Successfully reported this slideshow.
We use your LinkedIn profile and activity data to personalize ads and to show you more relevant ads. You can change your ad preferences anytime.
Comparative Patent Registration Processes in
the US, UK, and EU Markets
MC Law Presentation 2013
Richard Bays JD, MBA, RN,...
Introduction
While we may not consciously realize it, patented inventions are all around us. We
use cellphones, home appli...
Introduction
Apple v. Samsung 2013
Patents are valuable property and subject to heated litigation to protect these rights....
Introduction
The protections afforded by a patent are only applicable
in the countries that issue the patent.
Therefore wh...
US Patent Process Overview
USPTO
The United States Patent and Trademark Office
What is a Patent?
A patent is an intellectual property right granted by the Government
to an inventor:
“to exclude others ...
What is a Patent?
The right conferred by the patent grant is, in the language of the
statute and of the grant itself, “the...
What is a Patent?
A patent for an invention is issued by the United States Patent
and Trademark Office. The term of a new ...
There are three types of US patents
1) Utility patents may be granted to anyone who invents or
discovers any new and usefu...
Patent Laws
The Constitution of the United States gives Congress the power to
enact laws relating to patents, in Article I...
Patent Laws
On November 29, 1999, Congress enacted the American Inventors
Protection Act of 1999 (AIPA), which further rev...
America Invents Act
Leahy-Smith
The America Invents Act (AIA) is a United States federal statute that
was passed by Congre...
America Invents Act
Leahy-Smith
The AIA refers to the new regime as "First-Inventor-to-File (FITF)".
This new regime opera...
America Invents Act
Leahy-Smith
The law also expands the definition of prior art used in determining patentability.
Action...
America Invents Act
Leahy-Smith
Applicants that do not publish their inventions prior to filing will receive no grace
peri...
America Invents Act
Leahy-Smith
The America Invents Act included the following changes:
 Tax strategy inventions- Provide...
America Invents Act
Leahy-Smith
The America Invents Act included the following changes:
 Filing by other than inventor- A...
America Invents Act
Leahy-Smith
The America Invents Act included the following changes:
 Prior user rights defense- If an...
America Invents Act
Leahy-Smith
The America Invents Act included the following changes:
 Micro-entity- The AIA added a mi...
What Can Be Patented
The patent law specifies the general field of subject matter that
can be patented and the conditions ...
What Can Be Patented
 The word “process” is defined by law as a process, act or method,
and primarily includes industrial...
What Can Be Patented
The patent law specifies that the subject matter must be “useful.”
The term “useful” in this connecti...
What Can Be Patented
 A patent cannot be obtained upon a mere idea or suggestion.
 The patent is granted upon the new ma...
Novelty And Non-Obviousness,
Conditions For Obtaining A Patent
In order for an invention to be patentable it must be new a...
Novelty And Non-Obviousness,
Conditions For Obtaining A Patent
If the invention has been described in a printed publicatio...
Novelty And Non-Obviousness,
Conditions For Obtaining A Patent
Even if the subject matter sought to be patented is not exa...
US Patent Process Overview
Step by Step Guidelines
US Patent Process Overview
Step 1
Applicant - Has your invention already been patented?
• Search the Patent Full-Text and ...
US Patent Process Overview
Step 2
Applicant - What type of Application are you filing?
• Design Patent (Ornamental charact...
US Patent Process Overview
Step 3
Applicant - Determine Filing Strategy
• File Globally?
• Need international protection?
...
US Patent Process Overview
Step 4
Applicant - Which type of Utility Patent Application to file?
• Provisional (Means to es...
US Patent Process Overview
Step 5
Applicant - Consider expedited examination
• Prioritized Examination
• Accelerated Exami...
US Patent Process Overview
Step 6
Applicant - Who Should File?
• File yourself (Pro Se)
• Use a Registered Attorney or Age...
US Patent Process Overview
Step 7
Applicant - Prepare for electronic filing
• Determine Application processing fees
• Appl...
US Patent Process Overview
Step 8
Applicant - Apply for Patent using Electronic Filing System as a
Registered e-Filer (Rec...
US Patent Process Overview
Step 9
Applicant - USPTO examines application
• Check Application Status
• Allowed?
• Yes, go t...
US Patent Process Overview
Step 10
Applicant - Applicant files replies requests for reconsideration,
and appeals as necess...
US Patent Process Overview
Step 11
Applicant - If objections and rejection of the examiner are
overcome, USPTO sends Notic...
US Patent Process Overview
Step 12
Applicant - Applicant pays the issue fee and the publication fee
• USPTO Grants Patent
US Patent Process Overview
Step 13
Applicant - Maintenance fees due
 3 ½,
 7 ½, and
 11 ½ years after patent grant
UK Intellectual Property Office
IPO
United Kingdom
Patent Requirements
A patent protects new inventions and covers how things work, what
they do, how they do it, what they a...
Patent Requirements
Your invention must:
 be new
 have an inventive step that is not obvious to someone with knowledge a...
Patent Requirements
Applying for a patent:
A granted patent will give you exclusive rights over an invention and you will ...
Patent Protection
Benefits of patent protection:
A patent gives you the ability to take legal action to try to stop others...
Patent Protection
The patent also allows you to:
 sell the invention and all the intellectual property (IP) rights
 lice...
Patent Protection
What if no application is made?
If no application is made to protect your invention, it will allow anyon...
Prior to Application
Have you considered other forms of protection?
 There maybe other forms of protection, that are more...
Prior to Application
Are you the legal owner of your invention?
 A patent applicant may be an individual or a corporate b...
Patent Filing Costs
The normal amount we charge to process a UK patent application is
GBP £230 - £280.
If you decide to se...
Patent Filing Costs
Paper filing
 GBP £30 (application fee) for a preliminary examination
 GBP £150 for a search
 GBP £...
UK Intellectual Property Office
Step by Step Guidelines
UK Patent Process Overview
Step 1
Preparing a UK patent application
 Forms and fees
 Description of Invention
 Allowing...
