PCT FILING AND INTERNATIONAL PROSECUTION Samson Helfgott KattenMuchinRosenman, LLP, New York, New York

Transcription

1 PCT FILING AND INTERNATIONAL PROSECUTION Samson Helfgott KattenMuchinRosenman, LLP, New York, New York PREPARED FOR AIPLA PRACTICAL PATENT PROSECUTION TRAINING FOR NEW LAWYERS 2013 ROAD SHOW

2 I. INTRODUCTION While your basic interest is obtaining U.S. patents, your client may also be interested in protecting his invention beyond the U.S. Every country of the world has its own set of laws with respect to filing and obtaining patents. To the extent your client wants foreign protection, this must be addressed on a country by country basis. The costs for obtaining foreign patent coverage is exceedingly expensive, in many cases substantially more than the cost of filing and obtaining a patent in the United States. Furthermore, there are timing restrictions for filing the patent application in foreign countries. If you fail to file within prescribed times, you may lose all rights in the foreign countries that your client may seek coverage. It is therefore necessary to balance the cost factor of obtaining the patents, the significance of obtaining patents in particular countries, the timing needed to obtain patents, and other information, in order to advise your client how to proceed in order to protect his invention in other parts of the world outside the United States. There are a number of treaties that will facilitate some of the difficulties, and knowledge and use of the treaties has become a critical part of obtaining foreign patent coverage. We will go through the treaties and provide information on how to use the treaties and their benefits. We will also cover the cost factors involved in using the treaties as well as in proceeding into the various national countries in order to obtain patent protection. In many situations the client is knowledgeable about foreign markets and knows where they would like foreign protection. However, in many situations the client turns to the patent attorney for guidance. This paper will therefore provide helpful suggestions in selecting where to obtain foreign patent coverage. Additionally, because laws are distinct in countries around the world, it will be helpful to know some of the unique requirements of these countries at the time you write your initial patent application. We will try to provide some suggestions for filing, prosecuting, and claim drafting in foreign countries. This will aid you in writing your initial patent application so that the initial patent application that you write will already be useful for filing in foreign countries. II. LEGAL REQUIREMENTS A. Paris Convention The Paris Convention was adopted over 100 years ago. Almost every country of the world is a member of the Paris Convention. The main benefit of the Paris Convention is in connection with foreign filing. This is covered by the priority rights under Article 4 as shown in attached Fig. 1. B. Patent Cooperation Treaty The Patent Cooperation Treaty (PCT) was developed around 1970 and is supervised under the auspices of the World Intellectual Property Organization (WIPO). It is based on the 1

3 concept that it is possible, despite the differences of national patent laws, to entrust a centralized international authority with the carrying out of prior art searches and examination on behalf of several national offices. C. European Patent Convention The European Patent Convention is a single patent office covering most of eastern and western Europe and providing a single search and examination for all of those countries which are member states to the convention. Once the European Patent Office provides the grant of a patent, it is necessary to then proceed into the national countries in which patent protection is designed. Thus the European Patent Convention provides a bundle of patents rather than a single European patent. III. ISSUES AND APPROACHES A. Patents are National in Scope Patents are essentially national in scope. Thus, a U.S. patent only protects under the territory of the United States. Within such territory, the U.S. patent provides an exclusionary right. This permits the patent owner to prevent anyone from making, using, or selling the patented product in the United States, or importing it into the United States. Furthermore, it also prevents someone from practicing a method covered by a U.S. patent both in the United States or practicing it abroad and bringing the product into the United States. However, a U.S. patent will not prevent anyone from making, using, selling or manufacturing out of the United States so long as they do not bring that product into the United States. Accordingly, if a patent owner desires protection in a particular foreign country, it is necessary to obtain a separate patent in that country. While there are various treaties to facilitate obtaining such patent, ultimately, a patent that is granted is one that covers a particular country and separate patents must be obtained for every country in which protection is desired. B. Costs for Foreign Patents The costs for foreign patenting are extremely high. Such costs include official fees to the foreign country, translation costs which are necessary in most countries, as well as service fees for local agents or patent attorneys which are required in each foreign country. With few exceptions, a U.S. patent attorney cannot directly handle the foreign filing and prosecution of patent applications in foreign countries. It is necessary to obtain foreign patent agents or foreign patent attorneys in each country in which protection is desired. Those agents or foreign patent attorneys charge their own service fees in addition to any government fees that may be necessary. Additionally, while in the United States maintenance fees are spread apart at 3 ½ year intervals, in foreign countries, maintenance fees are almost always annual. As a result, the cost of obtaining foreign patents is substantially greater than that of the United States. It has been estimated that the cost for filing, prosecuting and maintaining a patent in the United States (not including the cost of the actual writing of the application) can be in the 2

