5/18/16 Making The World Your Oyster Considerations and Strategies for International Patent Protection Should We Go Global • You have decided that you have an invention worth patenting in the US. Congratulations! • Could this invention be worth patenting outside of the US? GLOBAL MARKETING POTENTIAL • First and foremost, what is global potential of the invention? • Where could it be marketed and sold? • What would the commercial objectives be in each country? • Would it be useful to have a monopoly on this invention? 1
5/18/16 USE OF GLOBAL PATENTS OR PENDING APPLICATIONS • How will the patents (or pending patent applications) be used? • Would they be used offensively , defensively , licensed ? • Would it help to protect market share of a larger business division? PRIORITY PATENT APPLICATION To pursue international patent protection typically, a priority patent application is first filed in the home country. This can be a regular patent application, or a provisional • application The priority application serves as a placeholder for any future • international patent applications giving the priority date OPTIONS FOR INTERNATIONAL PATENT PROTECTION • File separately in each country of potential interest • File under the Paris Convention • File a regional patent application (e.g. EPO) • File a PCT application 2
5/18/16 SINGLE COUNTRY PATENT APPLICATIONS • Applicant can file directly into the jurisdictions to seek patent protection • Applicant prepares the country specific forms and files an application to that’s country’s patent office • This could be done as a strategy alone or in conjunction with filing Paris Convention or PCT applications SINGLE COUNTRY PATENT APPLICATIONS • Why file directly instead of using the Paris convention or PCT? • Filing the national phase application sooner will get the patent process resolved sooner • Cost Savings - By skipping the PCT fees (usually around $4-5K) • Customized applications by International Office • What are the drawbacks? • Coordinated filing in all countries at the very start of the process. • There are also issues in the US with the need for a foreign filing license. REGIONAL PATENT APPLICATIONS • Examples include European Patent Office (EPO), African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI),and the Eurasian Patent Convention (EA) • Once a regional patent is validated annual maintenance fees, or annuities, will be due periodically. Maintenance fees vary considerably from country to country. 3
5/18/16 REGIONAL PATENT APPLICATIONS Why file directly instead of using the Paris convention or PCT? • If there is a particular region (e.g EPO) of interest • Filing the national phase application sooner will possibly get the patent process resolved sooner • Cost Effective – if invention is significant commercially in only a few countries or regions • Customized applications by International Office EPO MEMBER STATES 38 European member states Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, • Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom European extension states Bosnia-Herzegovina and Montenegro • Validation states -- Moldova, Morocco • FILING FOR PATENT PROTECTION UNDER THE PARIS CONVENTION The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The Convention is currently still in force. 4
5/18/16 FILING FOR PATENT PROTECTION UNDER THE PARIS CONVENTION • Typically,Applicant files a patent application in a single Paris Convention member country (usually required to be the country of residence of at least one of the inventors), which establishes a first or priority filing date for the application. • After filing the priority application, Applicants have up to 12 months to file directly into the foreign countries where they are seeking protection. • The form and translation requirements differ from country to country, but it is important to note that extensions beyond the 12 month deadline are NOT available . FILING FOR PATENT PROTECTION UNDER THE PARIS CONVENTION Why file using the Paris convention as opposed to the PCT? • There may be no choice. The Paris convention covers over 170 counties including some countries that are not covered by the PCT such as (Iraq) • Filing the national phase application sooner will possible get the patent process resolved sooner • Cost Effective - If significant commercially in only a few countries • Customized applications by International Office Gives the inventor one extra year to decide, allows for disclosure after priority application is filed. THE PCT SYSTEM • For a fee, Applicant files a single application, reserving priority rights for about 30 months from the priority date giving an additional 18 months to decide on the countries of interest vs the Paris Convention • Similar to the Paris Convention, the Patent Cooperation Treaty (PCT) is an international treaty, it allows the filing of a single application in the applicant’s home country while preserving rights in other countries 5
5/18/16 THE PCT SYSTEM • Streamlined Patent System • Assists applicants in seeking patent protection internationally for their inventions • Sometimes helps patent offices with their patent granting decisions • Facilitates public access to a wealth of technical information relating to those inventions • By filing one international patent application under the PCT, applicants can simultaneously seek preserve the right to seek protection for an invention in 148 countries throughout the world. Eligibility to file PCT Application Applicant is entitled to file an international patent application if: Applicant is a national or resident of a PCT Contracting State. • While most countries are now members of the PCT, there are some that are not – for a current list of contracting states, http://www.wipo.int/pct/en pct_contracting_states.html If there are several applicants named in the international • application, only one of them needs to comply with this requirement WIPO WIPO is the global forum for intellectual property services, policy, • information and cooperation. A self-funding agency of the United Nations, with 188 member states. The basic functions of the International Bureau (IB) are to maintain the • master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau. The applicant has normally 2 months from the date of transmittal of the • international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau The International Bureau will then normally publish the international • application along with the search report and any amended claims at the expiration of 18 months from the priority date. 6
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