UK Patent Process Overview
Step 1
Preparing a UK patent application
 Claims
 Precise legal statements in the form of sin...
UK Patent Process Overview
Step 2
Request for grant of a patent
 File form 1
 Request for grant of a patent
 Office res...
UK Patent Process Overview
Step 3
Request for a search
 File form 9A
 Office response and your options
 Application num...
UK Patent Process Overview
Step 3
Request for a search
 If your application includes a declaration of priority, the
deadl...
UK Patent Process Overview
Step 4
Publication
 Publishing your application and your options
 Withdrawing your applicatio...
UK Patent Process Overview
Step 4
Publication
 The office will publish the patent application shortly after 18 months
fro...
UK Patent Process Overview
Step 5
Request for a substantive examination
 File form 10
 No later than six months after pu...
UK Patent Process Overview
Step 6
Next steps
 Successful applications
 If the application meets all the
requirements of ...
EU Patent Process Overview
EPO
The European Patent Office
Patent Information in the EU
Patent documents offer a whole host of information on new, and also older technologies, and t...
Patent Information in the EU
 The European Patent Convention (EPC) sets the legal framework of the European patent
system...
EU Patent Process Overview
Step by Step Guidelines
EU Patent Process Overview
Step 1
Preparing a EU patent application
 First, it is important to know what inventions and p...
EU Patent Process Overview
Step 1
Preparing a EU patent application
 Patents should not be confused with the other kinds ...
EU Patent Process Overview
Step 1
Preparing a EU patent application
 Patents should not be confused with the other kinds ...
EU Patent Process Overview
Step 2
Application
 There are different routes to patent protection and the best
route will de...
EU Patent Process Overview
Step 2
Application
 A European patent application consists of:
1. A request for grant
2. A des...
EU Patent Process Overview
Step 2
Application
 Applications can be filed at the EPO in any language. However,
the officia...
EU Patent Process Overview
Step 3
Filing and Formalities Examination
 One of the first steps in the European patent grant...
EU Patent Process Overview
Step 3
Filing and Formalities Examination
 The following are required:
1. An indication that a...
EU Patent Process Overview
Step 3
Filing and Formalities Examination
 If no claims are filed, they need to be submitted w...
EU Patent Process Overview
Step 4
Search
 While the formalities examination is being carried out, a
European search repor...
EU Patent Process Overview
Step 5
Publication of The application
 The application is published, normally together with th...
EU Patent Process Overview
Step 5
Publication of The application
 From the date of publication, a European patent applica...
EU Patent Process Overview
Step 6
Substantive examination
 After the request for examination has been made, the European
...
EU Patent Process Overview
Step 7
The grant of a Patent
 If the examining division decides that a patent can be granted, ...
EU Patent Process Overview
Step 8
Validation
 Once the mention of the grant is published, the patent has to be
validated ...
EU Patent Process Overview
Step 9
Opposition
 After the European patent has been granted, it may be opposed
by third part...
EU Patent Process Overview
Step 10
Limitation / Revocation
 This stage may also consist of revocation or limitation
proce...
EU Patent Process Overview
Step 11
Appeal
 Decisions of the European Patent Office, refusing an application
or in opposit...
The International Patent Process Overview
PCT
The Patent Cooperation Treaty
The Patent Cooperation Treaty
(PCT)
 A United Nations Treaty
 Signed in June of 1970 at the Washington Diplomatic
Confer...
Purposes of the PCT
 A PCT application does not itself result in the grant of a patent,
since there is no such thing as a...
Purposes of the PCT
 To simplify the process of filing foreign patent applications
 To give every Regional or National P...
PCT Contracting States
 A country which is a signatory to the PCT
 Eighteen (18) Contracting States in 1978
 Currently ...
PCT Contracting States
The PCT currently has 148 Contracting States
2010 PCT Statistics
0
20000
40000
60000
80000
100000
120000
140000
160000
180000
78 80 82 84 86 88 90 92 94 96 98 00 02 04...
0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
40,000
45,000
US JP DE CN KR FR GB NL CH SE CA IT FI AU ES
International...
PCT Applications by Field of Technology
(2010)
Electrical
Instruments
Chemistry
Mechanical
Other
Digital comms
Med. tech.
Computer tech.
Electrical mach.
Pharma.Measurement
Telecomms
Semiconductors
Organic chem
Transpor...
6%
76%
15%
1%2%
Member States
PCT System
Madrid Sytem
Hague System
Other
Budget 2010-2011: CHF 618 million
(decrease of 1....
National patent systems
Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC)
Patent Cooperation Treaty (PCT) system
Filing...
Using the Traditional Patent System to
seek Multinational Patent Protection
Local patent application followed within 12 mo...
Traditional patent system
vs.
PCT systemFees for:
--translations
--Office fees
--local agents
0 12
File local
application
...
Top PCT Applicants 2010
1. Panasonic—JP (2154)
2. ZTE Corporation—CN (1868)
3. Qualcomm—US (1677)
4. Huawei—CN (1528)
5. P...
1. Postpones the major costs associated with internationalizing a
patent application
2. Provides a strong basis for patent...
Costs in Traditional and PCT Filing Routes
(months)
File PCT
application
120 30
International
search report
& written
opin...
0 12
30
National phase
(months)
International phase
Priority period
Should I file
applications abroad?
Should I file a
PCT...
The International Patent Process Overview
Step by Step Guidelines
The PCT System – Typical Use (1)
(months)
File PCT
application
120 30
International
search report
& written
opinion
16 18
...
Typical Use (2)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
pub...
Typical Use (3)
(months)
File PCT
application
120 30
International
search report
& written
opinion
16 18
International
pub...
Typical Use (4)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
pub...
Typical Use (5)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
pub...
Typical Use (6)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
pub...
Typical Use (7)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
pub...
PCT Patent Process Overview
Chapter I Proceedings
1. International application filed
2. International search performed by ...
PCT Patent Process Overview
Chapter I Proceedings
5. File with the International Bureau (IB) of WIPO under Article
19 afte...
PCT Patent Process Overview
Chapter II Proceedings
1. Demand electing at least one eligible State is filed with a
competen...