4 neighborhood of $25,000. By comparison, the lifetime cost for obtaining patent coverage in about 8 European countries can be as much as $150,000. In Japan, the lifetime costs would be approximately $75, A chart showing some typical costs for foreign filing and translation are provided in Fig. C. Timing for Foreign Filing One of the problems of selecting where to foreign file is that this decision must be made within one year from the date of the original U.S. filing. Under the Paris Convention, if the filing is made within one year of your U.S. original filing date, you will get the benefit of such original filing date with respect to overcoming prior art. By way of example, if a provisional application was filed in the USPTO on May 28, 2010, the applicant would have until May 28, 2011 in which to file in any foreign country. By filing it on or before this date of May 28, 2011, such foreign country (under the Paris Convention) would recognize the priority date of May 28, 2010 with respect to citation of foreign references. Thus, during the search and examination process in such foreign country, they will only be able to cite references against such application which have a date before May 28, It should be remembered, however, that the actual filing date in the foreign country will be used for calculation of the term. If that foreign country has a term of 20 years, the 20 years will be counted from May 28, 2010, the actual filing date in that country. Failure to file within the one year Paris Convention date, will give you the actual filing date in that country as the date for citation of prior art references. In the above example, if the application were filed in the foreign country on May 29, 2011 it would not get the benefit of the priority filing of May 28, Instead, the actual filing date of May 29, 2011 would be the date considered with respect to citation of any references. Without the benefit of the priority date, any of the patent owner s own activity during that year such as publication, sales, etc., might be used as a reference against the foreign filing date of May 29, Furthermore, any references by third parties that came about during that year could also be used as a reference against novelty or obviousness. Accordingly, decisions with respect to selection of foreign countries must be made during that one year of the Paris Convention priority year. Once that year has passed, it may be almost impossible for the patent owner to get protection in a particular foreign country. D. Different Laws in Foreign Countries Foreign countries in many cases have different laws that must be taken into consideration when filing the application. AIA has changed US law so that there will be less differences in the future. However, for many years it will be necessary to understand and use two sets of laws in the US. 3

5 E. Patent Cooperation Treaty (PCT) Before the end of the one-year Paris Convention date, instead of filing individual national patent applications in each country which the client desires, it is possible to file an international application under the Patent Cooperation Treaty (PCT). The PCT is a treaty which is adhered to by 146 countries. The attached Fig. 3 shows the current list of countries which are members of the PCT. The list also indicates the 2-letter country code designation for each country. By filing an international application under the PCT, you effectively defer the need for entering into national countries by up to 30 months from the original priority date. Accordingly, if you are filing near the end of the Paris Convention year (12 months from the original filing date) by filing an international application you will get an additional 18 months before you have to decide on the specific national countries on which to enter. Fig. 4 shows the use of the PCT Route. The cost of filing the PCT is actually an additional cost. Ultimately, you will still have to pay all of the national filing fees. However, you defer those national filing fees for an additional 18 months. For example, assume a provisional U.S. application was filed on May 28, Under the Paris Convention foreign filing decisions must be made by May 28, At that point the Applicant could file nationally. For example, if the client knows he wants to file in Germany, England, Japan, Canada and Australia, he can actually file in those countries at that point. However, that would necessitate their making a decision that only those countries should be entered and they would probably lose the right to enter other countries after that Convention year. Furthermore, they must already pay for the translation, official filing fees, agents fees, etc., at that point. By using the PCT, they defer for an additional 18 months that decision of which specific countries should be selected. Those 18 months often give you and the client additional time to gain the benefit of seeing the U.S. search report, analyzing market potential, looking at the competitors positions, etc. Within those additional 18 months sometimes they gain more information to make wiser decisions. In fact, in many cases, the client may actually decide after those additional 18 months (30 months from the original filing date) that the invention is really not worth any foreign filing. In that case it was significant not to have spent all that money translating and filing at the 12-month period. Accordingly, the PCT gives you an additional 18 months before spending significant coasts and commitment on foreign filing. Of course, you do have the additional cost of the PCT which may be about $5,000. This includes the International filing fee, and all other PCT-related fees and should include attorney s service fees. But by spending this $5,000 the client gains the extra 18 months during which time he can make much wiser and more specific and knowledgeable decisions. During these 18 months, PCT cost does give the client some additional benefits. During this period of time there will be an international search. You can also obtain an international examination for extra fees. As your client will generally be a U.S. applicant you will typically file the application in the United States Patent Office, using it as the International receiving office for the PCT. However, it is also possible to file directly in Geneva, using the International 4

6 Bureau as the receiving office. In addition to designating the United States as the receiving office, as a U.S. applicant your client has a choice of using either the United States, the European Patent Office, or the Korean Patent Office as the International Searching Authority. Currently, the United States Patent Office is outsourcing the PCT searches to private commercial searching organizations and to the Australian Patent Office. Nevertheless, in most cases you will get the same references cited for both the U.S. national application as well as the PCT international application. Occasionally, when the case enters the U.S., the examiner may conduct a further search. Remember also, that under U.S. law you have a grace period and thus some references may not be applicable. There is also Section 102(e) and other related sections under 102 that may exclude references for national U.S. prosecution. However, these references may be applicable in other countries. Therefore, you may get additional references cited in the international search, but most of the references will be very similar to that of the U.S. search. U.S. applicants also have the option of choosing the European patent office, the Russian Patent Office, the Korean Patent Office and for limited technologies, the Australia Patent Office to perform the international search. This costs additional fees. However, if you thereafter proceed into the European Patent Office after the conclusion of the PCT, you will get a reduction in fees upon entry into the European Patent Office since they have already done the search. Together with the search report there will be a written opinion. The search report will be published with the application at 18 months. The written opinion will be sent to the applicant and otherwise will remain in the international file and not be published at that time. Until the application is published, it is possible to submit amendments to the claims by submitting substitute pages. This is done under Article 19 of the PCT. After receiving the search report and the written opinion you can just wait until the end of the 30 months at which time decisions must then be made into which country the applicant wants to obtain patent protection. However, it is also possible to enter into Chapter II of the PCT. This Chapter is referred to as the examination phase. This phase is available if you are interested in amending the claims and entering into a dialogue with the examiner during the International Stage. After you receive the search report you can then amend the claims or just submit arguments and proceed into Chapter II. The examiner will then review the Arguments and any amended claims and then provide you with a final examination report. It is not necessary to enter Chapter II. The only reason for entering into Chapter II would be to enter into a dialogue with the examiner to get a further examination on possible amended claims. At the end of the 30 months (in some countries 31 months is permitted) it is then necessary to select which of the countries of the PCT member states you wish to enter. It will be necessary to provide individual translations for those countries, obtain local agents or patent attorneys in that country, and proceed as usual into the national phase. Some benefits are obtained by having used the PCT. For example, it will no longer be necessary to provide a certified copy of the priority document in that individual country. Furthermore, the international search and written opinion will be accepted in many countries and will avoid the necessity for any further search or examination. However, for the most part, the major countries of the world 5

