Thinking Globally: Tips on Securing International Patent Protection
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The document provides tips on securing international patent protection. It discusses whether international protection is needed if an invention will be marketed, manufactured, licensed, or invested in abroad. It also covers precautions like non-disclosure agreements and filing the first application early. The two routes for foreign protection - direct national filing or using the Patent Cooperation Treaty (PCT) - are described. The costs associated with international patenting and factors to consider when selecting filing countries are also summarized.
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Thinking Globally: Tips on Securing International Patent Protection
- 1. June 27, 20181 Thinking Globally Tips on Securing International Patent Protection Jay Erstling June 11, 2010 Do I Need International Patent Protection? What Precautions Do I Need to Take? How Do I Go About Getting Patent Protection Abroad? What are the Costs? How Do I Select the Filing Countries?
- 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. Thinking Globally Tips on Securing International Patent Protection MN Inventors Congress June 11, 2010
- 3. Agenda Do I Need International Patent Protection? What Precautions Do I Need to Take? How Do I Go About Getting Patent Protection Abroad? What are the Costs? How Do I Select the Filing Countries? June 27, 20183
- 4. Do I Need International Patent Protection? If you intend to... Market your invention abroad Manufacture your invention abroad Seek foreign investment for your invention License or assign your invention abroad ...foreign patent protection may be right for you June 27, 20184
- 5. Do I Need International Patent Protection? Getting and maintaining foreign patents Is very costly Is time consuming Usually entails an obligation to use your invention Implies a commitment to police the patent Implies a commitment to enforce June 27, 20185
- 6. Do I Need International Patent Protection? Does it make a difference to your bottom line and future growth if your invention is copied and commercialized abroad? June 27, 20186
- 7. What Precautions Do I Need to Take? Do NOT disclose your invention before filing your priority patent application US: 12 months to file following disclosure Rest of the world: no right to a patent following disclosure Make sure you have good NDAs Make sure your attorney has good experience working with foreign patent attorneys File your first (priority) application as early as possible June 27, 20187
- 8. How Do I Go About Getting Protection Abroad? Two routes Direct national filing Patent Cooperation Treaty (PCT) June 27, 20188
- 9. How Do I Go About Getting Protection Abroad? Direct national filing Within 12 months of filing your priority application • Referred to as the Paris Convention priority period File applications directly in countries where you want patent protection Requires knowing which countries up front Good if you want protection in only one or two countries Requires • Working with foreign counsel • Adapting U.S. application • Preparing translations • Paying foreign filing fees • Prosecuting applications according to foreign law and practice June 27, 20189
- 10. How Do I Go About Getting Protection Abroad? Direct national filing After grant you will need to: • Comply with foreign formalities • Pay annuity fees • Police the patent to prevent infringment June 27, 201810
- 11. Regional Patent Offices European Patent Office (EPO) 38 countries (+ 2 Extension States) Grants one single European patent, which then must be registered in the European countries in which the applicant wants protection Other regional offices Eurasian Patent Office – former Soviet Republics ARIPO – English-speaking African countries OAPI – French-speaking African countries June 27, 201811
- 12. How Do I Go About Getting Protection Abroad? Patent Cooperation Treaty (PCT) Advantages • Delays decision-making – 30 months vs. 12 to decide where you want protection • Delays the need (and cost) of producing translations • Delays national fees and the cost of foreign attorneys • Serves as a “page holder” when you don’t know how valuable your invention is going to be • Provides useful and helpful information about your application and its likelihood of success Disadvantages • Complex • Somewhat pricey June 27, 201812
- 13. How the PCT Works The PCT Timeline June 27, 201813 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Typically a national patent application in the home country of the applicant
- 14. How the PCT Works The PCT Timeline June 27, 201814 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Typically filed in same national patent office—one set of fees, one language, one set of formality requirements—and legal effect in all PCT states
- 15. How the PCT Works The PCT Timeline June 27, 201815 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Report on state of the art (prior art documents and their Relevance) + initial patentability opinion
- 16. How the PCT Works The PCT Timeline June 27, 201816 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Disclosing to world Content of application In standardized way
- 17. How the PCT Works The PCT Timeline June 27, 201817 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Request an additional patentability analysis on basis of amended application
- 18. How the PCT Works The PCT Timeline June 27, 201818 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Additional patentability analysis, designed to assist in national phase decision- making
- 19. How the PCT Works The PCT Timeline June 27, 201819 (months) 0 12 16 18 22 28 30 Enter national phase File local application File PCT application International search report & written opinion International publication (optional) File demand for international preliminary examination (optional) International preliminary report on patentability Express intention and take steps to pursue to grant to various states
- 20. Most Efficient/Least Expensive Use of the PCT File a US provisional as priority document At end of 12 months, file a PCT international application Do not file a US utility application because PCT is the equivalent of a US application At end of 30 months, enter “national phase” in the US and other countries in which you want protection Prosecute applications on a country-by-country basis June 27, 201820
- 21. Cost of Filing a PCT Basic International Filing Fee $1,607 Application filed with USPTO as “PCT Receiving Office” Small reduction for electronic filing Additional fees for very long applications Fee covers formalities review, publication, processing June 27, 201821
- 22. Cost of Filing a PCT Fee for carrying out International Search and preparing Written Opinion 15 patent offices serving as International Searching Authorities US Applicants can use: US, Europe, Korea, Australia, (soon Russia) • USPTO $2,080 • EPO $2,443 • KIPO $1,157 • IP Australia $1,837 – Limited searching – No mechanical inventions KIPO – low cost, high quality, but big backlog Basic minimum PCT filing cost = $2,764 (as of May 2011) Fees vary with currency fluctuations June 27, 201822
- 23. Selecting Filing Countries Simple rule: Follow the money Where do I intend to market? Where do I intend to manufacture? Where are my competitors situated? Where are future competitors likely to emerge? How easily duplicated is my invention? How economically crucial is my invention? How strong is my patent? Where are my sources of investment? How strong is the country’s patent system? Will I be able to enforce my patent there? June 27, 201823
- 24. Post-Grant Strategy Review your patents on a regular basis Be prepared to abandon or assign patents that no longer create value Explore strategic expansion of your patent portfolio Make sure you are in compliance with national rules regarding patent usage Remember that patents are business assets Police your patents to ensure value extraction June 27, 201824
- 25. Final Notes File internationally when it is strategically important File direct national applications when you are only filing in a couple of countries Use PCT to hold open options, delay costs Strategize to minimize costs; file in as few countries as possible Rely on good foreign counsel June 27, 201825
- 26. Questions? Jay Erstling | 612.349.5771 | erstling@ptslaw.com June 27, 201826