PCT Patent Process Overview
Chapter II Proceedings
3. A second Written Opinion will be prepared only in very rare
circumst...
PCT Patent Process Overview
Steps for national stage entry
1. Prepare translations of the international application into
l...
Comparative Patent Process Overview
US, EU, UK, PCT Markets
117
The Decision Whether/Where To File
• Always conduct Prior Art search
 Guidance as to scope of patent potentially avai...
118
The Decision Whether/Where To File
• Can search databases on Internet but very difficult to properly search
 USPTO i....
119
The Decision Whether/Where To File
• Costs associated with patent protection and enforcement
are very significant and ...
120
The Decision Whether/Where To File
• Scope of likely patent protection
 Can you get a broad patent, or only a narrow ...
121
The Decision Whether/Where To File
• Consider if it is better As Trade Secret?
 Example - The formula of COKE
 Must ...
122
The Decision Whether/Where To File
• Will competitors be able to easily design around?
 Often takes years to get pate...
123
Filing Strategies
Picking where to file:
• Your market
• Your competitor’s market
• Your competitor’s manufacturing fa...
124
Filing with the PCT
 The Patent Cooperation Treaty (PCT)
 PCT often called the International Application
 Administe...
Certain PCT Advantages:
Postpones the Major Costs associated with “Internationalizing” a Patent Application
Typical Costs:...
Cost Issues
 For a single invention
 PCT not cheaper than direct applications in 15 countries
 PCT international phase ...
Other PCT Advantages
Time:
 18 months more time
Information:
 Patentability information
 International search report an...
Other PCT Advantages
Decisions:
 Prospects of commercial success
 Production costs, market appeal, profitability
 Poten...
Comparative Patent Process
The decision of which country to file a patent is contingent on numerous factors
and the object...
Comparative Patent Registration
Processes in the US, UK, and EU Markets
MC Law Presentation 2013
Richard Bays JD, MBA, RN,...
R Bays - Comparative Patent Registration
Upcoming SlideShare
Loading in …5
×

R Bays - Comparative Patent Registration

766 views

Published on

Published in: Law
  • Be the first to comment

  • Be the first to like this

R Bays - Comparative Patent Registration

  1. 1. Comparative Patent Registration Processes in the US, UK, and EU Markets MC Law Presentation 2013 Richard Bays JD, MBA, RN, CPHQ © R Bays 2013
  2. 2. Introduction While we may not consciously realize it, patented inventions are all around us. We use cellphones, home appliances, automotive technology and many other things in our daily lives that at some point an inventor had secured a patent for. Patents for an invention grants a property right to the inventor by the government. This is the right to exclude others from making, using, offering for sale, or selling the invention in the country in which the patent is filed. On a larger scale, international treaties provide for patents to be recognized and protected in multiple countries.
  3. 3. Introduction Apple v. Samsung 2013 Patents are valuable property and subject to heated litigation to protect these rights. Currently, a patent dispute in federal court in San Jose, California, is ongoing between Apple and Samsung involving technology used for smartphones. In the first of two lawsuits, a jury awarded Cupertino, California-based Apple, $1.05 billion in damages (later lowered to $639.4 million) finding Suwon, South Korea- based Samsung, infringed six of the iPhone maker’s mobile-device patents.
  4. 4. Introduction The protections afforded by a patent are only applicable in the countries that issue the patent. Therefore when registering a patent it is important to consider where to file, the scope of protection offered in that venue, timeframes involved and the costs associated with the filing.
  5. 5. US Patent Process Overview USPTO The United States Patent and Trademark Office
  6. 6. What is a Patent? A patent is an intellectual property right granted by the Government to an inventor: “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
  7. 7. What is a Patent? The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
  8. 8. What is a Patent? A patent for an invention is issued by the United States Patent and Trademark Office. The term of a new patent is generally 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, extensions or adjustments may be available.
  9. 9. There are three types of US patents 1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. 3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
  10. 10. Patent Laws The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads: “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.
  11. 11. Patent Laws On November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999). The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.
  12. 12. America Invents Act Leahy-Smith The America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Obama on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009). The Act switches the U.S. patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, and develops post-grant opposition. Its central provisions went into effect on March 16, 2013.
  13. 13. America Invents Act Leahy-Smith The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently than the "First-to-Invent" (FTI) regime and the various "First-to-File" (FTF) regimes in place in other locations in the world. Different outcomes can occur under each of these three different regimes, depending on whether and how two different inventors publish or file patent applications.
  14. 14. America Invents Act Leahy-Smith The law also expands the definition of prior art used in determining patentability. Actions and prior art that bar patentability will include:  public use,  sales,  publications, and  other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expands prior art to include:  foreign offers for sale and  public uses.
  15. 15. America Invents Act Leahy-Smith Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the USPTO for resolving priority contests among near-simultaneous inventors who both file applications for the same invention (“Interference proceedings") are repealed, because priority will be determined based on filing date. An administrative proceeding called a “derivation” proceeding is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.
  16. 16. America Invents Act Leahy-Smith The America Invents Act included the following changes:  Tax strategy inventions- Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.  False marking- Eliminates false marking lawsuits except for ones filed by the U.S. government or filed by a competitor who can prove competitive injury. In addition, marking a product with a patent that formerly covered the product, but has since expired, is no longer a violation. In 2011 the United States Court of Appeals for the Federal Circuit clarified the standards for pleading False Patent Marketing Claims, which had become a source of prolific litigation, by providing a standard that a false patent marking complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired.
  17. 17. America Invents Act Leahy-Smith The America Invents Act included the following changes:  Filing by other than inventor- An entity can file an application on behalf of an inventor who assigned or is under an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest in the invention), without seeking the inventor's execution of the application. Any patent that issues belongs to the inventor absent a written assignment from the inventor or inventor's estate to the entity.  Best mode- While an inventor is still required to “set forth” the best mode for accomplishing the invention, failure to disclose a best mode is not a basis for invalidating or rendering unenforceable an issued patent. While the law formally retains the best mode requirement, by making insufficient disclosure no longer an allowable defense against patent infringement, the law renders best mode unenforceable. (This has left many patent lawyers wondering why the requirement was kept at all.)