7 will still carry out their own individual search and examination report, although there may be some reduction in fees. The attached Fig. 5 shows the current use of the PCT system. It is referred to as the EISPE System (Enhanced International Search and Preliminary Examination System). F. European Patent Convention (EPC) As previously explained, through the use of the Paris Convention, it is necessary to foreign file the patent application within one year of the original U.S. filing in order to get the benefit of the priority date. At the end of that Paris Convention year, filing can be done directly into each national country or alternately the Patent Convention Treaty (PCT) can be used to preserve rights in all member states of the PCT for another 18 months. Within Europe, there is a regional patent system referred to as the European Patent Organization (EPO) operating under the European Patent Convention (EPC). It now includes 40 countries, including the extension countries which recognize European patents. The list of countries is included in Fig. 6. If it is desired to obtain patent protection in more than 2 or 3 European countries, it is preferable to use the European Patent Convention from a cost-saving viewpoint. Such EPC can be filed directly at the end of the one-year Paris Convention period. Alternately, EPC can be designated within the PCT. Thus, at the end of the 30 months of the PCT you can then go into the EPC. The European Patent Office is an organization located in Munich with some branches elsewhere. It is a centralized search and examination organization operating on behalf of all of its member states. It provides a single search and examination. At the conclusion of such prosecution, it then issues a grant of a European patent. However, such grant does not give any rights. Once granted it is then necessary for the applicant to decide into which of the member states he now wants his patent to be effective. He must then provide a local agent in that country, provide the necessary translation, and provide the filing fees for entry into that country. By way of example, if an applicant wanted to preserve foreign rights, at the end of his Paris Convention year he could file a PCT application thereby gaining another 18 months. Before the end of the 30 months (Europe actually grants 31 months), he would then file an EPC application for the European countries. He would then proceed to receive a search and examination in the European Patent Office. Once he completes this prosecution and the patent is granted, the applicant can then decide into which countries he wants to obtain his patents. For example, if he wants a German patent he would then take the EP grant, translate the application into German, obtain a German agent and have him pay the necessary filing fees in Germany. Germany would then issue a German Euro-patent. However such a German Euro-patent has exactly the same effect as if he filed directly into the German patent office and prosecuted his application to obtain a German patent. Upon entry into the European Patent Office, he must initially designate into which of the countries he wants to preserve his rights, usually when he gets his search. There is typically a separate designation fee based upon the number of countries he wishes to preserve his rights into. If he wants to preserve his rights in 4 or 5 European countries he will designate those at the time 6

8 he proceeds with the European patent office prosecution. Thereafter, after the grant, he must select only from those in which he initially designated, and only in those can he obtain his Europatent. However, there is a maximum of 7 designations, so that if you designate 7, you can automatically include all of the European countries in your designation and preserve rights into all of them. The European Patent Office carries out its own search and examination. Historically, the European search has generally been considered to provide the best search of all the patent offices in the world. The process is rather slow and such search and examination can take approximately 3-5 years. Filing within the EPC permits the case to be filed and prosecuted in the English language. This defers translation costs until final entry into the national countries desired. Even upon entry into the national countries, consideration should be given to utilize a common translation for common speaking countries. For example, a German translation can be generally utilized for Germany, Austria, and Switzerland. A French translation can be used for France and Switzerland. Those countries who are members of the London Protocol will only require a translation of the claims. The specification can remain in English. G. Other Regional Patent Offices In addition to the European Patent Office serving as a regional patent office for Eastern or Western Europe, other regional patent offices exist as well. For example, the Eurasian Patent Office covers the countries of the old Russian Federation. In Africa there are two treaties, ARIPO and OAPI, covering groups of countries. Likewise in the Middle East there is a treaty. A list of the various regional offices and the countries they cover is also shown in Fig. 6. H. Preparing Application for Foreign Filing If the original U.S. application is prepared with the knowledge that foreign filing will occur, it is possible to avoid much revision work at the time of foreign filing. Accordingly, when the end of the one-year Paris Convention time period occurs, if the application was prepared properly, then that same application can generally be useful for foreign filing. One area, however, that may require revision upon entry to foreign filing relates to the claims. One reason for change in the claims concerns different unity of invention rules. U.S. actually uses what is called restriction practice. This is governed by whether the inventions are separate and distinct. The result in the United States, is that frequently you cannot achieve method and apparatus type claims in the same invention. You will receive a restriction notice to restrict it to one of these two inventions. Most of the world uses what is called a unity of invention practice where they determine whether there is a common inventive concept to all of the claims. As a result, in Europe, Japan, and the PCT so long as there is a common inventive concept you can get separate sets of independent claims on method, apparatus, use, machine for manufacturing, applications, etc. Therefore before foreign filing, or before preparing the application for PCT filing, it may be necessary to revise the claims to include additional sets of independent claims relating to other types of claims in addition to just method and/or apparatus. 7

