Foreign Patent Law. Why file foreign? Why NOT file foreign? Richard J. Melker

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1 Foreign Patent Law Richard J. Melker Why file foreign? Medical device companies seek worldwide protection (US ~50% of market) Patents are only enforceable in the issued country Must have patent protection in each country Why NOT file foreign? Extremely costly therefore only file foreign if: You believe you have a high probability of commercial success in foreign countries Third party licenses technology and pays costs 1

2 Timing of foreign filing File national application in US Cannot file foreign until you receive foreign-filing license from USPTO or until 6 months after US filing date National security secrecy order must be declassified up to 12 years Must file in non-convention countries before publish or sell invention The Paris Convention International Convention for the Protection of Industrial Property 1883 International treaty Governs reciprocal patent filing rights Allows filing of application in other member jurisdictions within one year of earliest filing date The Paris Convention Entitled to priority of US filing date for purposes of overcoming prior art Must file within one year or lose right to priority becomes non-convention application Absolute novelty cannot file if any public disclosure (sell, publish, patent) before US patent filed 2

3 Other treaties Priority treaties EPC European Patent Convention EEC (Common Market) considered a single country under Paris Convention and PCT One filing in EPO (European Patent Office) EPO filing date same as US (one year rule) If patent allowed, must register in individual countries Other treaties EPO European Patent Office Munich, Germany Rigorous examination Opposition publication at 18 months ( same in US if intend to file foreign) Patent life 20 years Patent valid in all EPC countries provided you register and file a translation Other treaties PCT Patent Cooperation Treaty Most industrialize countries Can make one international filing within one year of US filing International (Chapter I) phase must elect countries for eventual National filing Also referred to as the search phase 3

4 Other treaties PCT Patent Cooperation Treaty Within 19 months of US filing must elect Chapter II or enter National phase by 20 months (changing as I speak) Chapter II up to 30 months from US application to make separate filings Also referred to as the examination phase If filed a PPA in US, can file PCT by 12 months and elect USPTO or EPO Other treaties PCT Patent Cooperation Treaty After filing PCT receive preliminary search report cannot prosecute After entering Chapter II examination and prosecution allowability PCT administered by WIPO World Intellectual Property Organization Non-convention countries Rarely file Must have foreign-filing license or 6 months has elapsed Can file at any time Absolute novelty No priority to US filing date 4

5 Foreign patent law Still significant differences from US Reduced by GATT General Agreement on Tariffs and Trade contracting parties WTO World Trade Organization Established 1995 Uruguay Round (Multilateral Trade Negotiations) 132 member countries 103 developing Foreign patent law WTO agreement Includes TRIPs agreement Agreement on Trade-related Aspects of Intellectual Property Rights Extends IP rights to all persons of nations that are members of WTO Foreign patent law - differences Opposition proceedings Patent applied for by any assignee Absolute novelty First to file Don t always conduct novelty search Annual maintenance fees 5

6 How to file foreign national application USPTO foreign filing license or 6 months PCT elect countries, select searching authority (Chapter I) months How to file foreign PCT elect countries, select searching authority publication elect Chapter II or enter national phase enter national phase months 6