As patent rights are granted by national governments, a single “Global Patent” which provides coverage worldwide does not exist. Accordingly, a patent granted by the United States Patent and Trademark Office (USPTO) on behalf of the United States government provides an Applicant with legal protection (exclusionary rights) only in the United States and its territories. For example, once a patent grant is obtained in the United States, the Patentee is provided with:
“the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into theUnited States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.” (see 35 USC 154)
Although the purpose of patent law is generally similar across all jurisdictions (e.g., promote technological progress by providing a temporary exclusionary property right in exchange for the full disclosure of an invention which may be practiced freely after the rights expiration) each jurisdiction has its own specific legal requirements which must be satisfied to obtain legal protection for an invention.
To obtain patent protection outside of the United States (and its territories), a patent application must be filed (and subsequently granted) in each respective jurisdiction in which patent protection is desired. This article will explore the two primary routes that are utilized by Applicants who are interested in pursuing international patent protection.
Foreign Filing License
Prior to filing a patent application outside of the United States (assuming the subject technology was invented (even partly) in the U.S.), an Applicant must receive a foreign filing license to comply with the Patent Secrecy Act. This requirement ensures that technology which may be detrimental to U.S. National Security is not published abroad as a patent/patent application publication. To obtain such a license, an Applicant may either: 1) file a United States Patent Application and wait to receive a foreign filing license thereafter on the filing receipt or through the passage of time (6 months); or 2) file a petition for expedited foreign filing license.
Patent Application Filing
The filing of a provisional, design, utility or PCT (in the US receiving office) application is considered a petition for a foreign filing license. (see 37 CFR 5.12(a)) Accordingly, if an Applicant files a patent application in the United States, a foreign filing license will usually be granted thereafter (unless it is made the subject of a secrecy order). Further, 35 USC 184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. (see 35 USC 184 which states that: “except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country.”)
Petition for Expedited Foreign Filing License
Conversely, if an Applicant chooses to file internationally (without filing a national or PCT (in the US receiving office) application) or requires a foreign filing license expediently, a petition for expedited foreign filing license may be preferred as the USPTO will usually process it within three business days of receipt (see USPTO – Licensing and Review – Frequently Asked Questions (FAQ)).
Timing
Once a patent application is filed in one country (Paris Convention), the Applicant has one year to file a corresponding utility patent application further to either the PCT or Paris convention in another (member) country (or 6 months for a design patent application further to the Paris Convention but not the PCT). Further, it should be noted that if a provisional patent application is filed, this one year time period is calculated from the provisional patent applications filing date.
By “claiming priority” in a subsequently filed patent application (in one country) to an earlier filed patent application (in another country), the subsequently filed patent application has the same legal effect as if it was filed on the earlier filing date.
Absolute Novelty Requirement
The United States provides a “grace period” for filing a patent application after a public disclosure has occurred. However, nearly all other countries employ an “absolute novelty requirement” which bars patentability if a public disclosure has occurred prior to the filing of a patent application (or a priority claim to an earlier filing). Accordingly, it is critical for an Applicant to remember that if international patent protection is desired, the Applicant will usually be required to file a patent application prior to any type of public disclosure/sale/use/etc. to avoid loss of rights (as always, an attorney within each specific jurisdiction should be consulted regarding that jurisdictions laws).
Filing a Patent Application Internationally
Once an Applicant has determined that international patent protection is desired, the next step is deciding which of the preferred routes will be utilized: 1) a patent application further to the Paris Convention, or 2) a patent application under the Patent Cooperation Treaty (PCT). Each type of application has a number of items that must be considered from a cost and timing perspective.
Paris Convention
Overview
Under the Paris Convention, an Applicant has one year (or 6 months for a design patent application) to file in another signatory country(s) after a first patent application is filed in a first signatory country. It should be noted that if a provisional patent application is filed, the Applicant has one year to file a patent application further to the Paris Convention from the provisional patent application filing date (not the non-provisional patent application filing date). Further, most signatory countries to the PCT are also signatories to the Paris Convention, and most countries are signatories to the Paris Convention.
Benefits
Filing in Fewer International Jurisdictions: Filing directly in each patent office further to the Paris Convention is typically preferred over the PCT from a cost perspective when an Applicant is interested in obtaining patent protection in just a couple of countries.
Expediency: If speed is an important consideration, a patent application filed further to the Paris Convention will usually yield a more expedient examination.
If international patent protection is desired, a Patent Cooperation Treaty (PCT patent applications) application should additionally be considered.