9 A special limitation on claims relates to European practice. In the EPC, although they do use the general unity of invention standard and permit independent claims of all different types, they only permit one independent claim of each type. Therefore only one independent method claim, one independent apparatus claim, one independent use claim, etc. Other countries, such as Japan, permit multiple independent claims of the same type. Another distinction between U.S. and foreign claiming relates to multiple dependencies. Although U.S. law actually permits a limited type of multiple dependent claims, it is rare for it to be used in the U.S. However in foreign countries they permit multiple dependent claims and dependencies on dependencies. This is a good way to reduce the number of claims for foreign filing. In Europe the Examiners prefer the claims to be in the so-called two-part form. This means having a preamble which generally describes the closest prior art, and thereafter having a characterizing clause describing the novelty of the invention being claimed. This is very similar to the Jepson type claim in the U.S. Although in the U.S. with a Jepson type claim the preamble is considered an admission of the prior art, in European practice it is not so. A further consideration of claim drafting for foreign filing is the cost. In Europe they charge for each claim beyond 10. In Japan during examination and issuance they charge for each independent claim after one. Therefore the number of claims generally filed in foreign practice is considerably less than the number used in the United States. Typically a foreign application has a limited number of independent claims (including different types) and very few dependent claims. In foreign countries dependent claims are only used if they add a novel and an obvious features to the main claim. I. Oppositions In almost all foreign countries there exists an opposition system. The opposition is an opportunity for third parties to file objections with the patent office. Typically such oppositions occur after the grant of the patent and can be filed anywhere from 3 months to 9 months after such grant. For such oppositions, the third party must submit references upon which they base their objections, together with arguments. In most countries the patent office will review the opposition and first make a determination whether the opposition should proceed. If they feel there is sufficient basis for the opposition they will institute the opposition proceedings. However, in some locations, such as the European Patent Office, every opposition will be accepted. In those countries where they accept every opposition automatically, typically you will be fighting the opponent. In Japan they now have a revocation system where they first make a determination whether the revocation should proceed and then it is the patent office that then re-examines the application based upon the submissions and the third party is not directly the party with whom you are fighting. Typically, after the revocation of opposition there is an opportunity for appeal. J. Foreign Agents In dealing with the PCT, communications can be handled directly by a U.S. attorney so long as he is filing either in the U.S. receiving office or the International Bureau as the receiving 8

10 office. Even if one uses the European office as the search and examination authority, the U.S. patent attorney can still handle all of this directly. However, once you enter into foreign countries you must use a local agent or local patent attorney. In most foreign countries, contrary to the United States, the agent or patent attorney is not a lawyer. They are similar to U.S. Patent Agents. However, they must be registered in the local country to handle matters before their local patent office. One should typically choose a foreign agent who is capable of handling the particular technology that is being filed. In foreign countries you will typically find smaller firms than in the United States. Some of the larger foreign firms (small by comparison to U.S.) will cover all fields of technologies. However, others may only have very few agents and you must be sure they handle your technology. In some countries of the world there will be full prosecution and therefore you should seek technical competence in your foreign agent. For example, Japan, Korea and Europe are all serious examination countries. However, in some countries of the world there is simply a registration system. Namely, once your file your application (especially after it has gone through the PCT phase) it is automatically registered. This is the case in many South American countries, and in some of the South Asian countries. In these countries it is not that significant that you obtain technical competence from your foreign agent. On the contrary, in such countries typically the more politically oriented the firm is, the better opportunity you will have to expedite matters in getting registration of your patent. IV. KEY CONCEPTS AND STRATEGIES A. Selecting Methods for Foreign Filing As previously explained, in order to preserve the benefit of the original U.S. filing date, it is necessary to foreign file the invention within one year of such original filing date. It was also previously explained that such filing could take place by filing directly into the national countries individually (or using regional treaties like EPO, etc.). Alternately, there can be an initial PCT filing as an international application in order to defer the specific country selection for another eighteen months. However, even using the PCT, there are a number of strategic opportunities for selecting the proper route for foreign filing. A few of such opportunities and strategies are now described indicating potential benefits and detriments of each of these routes. One route I refer to as the Classical Route (Fig. 7). In this case within one year of the U.S. filing you file a PCT application for all countries member states of the PCT. For those countries such as Taiwan who are not members of the PCT, you should consider with the client whether they need such filing in which case such must be done nationally at 12 months. At the end of the PCT thirty months, you select the countries for foreign filing. In the case of the United States, you use your priority application and continue with that application in order to obtain a U.S. patent. The PCT is used only for countries outside of the U.S. 9