  18. 18. America Invents Act Leahy-Smith The America Invents Act included the following changes:  Prior user rights defense- If an individual/entity begins using an invention more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent as long as the user did not derive the invention from the subsequent inventor.  These prior user rights are limited in scope and transferability, and they also have limited applicability to patents held by universities.
  19. 19. America Invents Act Leahy-Smith The America Invents Act included the following changes:  Micro-entity- The AIA added a micro-entity status. A micro-entity includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications, not including those the inventor was obligated to assign to an employer. A micro-entity also includes a university or an inventor under an obligation to assign the invention to a university. A micro-entity is entitled to a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.  Confidential Sale- Provides that confidential sales of products containing the patented technology will no longer mark the beginning of the 1 year period to file the patent.
  20. 20. What Can Be Patented The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute, any person who: “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,” subject to the conditions and requirements of the law.
  21. 21. What Can Be Patented  The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes.  The term “machine” used in the statute needs no explanation.  The term “manufacture” refers to articles that are made, and includes all manufactured articles.  The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.  These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
  22. 22. What Can Be Patented The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that:  the laws of nature,  physical phenomena, and  abstract ideas are not patentable subject matter.
  23. 23. What Can Be Patented  A patent cannot be obtained upon a mere idea or suggestion.  The patent is granted upon the new machine, manufacture, etc., and not upon the idea or suggestion of the new machine.  A complete description of the actual machine or other subject matter for which a patent is sought is required.
  24. 24. Novelty And Non-Obviousness, Conditions For Obtaining A Patent In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(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 applicant 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 application for patent in the United States . . .”
  25. 25. Novelty And Non-Obviousness, Conditions For Obtaining A Patent If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure in order to preserve patent rights in many foreign countries.
  26. 26. Novelty And Non-Obviousness, Conditions For Obtaining A Patent Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.
  27. 27. US Patent Process Overview Step by Step Guidelines
  28. 28. US Patent Process Overview Step 1 Applicant - Has your invention already been patented? • Search the Patent Full-Text and Full-Page Image Databases • If already patented, end of process • If not already patented, continue to Step 2
  29. 29. US Patent Process Overview Step 2 Applicant - What type of Application are you filing? • Design Patent (Ornamental characteristics) • Plant Patent (New variety of asexually reproduced plant) • Utility Patent (Most common) (Useful process, machine, article of manufacture, composition of matter)
  30. 30. US Patent Process Overview Step 3 Applicant - Determine Filing Strategy • File Globally? • Need international protection? • File in U.S.? - continue to Step 4
  31. 31. US Patent Process Overview Step 4 Applicant - Which type of Utility Patent Application to file? • Provisional (Means to establish an early effective filing date in a later filed non-provisional patent application ) or • Non-provisional (Application is examined by a patent examiner, and may be issued as a patent if all the requirements for patentability are met)
  32. 32. US Patent Process Overview Step 5 Applicant - Consider expedited examination • Prioritized Examination • Accelerated Examination Program • First Action Interview • Patent Prosecution Highway
  33. 33. US Patent Process Overview Step 6 Applicant - Who Should File? • File yourself (Pro Se) • Use a Registered Attorney or Agent (Recommended)
  34. 34. US Patent Process Overview Step 7 Applicant - Prepare for electronic filing • Determine Application processing fees • Apply for a Customer Number and Digital Certificate
  35. 35. US Patent Process Overview Step 8 Applicant - Apply for Patent using Electronic Filing System as a Registered e-Filer (Recommended) • EFS Web EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) Web-based patent application and document submission solution. Using EFS-Web, anyone with a Web-enabled computer can file patent applications and documents without downloading special software or changing document preparation tools and processes.
  36. 36. US Patent Process Overview Step 9 Applicant - USPTO examines application • Check Application Status • Allowed? • Yes, go to Step 12 • No, continue to Step 10
  37. 37. US Patent Process Overview Step 10 Applicant - Applicant files replies requests for reconsideration, and appeals as necessary
  38. 38. US Patent Process Overview Step 11 Applicant - If objections and rejection of the examiner are overcome, USPTO sends Notice of Allowance and Fee(s) due
  39. 39. US Patent Process Overview Step 12 Applicant - Applicant pays the issue fee and the publication fee • USPTO Grants Patent
  40. 40. US Patent Process Overview Step 13 Applicant - Maintenance fees due  3 ½,  7 ½, and  11 ½ years after patent grant
  41. 41. UK Intellectual Property Office IPO United Kingdom
  42. 42. Patent Requirements A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made. If a patent application is granted, it gives the owner the ability to take a legal action under civil law to try to stop others from making, using, importing or selling the invention without permission. This may involve suing the alleged infringer through the courts, which is costly and time consuming because it involves expert legal advice. The patent owner needs to be able to pay for this civil legal action and advice themselves, although they may get some costs back if they win their case. If you have a granted patent, you must pay a renewal fee to renew it every year after the 5th year for up to 20 years protection.
  43. 43. Patent Requirements Your invention must:  be new  have an inventive step that is not obvious to someone with knowledge and experience in the subject  be capable of being made or used in some kind of industry Not be:  a scientific or mathematical discovery, theory or method  a literary, dramatic, musical or artistic work  a way of performing a mental act, playing a game or doing business  the presentation of information, or some computer programs  an animal or plant variety  a method of medical treatment or diagnosis  against public policy or morality.
  44. 44. Patent Requirements Applying for a patent: A granted patent will give you exclusive rights over an invention and you will be able to try to stop anyone who uses it without your permission. However, patent infringement is not a criminal offence, and therefore you will have to enforce the patent rights yourself by taking a legal action under civil law - this can be costly and time consuming. To get patent protection your invention must be:  new, not known anywhere in the world prior to filing  have an inventive step, not obvious or a simple adaptation or combination of existing products  be capable of industrial application, having a technical effect
  45. 45. Patent Protection Benefits of patent protection: A patent gives you the ability to take legal action to try to stop others from copying, manufacturing, selling, and importing your invention without your permission. The existence of your patent may be enough on its own to stop others from trying to exploit your invention. If it does not, the patent gives you the right to take a legal action under civil law to try to stop them exploiting your invention. This may involve suing the alleged infringer through the courts, which is costly and time consuming because it involves expert legal advice. The patent owner needs to be able to pay for this civil legal action and advice themselves, although they may get some costs back if they win their case.
