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Tag: foreign patents

US Patent Application Filings Under the Paris Convention

A US patent application may be filed on a number of bases. Most applicants think of directly filing an original, non-provisional patent application in the US. However, roughly half of the patent applications actually are filed by non-US entities and have foreign priority claims. A foreign priority claim allows a later-filed application to adopt the filing date of an earlier-filed application, which can be valuable during examination of the application. A foreign priority claim is proper when the US application is filed under the Paris Convention or as a national phase entry under the Patent Cooperation Treaty.

When an applicant files a US application with a foreign priority claim, a copy of the foreign priority application must be submitted to the US Patent Office. The copy must be a certified copy, which means it has to be reviewed and stamped by the foreign patent office. Foreign priority documents do not need to be provided at the time of the filing, but they do need to be provided. So while timing is not of the essence, compliance is important.

There are two mechanisms for providing the priority documents. The first mechanism is simply filing and submitting the certified document with the US Patent Office. There are fees involved with obtaining a certified priority document, and it takes time to request the document, wait for it to arrive, and then ship it to the office.

The second mechanism uses the Priority Document Exchange program. Some patent offices around the world have subscribed to the PDX program, and if the earlier-filed application was filed in one of the countries, the applicant can request that the office of earlier filing electronically transmit the earlier-filed application to the office of later filing. Provided that foreign filing license and other requirements are complied with at the earlier office, that office will transmit the application. There is no governmental fee for such a request, and it can save considerable time and administrative work.

Nuts and Bolts of International Preliminary Examination and the Demand Thereof

International preliminary examination of an international application may be requested by filing a demand under Chapter II of the PCT to obtain a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.  Examination is chiefly a process through which an applicant gains insight into the patentability of the invention and its likely reception in foreign patent offices.

The international preliminary examination is carried out by An International Preliminary Examining Authority (“IPEA”) carries out the examination and issues an International Preliminary Report on patentability (“IPRP”) which may provide you with some ability to evaluate the chances of obtaining patents in foreign countries before deciding whether to enter the patent offices of those countries.  Because a binding and final decision regarding patentability can only be made by the patent office in the country to which the international application is later sent, the IPRP is preliminary and non-binding, but it can be persuasive.

A demand can only be made if two conditions are met.  They generally are, especially when the international application was filed with a major nation.  First, the applicant must be a resident or national of a contracting state bound by Chapter II of the PCT.  Second, the international application must have been filed with the receiving office of a contracting state bound by Chapter II.  As of September 7, 2012, all contracting states were also bound by Chapter II.

The demand is made separately from the international application and is submitted directly to a competent IPEA.  Where the US was the receiving office, the US and Korean patent offices are  competent IPEAs.  In addition, if the US was the receiving office and the European or Australian patent offices were the search authorities, those patent offices are also competent IPEAs.  The demand automatically elects all contracting states which have been designated (frequently all member states of the PCT).

The demand must be made within the later of two time limits: 1) 3 months from the transmittal date of the International Search Report (“ISR”), or 2) 22 months from the priority date.  Generally, it is advisable to wait until the ISR and Written Opinion are issued before demand is made, so that the applicant can review the ISR and Written Opinion and determine whether it is prudent to file a demand.  The IPRP is then due within 28 months from the priority, or 6 months from the start of the examination (generally when the IPEA has received the demand, payment, and the ISR and Written Opinion), or 6 months from the date on which a translation of the application is submitted to the IPEA, whichever is later.

The applicant can amend the claims, description, and drawings of the international application before the start of the international preliminary examination.  Amendment can also be made during examination, if time permits, before the IPRP is prepared.  Amendments made in this way are identified in the demand as Article 34 amendments, which differ from Article 19 amendments.  Article 19 amendments may have been made previously.

There are two administrative fees associated with the demand.  A preliminary examination fee of 1850 Euros must be paid for the work involved in performing the international preliminary examination and preparation of the IPRP.  A handling fee of 165 Euros must also be paid to cover administrative and internal costs.  As of this writing, that is a total fee of about $2,686.00.  Attorney service fees are also generally required as well.

Filing a Non-Publication Request

Not very long ago, patent applications were maintained in secrecy until they issued as patents.  Today, however, an application is published 18 months after its effective filing date, meaning that anyone can see your invention after you file it.  By filing a non-publication request, though, you can keep your application secret during prosecution.  The major trade-off, though, is that you won’t be allowed to then file for foreign patents.  Let’s go over some reasons you may or may not want to file a non-publication request.

I want to keep it secret!

  • I want to make sure that no one knows about my invention until the last minute – the moment the patent issues.
  • My patent application description discloses a trade secret that I want to preserve as long as possible.
  • I want to prevent big companies from learning about my invention and doing some serious R&D to discover a workaround.  They might file patents that surround my invention and thus keep me from practicing and profiting from my invention.
  • I don’t care about ever obtaining patent protection internationally.

I think publishing the application is a good idea!

  • If someone copies my invention while it is in prosecution, I can try to get damages for the infringement that occurs between publication and issuance.
  • I can use the publication as prior art and prevent others who file after my publication date from getting a patent.
  • I want to file internationally.
  • Everyone else is doing it.

Procedural Pointers:

  • The request must be filed with the application.  Federal statute requires that the non-publication request be made contemporaneously with the filing of the application.
  • You can file a non-publication request and then rescind it later if you change your mind.
  • If you made a non-publication request and then filed a patent application for the same invention in another country, you only have 45 days to notify the Patent Office.  If you inform the PTO more than 45 days later the foreign filing, your US application will be abandoned.