11 Another possibility is to combine the use of a provisional filing in the U.S. application together with the PCT (Fig. 8). In this case, you file first in the United States a provisional application. However, at the end of the year instead of filing the provisional as a complete application, you file just a PCT application. The U.S. is a member state of the PCT. Therefore, the U.S. is already designated within the PCT filing. During the PCT phase, you will get a search and that will be useful for both U.S. and international. Then, at the end of the thirty months, you can complete the PCT in the United States. If the client also wants, you also do foreign filing from the PCT. Accordingly, the only U.S. patent you will have is from the PCT route based on an original provisional application. Another strategy is shown in Fig. 9 where you have both a PCT application and a U.S. application. Again start with a provisional. However, at the end of the twelve months you file a complete application in the United States based upon the provisional, and also file the PCT application. Through the PCT application, you can obtain all your foreign countries that are desired at the end of the thirty months. However, it must be remembered that since you are now designating all countries under the PCT, the U.S. is inherently designated under PCT. Therefore, you still have an opportunity to continue the PCT into a second U.S. application at the end of the thirty months. You might therefore have an opportunity of tailoring claims in this second U.S. application derived from the PCT, and have a different set of claims from those in your U.S. application that you filed at the end of the twelve months as a complete application from the provisional. One benefit of this is that you will get an earlier search as a result of the PCT filing. Since the U.S. as an international searching authority has an obligation of completing the search, if possible, before the eighteen month publication, it will urge the examiner to conduct a search and he will generally use that search for the pending U.S. application that was filed as a complete application. A further strategy is to file PCT first as shown in Fig. 10. Your very first application can be a PCT application filed in the United States receiving office. At the end of twelve months nothing need be done except filing in non-pct countries such as Taiwan, etc. However, for the PCT member states you simply wait for the thirty months and at the end of thirty months you proceed into both the U.S. and whatever foreign countries the client is interested in. Additional options and variations are also available. You could use multiple provisionals and thereafter claim multiple priorities combining them all into a single PCT application. Since the PCT inherently includes the U.S. you can have a regular complete U.S. application and another one through the PCT route. You can use different sets of claims for these two applications. Furthermore, using the PCT route you can actually file a continuation-in-part application at the end of the thirty months by adding new matter. However, you must make sure that what you add was not published more than one year before the CIP filing date. B. Selecting Foreign Countries. While in most cases the client is knowledgeable with respect to which foreign countries should be selected, some clients often look to the patent attorney for guidance and advice as to what foreign countries should be chosen. Since the decision for such foreign filing must be 10

12 made within one year (Paris convention priority date), in many situations it is almost impossible at that early stage to determine what the value of the invention will be over the life of the invention. It is like looking into a crystal ball and making a determination of what the value of that invention will be over a twenty year period, and that decision must be made within one year of the original filing date. Wherever possible, the PCT route should be chosen. This preserves the most rights and gives an additional eighteen months in which to make such decisions. Typically, after thirty months from filing there will be a much greater appreciation of the significance of the invention, where it might be used, other factors needed to determine which foreign countries should be selected. Likewise, if faced with a decision on where to file in Europe, it is always preferable to use the EPC route. This gives the broadest potential protection by preserving rights in as many countries as possible in Europe. However, at some point a decision must be made on a selection of countries. While broad country protection may be desired, the costs involved are extremely high. This is especially so when translations are required, maintenance fees must be paid each year, agents fees must be paid, and in general foreign costs are such that careful selection must be made with foreign filing. Prior to making the selection, it is important to do an analysis, typically with the client and with other interested parties who can provide guidance and assistance. The issues that must be addressed are: 1. Evaluating the invention. 2. Evaluating potential countries for foreign filing. 3. Matching countries with the type and purpose of invention, and prioritizing countries. In evaluating the invention a number of items should be addressed. Firstly, you must analyze what is the problem being solved by the invention? How does this invention compare with other solutions that have previously been suggested to solve this problem? Is it a basic invention? Is it simply an improvement over what others have done? Is it just one of a number of alternate embodiments to provide resolution of the problem? You must also address the relationship between the invention and the clients business. For example, is this part of the core business of the company? Will this be significant to competitors? How much time and money has been invested into this invention? If the client has put in a significant amount of money, time, personnel and other capital, then the invention becomes more important to protect such investment. It is also significant to discuss with the client what is the purpose of obtaining the patent in the first place. Is it to protect his own technology and for keeping competitors away? Is it to improve his marketing position? Is it simply for defensive purposes to block others from 11

13 obtaining patents in certain areas? Sometimes a patent is established only for a relationship with joint ventures or for licensing purposes etc. Sometimes, it is only established to obtain a reputation or credentials in a certain field of technology. The bottom line that must be addressed with the client is, if you don t get the patent, so what? If the client s answer is that it doesn t make that much of a difference, then very limited foreign protection would be warranted. On the other hand, if it makes a significant difference to the client, then clearly broad protection is warranted. After getting a good idea on the value of the invention and the potential patent, it is then necessary to evaluate the various countries that are being considered. In evaluating countries, it is important to get a general understanding of the country itself. For example, the size of the country as a market for this product? The clients activity within the country? For example, does the client actually manufacture in that country or is it simply a market country for that particular product? You might also want to do a search and see what the competitors patent portfolio is in that country. This would give you information on knowing the significance of the country to competitors and their products. It is also important to do a patent evaluation of the country itself. For example, what is the enforceability of patents in the country? How strong are the patents in that country? Is it simply a registration country or do they do a thorough search so that the quality of the patents that are issued will be upstanding and will be enforceable? Various companies have put together charts for individual products. For example, they may have what is called Group A Countries followed by Group B Countries, etc. Namely, for a particular product they have prioritized those countries that are of basic importance to them. They then have a second tier list of countries for that product, and so on down the line. Thereafter, they evaluate the importance of a particular invention. If it is a very important invention, they may go down to the third or fourth tier countries and file it there. On the other hand, if it is not a significant invention, they may either not file it at all or simply file it in the first tier country, the Group A countries. Although there have been many recommendations on how to select countries and what type of priority should be given to these countries, the following are my own recommendations. Firstly, in selecting a foreign country consideration should be given to protect local manufacturer. To the extent that your client has a particular manufacturing plant in a particular country, first consideration should be given to filing patents in that country. Patents protect investment. If the client has invested considerable funds and labor in a particular country, adequate protection should be given in that country to prevent others from stopping such manufacture. Very often employees leave one company and go to another company taking techniques and information with them. To the extent there are patents in that country, these could prevent the leakage of technology from the client s own manufacturing plant to competitors in that country. The second priority is to consider covering those countries where competitors are located. For example, look where the competitor s home country is or where the competitor has a major investment manufacturing plant. To the extent that your technology is quite competitive, having a patent in the country where your competitor is located could prevent him from manufacturing and using that technology. In the absence of a patent, he might very well be able to use the 12