  46. 46. Patent Protection The patent also allows you to:  sell the invention and all the intellectual property (IP) rights  license the invention to someone else but retain all the IP rights  discuss the invention with others in order to set up a business based around the invention. The public also benefit from your patent because it is published after 18 months. Others can then gain advance knowledge of technological developments which they will eventually be able to use freely once the patent ceases.
  47. 47. Patent Protection What if no application is made? If no application is made to protect your invention, it will allow anyone to use it and you will not be able to try to stop them. You may be able to protect your invention by keeping it a secret but this will only be possible if it would be difficult to copy the process, construction or formulation from your product itself.
  48. 48. Prior to Application Have you considered other forms of protection?  There maybe other forms of protection, that are more suitable for your invention, instead of or in addition to patent protection. Does your product meet the requirements for protection?  To be eligible for patent protection, your invention must be new, inventive and must not be of an excluded type. Is your invention new?  We cannot grant a patent, if your invention is public, you should try to find it elsewhere before applying for a patent.
  49. 49. Prior to Application Are you the legal owner of your invention?  A patent applicant may be an individual or a corporate body, and persons can make joint applications. Have you received enough advice?  You can get confidential advice regarding your proposed application from a number of different sources, such as patent attorneys, solicitors, or our staff. Have you considered patent protection abroad?  A United Kingdom patent is a territorial right that only gives protection in the UK. Consider alternatives if you are thinking of protection abroad. *Permission to file a patent application abroad may be required in some cases.
  50. 50. Patent Filing Costs The normal amount we charge to process a UK patent application is GBP £230 - £280. If you decide to seek professional IP advice (from a Patent Attorney or other representative) you will need to factor in the cost of this as well. If the patent is granted, you must pay a renewal fee to renew it every year after the 5th year for up to 20 years protection. Renewal fees start at £70 for the 5th year and rise to £600 for the 20th year.
  51. 51. Patent Filing Costs Paper filing  GBP £30 (application fee) for a preliminary examination  GBP £150 for a search  GBP £100 for a substantive examination Electronic filing/web-filing service  GBP £20 (application fee) for a preliminary examination  GBP £130 for a search  GBP £80 for a substantive examination
  52. 52. UK Intellectual Property Office Step by Step Guidelines
  53. 53. UK Patent Process Overview Step 1 Preparing a UK patent application  Forms and fees  Description of Invention  Allowing others to see how it works and could be made.  Drawings  To illustrate the description.
  54. 54. UK Patent Process Overview Step 1 Preparing a UK patent application  Claims  Precise legal statements in the form of single sentences that define the invention by setting out its distinctive technical features.  Abstract  A summary that includes all the important technical aspects of your invention.
  55. 55. UK Patent Process Overview Step 2 Request for grant of a patent  File form 1  Request for grant of a patent  Office response and your options
  56. 56. UK Patent Process Overview Step 3 Request for a search  File form 9A  Office response and your options  Application number assigned and confirms the ‘filing date’ of the application.
  57. 57. UK Patent Process Overview Step 3 Request for a search  If your application includes a declaration of priority, the deadline for filing form 9A is 2 months from your filing date or 12 months from your priority date, whichever is later.  After a search has been requested an examiner will search through published patents and other documents for material against which assessment whether or not the invention you have claimed is new and inventive. The aim is to issue the search report within six months of receiving the form 9A.
  58. 58. UK Patent Process Overview Step 4 Publication  Publishing your application and your options  Withdrawing your application before or after publication
  59. 59. UK Patent Process Overview Step 4 Publication  The office will publish the patent application shortly after 18 months from the filing date (or priority date if there is one), as long as the formal requirements are met and filed with form 9A together and the appropriate fees and no request to withdraw the application.  “Your application details, including your name and address, will appear on our records. They will appear in the publication of your application, once all formal requirements are met. Both our records and the Patents Journal are open to the public on our website, which can be permanently searched using most standard search engines. All correspondence between us will be open to public inspection, including on our website, once your application is published.”
  60. 60. UK Patent Process Overview Step 5 Request for a substantive examination  File form 10  No later than six months after publication to avoid your application being terminated.  Our response and your options
  61. 61. UK Patent Process Overview Step 6 Next steps  Successful applications  If the application meets all the requirements of the Patents Act 1977, a grant of the patent occurs, publish the application in its final form and send the applicant a certificate.
  62. 62. EU Patent Process Overview EPO The European Patent Office
  63. 63. Patent Information in the EU Patent documents offer a whole host of information on new, and also older technologies, and the state of the art in all fields imaginable, plus an insight into the current market situation. The information contained in patent documents enables one to find out, for example, which companies are operating on which new markets. Information of this kind cannot be drawn in as much detail from other sources, if at all.  In the European Patent Office’s databases there are more than 60 million published patent documents from all over the world.  Three patent applications are filed every minute.  A large proportion of all the technical information published is contained in patent documents.  Patent classification and the largely uniform structure of the documents in all countries make it possible even for the non-specialist to search documents.  These documents can be viewed in the European Patent Office’s databases, many are free of charge.
  64. 64. Patent Information in the EU  The European Patent Convention (EPC) sets the legal framework of the European patent system.  The EPC has established a single European procedure for the grant of patents on the basis of a single application and created a uniform body of substantive patent law in order to provide protection for inventions in the contracting states.  In each contracting state for which it is granted, a European patent gives its proprietor the same rights as those conferred by a national patent granted in that state.  Currently there are 38 contracting states utilizing the one application / one procedure system.  The current term granted for a patent is 20 years.
