Patents – Overview of U.S. Patent Law for the International Client

As one of the world’s largest marketplaces, the United States is a desirable market for goods and services from around the world. Fortunately for international clients, achieving patent protection in the United States is relatively straightforward. There are a number of general procedures, and a few special rules that apply to international clients. The following information is intended for general information purposes only. Please contact a qualified United States patent attorney for specific legal guidance.

Patent Cooperation Treaty (PCT) Basics

The concept of filing an “international” patent application has obvious appeal. Filing an “international” patent application under the Patent Cooperation Treaty (PCT) offers an applicant the ability to preserve the opportunity to obtain a patent in any, or all, of the PCT Contracting States. There are currently over 133 PCT Contracting States.

International Search Report Offers Cost Effective Patentability Evaluation

An applicant may use the “international search report” and the “international preliminary examination report” to obtain detailed information about the patentability of an invention prior to incurring the high cost of entering the patent process of individual countries.

Time – Preserving Options While Delaying Expense

An applicant should consider the extra time gained when filing a PCT application. In many countries the applicant may gain as much as 18 additional months prior to having to file a national application.

PCT Application Basics

The following briefly touches on a select few aspects of PCT applications, for a more thorough review click here.

Any national or resident of one of the PCT Contracting States is entitled to file a PCT international application. An applicant may file an international patent application with the Patent Office in the PCTContractingState of residence, which will then act as a PCT “receiving office.” If the applicant is a national or resident of a country that is a party to a regional patent treaty, such as the ARIPO Harare Protocol, the OAPI Agreement, the Euroasian Patent Convention, and the European Patent Convention, then an application alternatively may be filed with the regional Patent Office.

An international patent application generally has the effect of a national patent application in the PCT Contracting States that are “designated” in the application. Alternatively, an international patent application generally has the effect of a regional patent application in the PCT Contracting States that are a party to a regional patent treaty, such as those listed above, provided the region was “designated” in the application. The national, or regional, offices are responsible for the granting of a patent, but the start of the national, or regional, application processing is generally delayed until 30 months from the application’s priority date. Additionally, an applicant may avoid the costs that would arise if separate applications were filed for all the PCT Contracting States by filing an international application under the PCT.

A PCT application may claim the priority, under the Paris Convention, of a previously filed national, regional, or international application covering the same invention, for up to 12 months after the filing of the first filed application.

International Searching Authorities are established patent offices that have been specially appointed to perform “international searches” on international patent applications. There are currently ten International Searching Authorities. The International Searching Authorities report the findings in an “international search report” that is generally available four to five months after the initial filing of an international application. The international search report provides lists of prior art documents relevant to the claims of the international patent application and may provide indications as to the relevance of the prior art to the questions of novelty and inventive step, or non-obviousness. The international search report allows the applicant to evaluate the likelihood of obtaining patent protection in the designated countries.

An international application is published by the International Bureau approximately 18 months after the priority date. The International Bureau also forwards the international application and the international search report to the patent office of each designated country.

An applicant may elect to have an international preliminary examination (IPE) of the application performed. The IPE is carried out by the International Preliminary Examining Authority (IPEA) based upon the international search report. The applicant may participate in the IPE by submitting amendments and arguments to the IPEA. The results of the IPE are set out in an “international preliminary examination report.” The international preliminary examination report provides the applicant with an additional basis for evaluating the chances of obtaining patent protection in the designated countries. The international preliminary examination report is authoritative, but not binding, and the ultimate decision as to whether a patent issues remains with the national or regional offices designated in the international application.

Traditionally, once an international patent application has been filed, all national procedures in the designated States are delayed until the end of the 20th month from the priority date or, if international preliminary examination is requested before the end of the 19th month from the priority date, until the end of the 30th month from that date. The delay gives an applicant at least 8 months (or 18 months where preliminary examination has been sought) more, before having to fulfill the national requirement, than by not using the PCT.

Recently WIPO and PCT member countries elected to give most applicants the additional 10 months, previously only afforded those that requested the international preliminary examination report, for free. Therefore, it is no longer necessary to file a “Chapter II Demand,” or have an international preliminary examination to obtain the benefit of the full 30 month PCT period in countries that have changed their national laws to conform with this change. Over one dozen countries have elected not to adopt the new 30 month rule, therefore consult a qualified international patent attorney and pay close attention to impending deadlines. When in doubt, file the Chapter II Demand to be safe! Upon entering the national phase, the applicant generally must appoint a local agent.

Entering the United States National Phase ~ Introduction

The United States Patent & Trademark Office receives international applications in the United States Receiving Office and the oversees the prosecution of international applications before the United States International Searching Authority, the United States International Preliminary Examining Authority, the United States Designated Office, and the United States Elected Office.

Entering the United States National Phase ~ Timing / Deadlines

Once an applicant has decided to seek patent protection in the United States, and has already filed an international application, various requirements for entry into the national phase must be fulfilled. These requirements include paying national fees and, in some cases, filing translations of the application as filed and/or as amended, and appointment of a United States patent attorney as a local agent. These steps must be taken before the end of the 20th or 30th month from the priority date (see “PCT Application Basics”).

Entering the United States National Phase ~ Unique Requirements of the U.S.

  1. All applicants must be inventors. In other words, a business entity may not be an applicant. Additionally, the names and addresses of all inventors must be provided in the request upon filing.
  2. An oath or declaration executed by the inventor(s) must be furnished within the time limit applicable under PCT Article 22 or 39(l). This requirement may be fulfilled after the expiration of the time limit in response to a notice sent to the applicant, provided a surcharge is paid.
  3. A declaration as to the applicant’s entitlement to claim priority of an earlier application must be provided. This requirement may be satisfied if the corresponding declaration was made in accordance with Rule 4.17.
  4. An Information Disclosure Statement (IDS) should be filed within three months of entering the national phase.
  5. Nucleotide and/or amino acid sequence listings must be provided in computer readable form.
  6. A local agent must be a registered United States patent attorney or agent.
  7. Examination of an application by the USPTO may start earlier that the expiration of the time limit applicable under PCT Article 22 or 39(l) if an express request is filed along with the basic national fee, a copy of the international application, a translation of the international application (if required), and an oath or declaration of the inventor.

Entering the United States National Phase ~ Necessary Elements

  1. A declaration from the inventors.
  2. A power of attorney.
  3. A copy of the original international application filing and translation, if required.
  4. A copy of all amendments and translation, if required.
  5. The basic national government filing fee.