14 technology. Although he could not ship it into countries where you have patents, at least he could source it from his own home country. The presence of a patent in that country would prevent such utilization of your client s technology. The third priority is to cover major markets. For example, if there is a product that is distributed worldwide, covering some of the major markets such as Germany, Japan, Australia, etc. might be adequate. Typically, if a competitor can not sell into the major markets it may not even manufacture a particular product. By covering such major markets, at least you can try to prevent the technology from being introduced by the competitor. The last priority is given to covering export sales. The reason for this is that exports sales typically change from year to year. Since you must select your foreign country at a time when it is early in the life of the patent, you may not know all the export sales countries over the life of the patent. To try and cover all export sales markets broadly is very expensive and may not be economically justified. However, if there are one or two major export countries that your client utilizes for all his products and knows very well those are the major countries he will use, then you should consider covering those. However, very limited coverage is necessary for export sales alone. Additional consideration should always be given to the type of product you are dealing with. For example, if you are dealing with a pharmaceutical or chemical product, broad filing is necessary especially when the product is easily producible. On the other hand, industrial products would have limited filing in only major industrialized countries. Likewise, with large systems, assembles or complex machines, it would suffice to have limited filing in industrialized countries. With labor intensive products you should consider the low cost manufacturing countries for foreign protection. Components and materials which can be manufactured all over, should have broad filing in all major countries. Fig. 11 summarizes my recommendations. As you generally continue working with clients, you learn where their foreign interests are and tend to develop a unique chart of foreign countries for each client. However, even with a particular client, to the extent they have a broad family of products, the same selection of foreign countries may not be appropriate for all products. Care should be given to specifically analyze not only the important countries but the relationship between the country and the product. However, it is important to develop strategies with major clients that you have so that they are aware of foreign patent coverage and foreign patent strategies as part of their overall intellectual property strategy. C. Global Patent Application. It was previously discussed that upon foreign filing it might be necessary to revise the original U.S. application and especially revise the claims. To the extent that the original application for filing in the U.S. was prepared with foreign filing in mind, little if any revisions may be needed to the specification and only limited attention need be given to the claims. One of the significant aspects in preparing such a global patent application is to understand the problems of filing into foreign countries. One of the major problems is the cost of foreign filing. 13

15 Translation fees are probably the most significant amount of such costs. To the extent that your specification is limited in size, you can save considerable money in translation costs. However, typically when preparing a U.S. application you try and include as much as possible. You try to satisfy U.S. requirements of adequate description, enablement, and best mode, and you tend to write much more than may be necessary. This results in a very huge patent application which costs a tremendous amount in order to translate upon foreign filing. Additionally, sometimes writing too much can be damaging in many foreign countries. Likewise, excessive verbosity and increased language sometimes can also result in harming your U.S. application. It is therefore necessary to strike a balance by supplying an adequate description while at the same time avoiding excessive wording. This may actually wind up taking more time since frequently writing a short, concise, and very specific specification takes more time than just rambling on without care and attention. Nevertheless, the extra time spent in curtailing the language and being more specific and succinct at the time of the filing, the better the application will be and the savings will appear when you go into the foreign countries since translation costs will less. One of the basic principles in writing a global type application is to remember to only describe the invention once. Unfortunately, many times patent attorneys in trying to explain the invention feel they have to repeat it many times in order to get it straight. On the other hand, to the extent you do it correctly once, you need not repeat it. Very often, in preparing a patent application you will write a summary of the invention. Rather than being a true summary, what winds up is that the summary is a recitation of the entire invention with all the embodiments. Next, the brief description of the drawings winds up describing in detail all of the aspects of the drawings and again repeating the invention a second time. Typically, there will follow a general description of the invention and thereafter a description of the best mode of the invention. This becomes a four-time rewrite of the invention. Finally, just in case the attorney feels that he has not adequately described it, he might actually include a concluding summary, which is now a fifth description of the invention. Certain guidelines are useful in preparing the application to avoid such duplication of words, duplication of description, and often unnecessary verbiage. Firstly, an attorney should remember that he is not required to teach the technology. The patent application is addressed to one skilled in the art. Even the examiner is an individual who is skilled in the art. Therefore, in the background of the invention it is not necessary to go through many, many references and describe them and distinguish over each of them. In fact, doing so might actually mis-describe one of these references, or not go into enough detail of every aspect of the cited reference and this may actually cause trouble during litigation in the United States. Accordingly, in the background of the invention section it is best to use just one reference, the closest reference. Describe it only briefly. This reference should be used to describe the problem or the area the invention is intended to address. 14

