812.3408