The document discusses various aspects of patents and filing for patent protection internationally. It covers what can be patented, types of U.S. patents, options for non-U.S. patent filings including the Patent Cooperation Treaty, considerations for publications, and things to keep in mind for where and how to file patents. The document uses Dave's story about manufacturing in Asia, sales globally, and competitors in the U.S., Mexico, and Europe as an example case for understanding international patent strategy.

1. June 27, 20181
Patents & The Global Marketplace
Amy Salmela
March 11, 2011
Patents
Patentable Inventions
Types of U.S. Patents
Non-U.S. Filing Options
Publications
Where and How to File
Things to Keep in Mind

2. SM
© 2011 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Patents & The Global
Marketplace
Women’s Entrepreneurship Symposium
March 11, 2011
Amy Salmela
Attorney at Law

3. June 27, 20183
Dave’s Story
Dave – U.S.
Manufacturing –
Asia
Sales – U.S.,
Europe, South
America, Africa
Competitors –
U.S., Mexico,
Europe

4. Patents
Fundamental considerations
What do you want to exclude others from doing?
• Defined by the patent claims
Where do you want to exclude them from doing it?
• Defined by where patent applications are filed
June 27, 20184

5. Patents
Additional considerations
What is your timing?
• R&D status
• Bar events (public disclosures, publications, offers for sale, etc.)
What is the value of the invention?
• Potential for revenue generation
• Licensing opportunities
• Detectability
What is your budget?
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6. Patents
Exclusive, but limited,
monopoly in
exchange for public
disclosure
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7. Patents
A patent is not a right to
do anything; rather, it
provides the right to
exclude others from
making, using, selling,
offering for sale or
importing
June 27, 20187
(or patenting)

8. Patentable Inventions
35 U.S.C. § 101
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
June 27, 20188

9. “New, Useful and Non-Obvious”
Invention must be new (35 U.S.C. § 102)
Most of the world requires absolute novelty
U.S. provides one-year grace period
Invention must be useful (35 U.S.C. § 101)
Invention must be non-obvious (35 U.S.C. § 103)
Non-obvious = sufficiently different from what has been done before that a
person having ordinary skill in the art would not find it obvious to make the
change
Evolving area of the law in recent years; see, e.g., KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398 (2007)
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10. Types of U.S. Patents
Provisional
Term: one year
Never examined, never formally published
Can serve as basis for priority claim
“Insurance policy”
Non-provisional
Term: 20 years from
Includes claims
Publishes 18 months from earliest priority date
Design
Term: 14 years from grant
Granted on ornamental design of functional object
June 27, 201810

11. Non-U.S. Filing Options
Patent Cooperation Treaty (PCT)
Administered by the World Intellectual Property Organization (WIPO)
Single application in a single language accepted in 142 jurisdictions
Source: www.wipo.int
June 27, 201811

12. Non-U.S. Filing Options
Patent Cooperation Treaty (PCT) (cont.)
Two phases: international (30 months) followed by national/regional
Advantages
• Streamlined filing procedure
• Fast(er) search
• Delay
– International decisions
– Costs
• Cost savings (?)
June 27, 201812

13. Non-U.S. Filing Options
Regional applications
European (EP)
• European phase followed by nationalization
• Compare U.S. “new, useful, non-obvious” standards with EP “new,
susceptible of industrial application, involving an inventive step”
• Patentable in the U.S. but generally not in EP
– Software and computer programs
– Business methods
– Methods for treatment of the human or animal body by surgery
or therapy
Relatively expensive
• 15+ claims
• Translation for nationalization
• Annuities
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14. Non-U.S. Filing Options
Regional applications (cont.)
Others
• African Regional Intellectual Property Organization (ARIPO)
• African Intellectual Property Organization (OAPI)
• Eurasian Patent Organization (EAPO)
Direct national applications
Filed in a locally accepted language by local counsel
Advantage: targeted filings, ability to tailor claims
Disadvantages: costs, translations, need to adapt or harmonize
applications
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15. Publications
Publications can prevent others from obtaining patents
35 U.S.C. 102: “A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented
or described in a printed publication in this or a foreign country, before
the invention thereof by the application for patent, or
(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country, more
than one year prior to the date of the application for patent in the United
States . . . .”
June 27, 201815

16. Publications
Examples
Newspaper
Trade catalog
Conference paper
Pages from a website
Posters displayed during a professional conference
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17. Publications
Publication options
Technical journals
Business publications
Corporate website
Publishing services (e.g., ip.com)
Keep in mind
One-year grace period in the U.S. (vs. absolute novelty ROW)
Cost
Level of disclosure
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18. Where – and how – to file?
June 27, 201818

19. June 27, 201819
Dave’s Story
Dave – U.S.
Manufacturing –
Asia
Sales – U.S.,
Europe, South
America, Africa
Competitors –
U.S., Mexico,
Europe

20. Where to file
Consider filing applications
where you have:
Competitors
Manufacturing
Sales/distribution
Expected growth
Efficiency options (i.e., filing in
largest regional market)
Maximum available damages
Legal possibility (i.e., because of
bar dates, subject matter, etc.)
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21. Filing Procedures
First filing provides protection worldwide
Subsequent filings claiming priority to the first filing must be filed within
one year
Filing strategies
Defer costs
Take advantage of jurisdictional advantages
U.S. provides one-year grace period in the event of publication, offer for
sale, etc., while ROW generally does not
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22. How to file
Consider:
Country of first filing
Timing
Reputation
Prior art effects
R&D status
Budget
Technology/subject matter
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23. Things to Keep in Mind
Not all inventions are created equally; maximize your IP budget by evaluating
inventions up-front and on an on-going basis
Patents are only one weapon in an IP protection arsenal
Know your competition and consider offensive and defensive strategies
Formulate a non-U.S. filing strategy
June 27, 201823

24. Thank You
Amy M. Salmela, Esq.
Patterson Thuente Christensen Pedersen P.A.
4800 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
salmela@ptslaw.com
612.252.1538
June 27, 201824