16 All of the other references should be submitted in the U.S. in an IDS. In foreign countries likewise, the references should be sent to the agent. These other references need not be included within the specification, nor should they be described. While in Japan the current law requires listing of these references in the specification, the agent can simply add these to the specification at the time he is translating. It is not necessary to go into detail on these references and by doing so you just add translation costs. The Summary of the Invention should be just that, namely a summary. Basically you should paraphrase Claim 1 or your broadest claim of the invention. To the extent that you may have different aspects of the invention you may simply include a short statement that other embodiments of the invention are feasible and then simply list them. In preparing a global type application Objects should be avoided. In some countries, such as Europe and possibly Japan, to the extent you list many objects, the examiner may require that everyone of your claims fulfill everyone of these objects, which may not be the case. Therefore, objects should be avoided. However, to satisfy foreign requirements at least one technical advantage of the invention should be listed. Puffing and other glowing statements regarding the invention should be avoided. The Brief Description of Drawings should be exactly that. Namely, just the listing of the figure numbers and a one line explanation of what each figure represents. The section on Description of the Invention is the most important part. In general, you should try to describe the invention only once. One approach that has been utilized is to describe the invention as part of the best mode. However, each time that a particular item or material is mentioned, right after that alternatives can be given. For example, if you are dealing with a jewelry item and are describing a gold chain, at the time you mention that it is made out of gold you can also indicate that other precious metals could be utilized such as silver, platinum, rhodium, etc. When you describe the invention you should limit the description of the peripheral environment as much as possible and only to the extent necessary to understand the invention. For example, if you have a new automobile door lock, it is not necessary to describe the whole automobile. You might simply mention the presence of the automobile door to the extent that that is significant and only go into enough detail of the door that is necessary to understand the invention and how it relates to the locking mechanism. In describing elements you should be consistent. Specifically, it is helpful to keep a Parts List. As you go through each part you list it on a sheet of paper with its numeric reference associated with it. In that way you can be consistent in referring to the same part with the same term throughout. In foreign countries use of examples is extremely important. You should utilize generic types of examples and thereafter specifics covered by the generic type. Where a specific range is recited, examples should be given at the low end, the high end and mid range, as well. To the extent that a particular value is critical, you must give examples showing the difference between 15

17 the critical numbers used and its results, and the non-inventive numbers and contrary, noninventive results. Generally, in foreign countries there is no incorporation by reference and such should not be included for a global patent application. Instead, to the extent that it is necessary to include information it should actually be written within the specification. Likewise, no cross-referencing is allowed in many foreign countries and therefore the entire information should be included within the specification itself. Each specification should be considered as a stand-alone product. Be sure to use the SI unit for measurement, weights, etc. You might consider using the U.S. units and the SI units both with one in parentheses. This will avoid the necessity of converting units when going into foreign countries. In general, when writing a global type of application you should consider the needs for translating and foreign understanding of the U.S. language. Therefore, short, non-confusing sentences should be utilized. Ambiguous words should be avoided. Indefinite language should also be avoided. Critical language such as essential should be avoided unless it is a required part of the invention. Generalizations should also be avoided. For example, ambiguous words such as more than or less than are often vague and will cause problems in foreign countries. Words like must or required are interpreted as being critical and you will be forced to include that item into the claims. Softer language such as should or can be is preferable unless the language is in fact critical. In preparing the drawings, it is recommended to use A-4 paper and use the PCT recommended margins and type style. To the extent you have block diagrams and would be including words in them, you should have the draftsmen prepare one set of block diagram without the English words. Otherwise the English words will have to be translated in each foreign country. Preferably, just submit the block diagrams without any words in them and just identify them with the reference numbers. It is also helpful to utilize computerized drawings wherever possible since that way they can be sent electronically to your foreign agents and to the extent that the changes are needed they can do it electronically. In both the Abstract and the Claims, foreign countries require reference numerals. Typically, U.S. attorneys do not like to include these in either the abstract or the claims. The suggestion is therefore at the time you write the Abstract and Claims that you include reference numbers since at the time you write the case you know what you are referring to. It is easier to write it with the reference numbers at that time. If you fail to do so at that time, then a year later when you prepare your application for PCT or foreign filing, you will have to go back and try to remember exactly what part you referred to in the Claims. Therefore at the time you write the Abstract and Claims, you prepare them, with the reference numerals. You can then simply eliminate the reference numerals for U.S. filing but keep a copy with your reference numerals in your file and have it available for foreign filing at the end of the year. As previously mentioned, claims present the biggest problem because of distinct understanding and requirements of claims around the world. The Unity of Invention law is 16

18 different throughout the world and therefore the type and number of claims that can be utilized around the world differs greatly. The best approach is to try to get the first ten set of claims as a global set of claims. Typically utilize European style. Europeans like functional language, as do the Japanese. While they have no objection to using means it is recommended that you write the claims with functional language with a structural element and do not include the means clause since it is often misunderstood in foreign countries. South American countries specifically do not like the use of the term means. In your first set of 10 claims you should have one independent claim for each type of claim such as method, apparatus, use, etc. You should limit your dependent claims to only novel features. Use multiple dependencies wherever possible in such first set of claims. Thereafter, you can add as many additional claims as you want for U.S. However, at least you know the first ten claims are those that can be used for foreign filing at such point as you enter PCT or national foreign countries. When you actually do foreign filing directly or with PCT, you can put all the other US claims beyond the ten in the specification as examples of the invention. V. CONCLUSION In addition to all of the above material, as you proceed with international applications, attention should be given to some additional points which you may want to investigate individually, as the need arises. These include the following: A. By pass route vs. perfection of PCT application At the conclusion of the PCT phase, it is possible to either proceed by completing the PCT application in the U.S. or by using a continuation application. The continuation route is called the by pass route. As the PCT application is considered a pending application in the U.S., it can be used as the basis for a continuation application under 35 USC 120. There are benefits for using the by pass route vs. the perfection route. These are discussed in the MPP sections B. When to use Chapter II of the PCT As previously discussed, one can stay in Chapter I for the full thirty month of the PCT time limit. Thereafter, one would go into the national/regional phases. However, Chapter II is available during the PCT phase. Chapter II provides an opportunity for modifying the claims or submitting arguments and having a dialogue with the examiner during which time he will provide examination of any modified claim. Care and consideration should be given when to use Chapter II and when to stay into Chapter I throughout the thirty month period. Different strategies are available and consideration should be given whether the claim should be amended on an international scale or rather amend them individually in each country. 17