  65. 65. EU Patent Process Overview Step by Step Guidelines
  66. 66. EU Patent Process Overview Step 1 Preparing a EU patent application  First, it is important to know what inventions and patents are.  An invention can be a product, a process or an apparatus. To be patentable, it must be new, industrially applicable and involve an inventive step.  Patents are valid in individual countries for specified periods. They are generally granted by a national patent office, or a regional one like the EPO. Patents confer the right to prevent third parties from making, using or selling the invention without their owners' consent.
  67. 67. EU Patent Process Overview Step 1 Preparing a EU patent application  Patents should not be confused with the other kinds of intellectual property rights available:  Utility models can be registered in some countries, to protect technical innovations which might not qualify for a patent.  Copyright protects creative and artistic works such as literary texts, musical compositions and broadcasts against unauthorized copying and certain other uses.
  68. 68. EU Patent Process Overview Step 1 Preparing a EU patent application  Patents should not be confused with the other kinds of intellectual property rights available:  Trade marks are distinctive signs identifying brands of products or services; they may be made up of 2 or 3 dimensional components such as letters, numbers, words, shapes, logos or pictures, or even sounds  Designs and models protect a product's visual appearance, i.e. its shape, contours or color.  Before applying for a patent, a patent search should be performed.
  69. 69. EU Patent Process Overview Step 2 Application  There are different routes to patent protection and the best route will depend on the invention and the markets a company operates in.  The European Patent Office accepts applications under the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).  If protection is sought in only a few countries, it may be best to apply direct for a national patent to each of the national offices.
  70. 70. EU Patent Process Overview Step 2 Application  A European patent application consists of: 1. A request for grant 2. A description of the invention 3. Claims 4. Drawings (if any) 5. An abstract.
  71. 71. EU Patent Process Overview Step 2 Application  Applications can be filed at the EPO in any language. However, the official languages of the EPO are:  English,  French and  German  If the application is not filed in one of these languages, a translation has to be submitted. Although the services of a professional representative are mandatory only for applicants residing outside Europe, the EPO advises all applicants to seek legal advice.
  72. 72. EU Patent Process Overview Step 3 Filing and Formalities Examination  One of the first steps in the European patent granting procedure is the examination on filing.  This involves checking whether all the necessary information and documentation has been provided, so that the application can be accorded a filing date.
  73. 73. EU Patent Process Overview Step 3 Filing and Formalities Examination  The following are required: 1. An indication that a European patent is sought 2. Particulars identifying the applicant 3. A description of the invention or 4. A reference to a previously filed application.
  74. 74. EU Patent Process Overview Step 3 Filing and Formalities Examination  If no claims are filed, they need to be submitted within two months.  This is followed by a formalities examination relating to certain formal aspects of the application, including:  The form and content of the request for grant,  Drawings and abstract,  The designation of the inventor,  The appointment of a professional representative,  The necessary translations and the fees due.
  75. 75. EU Patent Process Overview Step 4 Search  While the formalities examination is being carried out, a European search report is drawn up, listing all the documents available to the Office that may be relevant to assessing novelty and inventive step.  The search report is based on the patent claims but also takes into account the description and any drawings. Immediately after it has been drawn up, the search report is sent to the applicant together with a copy of any cited documents and an initial opinion as to whether the claimed invention and the application meet the requirements of the European Patent Convention.
  76. 76. EU Patent Process Overview Step 5 Publication of The application  The application is published, normally together with the search report, 18 months after the date of filing or, if priority was claimed, the priority date.  Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination.  Alternatively, an applicant who has requested examination already will be invited to confirm whether the application should proceed. Within the same time limit the applicant must pay the appropriate designation fee and, if applicable, the extension fees.
  77. 77. EU Patent Process Overview Step 5 Publication of The application  From the date of publication, a European patent application confers provisional protection on the invention in the states designated in the application.  However, depending on the relevant national law, it may be necessary to file a translation of the claims with the patent office in question and have this translation published.
  78. 78. EU Patent Process Overview Step 6 Substantive examination  After the request for examination has been made, the European Patent Office examines whether the European patent application and the invention meet the requirements of the European Patent Convention and whether a patent can be granted.  An examining division normally consists of three examiners, one of whom maintains contact with the applicant or representative.  The decision on the application is taken by the examining division as a whole in order to ensure maximum objectivity.
  79. 79. EU Patent Process Overview Step 7 The grant of a Patent  If the examining division decides that a patent can be granted, it issues a decision to that effect.  A mention of the grant is published in the European Patent Bulletin once the translations of the claims have been filed and the fee for grant and publication have been paid.  The decision to grant takes effect on the date of publication. The granted European patent is a "bundle" of individual national patents.
  80. 80. EU Patent Process Overview Step 8 Validation  Once the mention of the grant is published, the patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers.  In a number of contracting states, the patent owner may have to file a translation of the specification in an official language of the national patent office. Depending on the relevant national law, the applicant may also have to pay fees by a certain date.
  81. 81. EU Patent Process Overview Step 9 Opposition  After the European patent has been granted, it may be opposed by third parties, usually the applicant’s competitors, if they believe that it should not have been granted.  This could be on the grounds, for example, that the invention lacks novelty or does not involve an inventive step.  Notice of opposition can only be filed within nine months of the grant being mentioned in the European Patent Bulletin.  Oppositions are dealt with by opposition divisions, which are normally made up of three examiners.
  82. 82. EU Patent Process Overview Step 10 Limitation / Revocation  This stage may also consist of revocation or limitation proceedings initiated by the patent proprietor himself.  At any time after the grant of the patent, the patent proprietor may request the revocation or limitation of his patent.  The decision to limit or to revoke the European patent takes effect on the date on which it is published in the European Patent Bulletin and applies ab initio to all contracting states in respect of which the patent was granted.
  83. 83. EU Patent Process Overview Step 11 Appeal  Decisions of the European Patent Office, refusing an application or in opposition cases for example, are open to appeal.  Decisions on appeals are taken by the independent boards of appeal.  In certain cases it may be possible to file a petition for review by the Enlarged Board of Appeal.
