Foreign Patent Applications: Patent Application Types and Strategies - Part 13
Kenneth C. Booth
Mar, 29 2010 | 11:00 AM
Previous: Three Patent Strategies
Contrary to some rumors and what many would like, there is not an “International Patent” that gives worldwide protection. If someone is promising you an International Patent, make sure to ask better questions to see what they're really selling. In fact, there are not even patents that cover multiple countries. Each country has its own patent system and enforcement of patent rights in that country requires patent registration in that country. There are, however, international patent applications that allow you to simplify the registration process in many countries at once, or maintain your pending status to file in many countries at a later date.
The first and what is generally considered an “international patent application” is called a Patent Cooperation Treaty (PCT) Application. This application can be filed in any language and allows an applicant to file a patent application in any of the PCT member countries for up to 30 months from the priority date for the application. The PCT Application itself is never issued as a patent by the PCT office, but allows the applicant to delay the decision of which countries the application will be filed in and the cost associated with that decision.
Another popular example of a multi-national patent application is found in the European Union. In the European Union a company or inventor can file one application in the European Patent Office that is examined on behalf of all of the European Union member countries at once. The application can be filed and examined in English, French or German. If the application is allowed, the owner can then choose which of the European Union countries the owner wants the patents granted in. The big upside to this approach is that there is only one examination process (and associated costs) with the application. The big downside, however, is that the owner needs to pay for a translation into the language of the country and pay for the registration fees in every country. There is a similar process for the other grouped countries that have this kind of international application. Nevertheless, there is still not yet one application that can count for the whole world.
Each different Patent Office has its own set of patent rules and set of people who are authorized to prosecute patents in that Office. To prosecute a patent in the European Patent Office or Korean Patent Office or Chinese Patent Office, for example, the attorney prosecuting the case needs to be registered in that country. For most, this requires passing an exam in that country. As a result, there are not many patent attorneys who have registrations in multiple countries or with different Patent Offices. Some of the rules differences between the countries are significantly different. For example, in the United States, software and business methods are patentable. In the European Union, however, software and business methods are not patentable. In the European Union, the patent application can include patent claims strategies called “multiple dependent claims” which condense the claims by referencing many previous claims for additional features being added. In the United States, however, multiple dependent claims are discouraged strongly and there are some significant claims fees penalties if they are included in an application. Hiring a patent attorney who knows the general rules of a particular country and is associated with a qualified patent attorney in the country is an important decision and should be researched before just assuming that every country is the same and any attorney can get your patent filed for you.
Foreign patent protection is generally more expensive than in the United States, requires the use of foreign associates, and is also very difficult to enforce. Although technology is allowing for easier communication around the World and many more are becoming multi-lingual in their business dealings, the language barriers and dealings with other countries still maintains a relatively high price on foreign patent prosecution and protection. But choosing the right law firm overseas to help you obtain and enforce the patent can have big effects on the overall costs.