19 C. Different Types of Patents Foreign countries provide different types of patents aside from the normal functional patents that we obtain in the United States. For example, many foreign countries have Utility Models which are patents available without examination and for a limited number of years. These are available in Japan, Germany and many other national countries. Consideration should be given whether to utilize these Utility Models in certain cases. Likewise, some countries have Patents of Confirmation, Patents of Importation, and other types of patents that are available for specific unique consideration and circumstances. GENERAL D. For Further Information and Consideration The Following References are Recommended USEFUL REFERENCE TEXTS MANUAL FOR THE HANDLING OF APPLICATIONS FOR PATENTS, DESIGNS AND TRADEMARKS THROUGHOUT THE WORLD In English; loose-leaf with periodic supplements; multi-volume country-by-country description of intellectual property law and practice; includes text and members of: EPC (and Rules); PCT (and Regulations); IPC; Paris Convention; and other conventions; prepared and edited by Octrooibureau Los en Stigter, Amsterdam; available from Manual Industrial Property BV; P.O. Box 15140; 3501 BC Utrecht, The Netherlands WORLD PATENT LAW AND PRACTICE In English; loose-leaf with periodic supplements; multi-volume (V. 2; 2A; 2A, part 2) comparative description of patent law and practice by subject matter; indexed; includes treaties, rules and forms; available from Matthew Bender WORLD PATENT LAW AND PRACTICE: PATENT STATUTES, REGULATIONS AND TREATIES By John P. Sinnott, Esq. In English; loose-leaf with periodic supplements; multi-volume (V. 2 B-O) patent statutes, regulations and rules for individual countries and decisions of the Legal and Technical Boards of Appeal of the EPO; available from Matthew Bender A PRACTICAL GUIDE TO DOCUMENT AUTHENTICATION By John P. Sinnott, Esq. In English; loose-leaf with periodic supplements; costs, practice and procedure for notarization and legalization of legal documents by federal, state governments and by country; indexed; addresses for authentication of notary public and consular offices and jurisdiction for legalization; Hague Convention; available from Oceana Publications 18

20 MANUAL ON INDUSTRIAL PROPERTY - ALL OVER THE WORLD In English; loose-leaf with periodic supplements; 2-volume country-by-country description of intellectual property law and practice; includes text of major conventions and treaties; prepared and edited by Katzarov S.A., 19, rue des Epinettes, Geneva, Switzerland PCT PCT APPLICANT S GUIDE In English; loose-leaf with periodic supplement; indexed; multi-volume guide of law, practice, procedure and forms for filing and proceedings under Chapters I and II of PCT; published by and available from World Intellectual Property Organization (WIPO); 34, chemin des Colombettes 1211; Geneva 20, Switzerland; tel: ; fax: (for all PCT matters); tel: (for all other matters) PATENT COOPERATION TREATY In English; booklet; periodically revised; official text of treaty and regulations prepared by and available from WIPO. EPC EUROPEAN PATENT CONVENTION AND RULES In English; periodic supplements; unofficial index; published and edited by and available; corresponds to Title 35 USC and 37 CFR; available from EPO (Munich) GUIDELINES FOR EXAMINATION IN THE EPO In English; loose-leaf with periodic supplements; indexed; corresponds to USPTO MPEP; published and edited by and available from the European Patent Office. Erhardtstr. 27, W-8000 Munich 2; tel: ; fax SEARCH AND DOCUMENTATION IN THE EPO Booklet, soft cover in English; periodically revised; activities and functions of the EPO (the branch at The Hague) describing the technical information services, including services available to the public; published and edited by and available from the EPO Branch at The Hague; Patentlaan 2, Rijswijk; 2280 HV Rijswijk ZH, Netherlands; Tel: ; Fax: HOW TO GET A EUROPEAN PATENT Booklet, soft cover in English; periodically revised; information brochure; outline of the procedure for the grant of European patents; published and edited by and available from the EPO (Munich) 19

21 NATIONAL LAW RELATING TO THE EPC Booklet, soft cover, in English, periodically revised; synopsis of the regulations and requirements in the contracting states concerning European patent applications and patents; published and edited by and available from the EPO (Munich) EUROPEAN PATENTS HANDBOOK In English; loose-leaf with periodic supplements; multi-volume (5 volumes); practice and procedure in the European Patent Office under the European Patent Convention; decisions of the EPO Legal, Technical and Enlarged Boards of Appeal in the EPO; national decisions regarding EPO; text of EPO and PCT and regulations therefore; prepared and edited by Chartered Institute of Patent Agents (UK); available from Matthew Bender JAPAN JAPANESE LAWS RELATING TO INDUSTRIAL PROPERTY In English; booklet, soft cover; published by AIPPI-Japan, 7F., Toranomon Denki Bldg., 8-1, Toranomon 2-chome, Minato-Ku, Tokyo 105 Japan EXAMINATION GUIDELINES FOR PA TENT AND UTILITY MODEL IN JAPAN In English; one loose-leaf volume with periodic supplements; published by AIPPI-Japan, 1994; edited by Japanese Patent Office; corresponds to USPTO MPEP; available from NGB Corporation, Information Dept. (B), ARK MORI Bldg. 28F Akasaka 1-chome, Minato- Ku, Tokyo 107 Japan 20

22 Fig. 1 21

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