  84. 84. The International Patent Process Overview PCT The Patent Cooperation Treaty
  85. 85. The Patent Cooperation Treaty (PCT)  A United Nations Treaty  Signed in June of 1970 at the Washington Diplomatic Conference  Became operational in June of 1978  Administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland
  86. 86. Purposes of the PCT  A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority.  A PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into National or Regional phases in order to proceed towards grant of one or more patents.  The PCT procedure essentially leads to a standard National or Regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.
  87. 87. Purposes of the PCT  To simplify the process of filing foreign patent applications  To give every Regional or National Patent Office designated by the applicant the benefit of:  A search by a major patent Office  An optional examination by a major patent Office
  88. 88. PCT Contracting States  A country which is a signatory to the PCT  Eighteen (18) Contracting States in 1978  Currently 148 Contracting States  Patent protection is available in each PCT Contracting State through either  A national patent Office  A regional patent Office  Or both
  89. 89. PCT Contracting States The PCT currently has 148 Contracting States
  90. 90. 2010 PCT Statistics 0 20000 40000 60000 80000 100000 120000 140000 160000 180000 78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10 Overall +5.7% in 2010 All-time record of 164,300 applications
  91. 91. 0 5,000 10,000 15,000 20,000 25,000 30,000 35,000 40,000 45,000 US JP DE CN KR FR GB NL CH SE CA IT FI AU ES International Applications Received in 2010 by Country of Origin US: -1.6% JP: +8% DE: +4.5% KR: +20.3% CN: +55.6% IN: +36.6% 2010: East Asia overtook North America and Western Europe to become the sub-region accounting for most PCT filings
  92. 92. PCT Applications by Field of Technology (2010) Electrical Instruments Chemistry Mechanical Other
  93. 93. Digital comms Med. tech. Computer tech. Electrical mach. Pharma.Measurement Telecomms Semiconductors Organic chem Transport Biotech Basic materials chem Civil eng. Highest Filing Technical Areas (2010)
  94. 94. 6% 76% 15% 1%2% Member States PCT System Madrid Sytem Hague System Other Budget 2010-2011: CHF 618 million (decrease of 1.6% (9.8m) on 08-09) WIPO: Primary Sources of Revenue
  95. 95. National patent systems Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC) Patent Cooperation Treaty (PCT) system Filing patent applications abroad (Multiple) national Patent Offices (Several) regional Patent Offices National Offices Regional Offices (Single) receiving Office [National phase] Patents [International phase] - File application - International publication - International search - International preliminary examination
  96. 96. Using the Traditional Patent System to seek Multinational Patent Protection Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: - multiple formality requirements - multiple searches - multiple publications - multiple examinations and prosecutions of applications - translations and national fees required at 12 months Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI 0 12 File application locally File applications abroad (months)
  97. 97. Traditional patent system vs. PCT systemFees for: --translations --Office fees --local agents 0 12 File local application File applications abroad (months) Traditional (months) File PCT application 12 30 International search report & written opinion 16 18 International publication (optional) File demand for International preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability PCT 0 Fees for: --translations --Office fees --local agents
  98. 98. Top PCT Applicants 2010 1. Panasonic—JP (2154) 2. ZTE Corporation—CN (1868) 3. Qualcomm—US (1677) 4. Huawei—CN (1528) 5. Philips—NL (1435) 6. Bosch—DE (1301) 7. LG Electronics—KR (1298) 8. Sharp—JP (1286) 9. Ericsson—SE (1149) 10. NEC—JP (1106) 11. Toyota—JP (1095) 12. Siemens—DE (833) 13. BASF—DE (818) 14. Mitsubishi Electric—JP (726) 15. Nokia—FI (632) 16. 3M—US (586) 17. Samsung Electronics—KR (578) 18. HP—US (564) 19. Fujitsu—JP (476) 20. Microsoft—US (469)
  99. 99. 1. Postpones the major costs associated with internationalizing a patent application 2. Provides a strong basis for patenting decisions 3. Harmonizes formal requirements 4. Protects applicant from certain inadvertent errors 5. Evolves to meet user needs 6. Is used by the world’s major corporations, universities and research institutions when they seek international patent protection The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which: Certain PCT Advantages
  100. 100. Costs in Traditional and PCT Filing Routes (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 International preliminary report on patentability (months) 120 File local application Costs for: – translations (≈ 18–36% of total) – Patent Office fees (≈33%) – local agents (≈ 25-50%) File applications abroad Traditional route PCT route 18 months
  101. 101. 0 12 30 National phase (months) International phase Priority period Should I file applications abroad? Should I file a PCT application? Should I file a national patent application? Should I withdraw the application to prevent publication? Should I withdraw the priority claim to delay publication? Should I enter the national phase in view of: (1) assessment of the prospects of commercial success? (2) likelihood of patent grant? In which countries should I enter the national phase? 18 Publication Do I want international preliminary examination to enable amendment of the application before the national phase? Should I manufacture or assign or license the invention? Can I find a partner or buyer or licensee? PCT Decision Points $ $$ $$$$$$ (translations, official fees, foreign agents) ($$) More information about patentability More information about commercial prospects
  102. 102. The International Patent Process Overview Step by Step Guidelines
  103. 103. The PCT System – Typical Use (1) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Typically a national patent application in the home country of the applicant 19 Suplementary International Search (optional)
  104. 104. Typical Use (2) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentabilityTypically also filed with local Patent Office. One set of fees, one language, one set of formality requirements. Legal effect in all PCT States. 19 Suplementary International Search (optional)
  105. 105. Typical Use (3) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Report on state of the art (prior art documents and their relevance) + initial opinion on patentability 19 Suplementary International Search (optional)
  106. 106. Typical Use (4) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Public disclosure to the world of content of application in standardized way 19 Suplementary International Search (optional)
  107. 107. Typical Use (5) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Request an additional patentability analysis on basis of amended application 19 Suplementary International Search (optional)
  108. 108. Typical Use (6) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decision-making 19 Suplementary International Search (optional)
  109. 109. Typical Use (7) (months) File PCT application 120 30 International search report & written opinion 16 18 International publication (optional) File demand for international preliminary examination File local application Enter national phase 22 28 (optional) International preliminary report on patentability Express intention and take steps to pursue to grant in various States 19 Suplementary International Search (optional)
  110. 110. PCT Patent Process Overview Chapter I Proceedings 1. International application filed 2. International search performed by the International Searching Authority (ISA) 3. International Search Report and Written Opinion of the International Searching Authority prepared 4. Optional amendment to the claims only
  111. 111. PCT Patent Process Overview Chapter I Proceedings 5. File with the International Bureau (IB) of WIPO under Article 19 after Search Report mailed 6. International application, International Search Report and Article 19 amendment published by IB 7. Published pamphlet sent to designated States by IB 8. Written Opinion of the International Searching Authority not published with pamphlet
  112. 112. PCT Patent Process Overview Chapter II Proceedings 1. Demand electing at least one eligible State is filed with a competent International Preliminary Examining Authority (IPEA)  May include amendments to description, claims and drawings under Article 34 2. Written Opinion of the International Searching Authority is considered the Written Opinion of the IPEA
  113. 113. PCT Patent Process Overview Chapter II Proceedings 3. A second Written Opinion will be prepared only in very rare circumstances 4. International Preliminary Report On Patentability or “IPRP” (form PCT/IPEA/409) is:  Prepared by IPEA and sent to applicant and IB  Sent to elected States by IB
  114. 114. PCT Patent Process Overview Steps for national stage entry 1. Prepare translations of the international application into languages required by the desired patent offices as applicable  Translations should be “accurate”  Amendments, even those considered to be minor in nature, should not be made to the translation  Applicant may file amendments to the application in each DO/EO 2. Transmit translation and necessary fees to each desired national or regional patent office previously designated/elected 3. Once national phase entry requirements have been met, each designated/elected Office decides whether to grant a patent or reject the claims
  115. 115. Comparative Patent Process Overview US, EU, UK, PCT Markets
  116. 116. 117 The Decision Whether/Where To File • Always conduct Prior Art search  Guidance as to scope of patent potentially available (broad or narrow patent)  Helps to draft application properly (not to read on prior art) • Strong recommendation to retain patent counsel to do search
  117. 117. 118 The Decision Whether/Where To File • Can search databases on Internet but very difficult to properly search  USPTO i.e. www.uspto.gov  CIPO i.e. www.cipo.ic.gc.ca  WIPO i.e. www.wipo.int  EPO i.e. www.epo.org • Cost is approximately $3,000 for search and opinion on patentability • Search has limitations • 18 month window until publication in most countries
  118. 118. 119 The Decision Whether/Where To File • Costs associated with patent protection and enforcement are very significant and patents are territorial (by country) • Very general estimate: $10K to $15K for one country • Over $100K+ for multi-national filing
  119. 119. 120 The Decision Whether/Where To File • Scope of likely patent protection  Can you get a broad patent, or only a narrow one? • What is the commercial life of the invention?  Will commercial life be less than time to get patent (e.g. computers)? It may be 3 to 5 years until you get a patent.
  120. 120. 121 The Decision Whether/Where To File • Consider if it is better As Trade Secret?  Example - The formula of COKE  Must disclose invention in order to get patent
  121. 121. 122 The Decision Whether/Where To File • Will competitors be able to easily design around?  Often takes years to get patent  Often market lead time is significant • Do you have money to enforce patent?  Litigation is prohibitively expensive  Often $1M for very simple patent in Canada; more in U.S.
  122. 122. 123 Filing Strategies Picking where to file: • Your market • Your competitor’s market • Your competitor’s manufacturing facilities • Enforcement potential • Prosecution charges (budget) Deciding how to first file: • Desire for speedy issuance • Indication of patentability • Getting filing date to reserve place in line or due to impending public disclosure
  123. 123. 124 Filing with the PCT  The Patent Cooperation Treaty (PCT)  PCT often called the International Application  Administered by the International Bureau at WIPO  Deemed filing in almost every country in the world  BUT: Each filing is not crystallized until national phase entry (i.e. filing in individual country) and is requested within 30 months  In effect only a 30 month delay in exchange for ~ $6,000  National phase filings very expensive -Translation may be required, etc.  In certain countries you can delay entry into national phase by up to 42 months from first filing  Why delay? Evaluate market and patentability, raise money, license invention, keep options open, etc.
  124. 124. Certain PCT Advantages: Postpones the Major Costs associated with “Internationalizing” a Patent Application Typical Costs:  Translations of the patent application (a highly technical document) into various national languages  Official fees for payment to national/regional Patent Offices (for example, filing fees, claims fees, etc.)  Fees for the services of local patent agents/attorneys in the designated states
  125. 125. Cost Issues  For a single invention  PCT not cheaper than direct applications in 15 countries  PCT international phase costs are 5% of total patenting costs  For a portfolio of applications at 30 months  20% of applications are abandoned by not entering national phase  30% of designated countries in original plan are dropped  National phase entry decisions are critical
  126. 126. Other PCT Advantages Time:  18 months more time Information:  Patentability information  International search report and written opinion  International preliminary report on patentability (optional)
  127. 127. Other PCT Advantages Decisions:  Prospects of commercial success  Production costs, market appeal, profitability  Potential partners, licensees, buyers  Competitors  Results:  Better decisions  Better spent money
  128. 128. Comparative Patent Process The decision of which country to file a patent is contingent on numerous factors and the objectives of the applicant. Since protections afforded by a patent are only applicable in the countries that issue the patent, timing must be considered in addition to the location(s) selected. Whether registering a patent in the US, UK, EU markets, or through the PCT, it is important to also consider the scope of protection offered in that venue and the costs associated with the filing. All of these considerations, along with sound business judgment, will comprise the ultimate decision on when and where to file a patent.
  129. 129. Comparative Patent Registration Processes in the US, UK, and EU Markets MC Law Presentation 2013 Richard Bays JD, MBA, RN, CPHQ RBaysConsulting@Gmail.com

×