Pursuing International and Foreign Patent Rights for Inventions and Designs

International patent protection for utility inventions and designs is available for US businesses through international treaty systems. Multinational companies regularly take advantage of these systems. Small businesses and medium-sized enterprises may not be aware of this opportunity, but it is equally available to them. This article explains the treaties, mechanisms, and strategies involved in pursuing international patent protection.

Introduction to International Patent Protection

There is no such thing as an international patent. So, patent rights can only be obtained from national patent offices in foreign countries (i.e., foreign patent rights). However, there are mechanisms that allow for a single patent application to filed with the World Intellectual Property Organization (WIPO) to facilitate an organized and uniform process of pursuing patent rights in foreign countries. The Patent Cooperation Treaty (PCT), administered by WIPO, allows a patent applicant to submit a single PCT (international) patent application that undergoes an initial "international phase" (Chapter I) in which the application is examined for formal requirements and patentability before it is submitted to foreign countries selected by the applicant for patenting during the "national phase".

Understanding the Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT), established in 1970, offers a unified procedure for filing patent applications in foreign countries. A single international patent application under the PCT allows an applicant to seek protection in multiple PCT contracting states. The PCT simplifies the initial filing process and defers the need to file separate national or regional patent applications for thirty months from the priority date of the invention. The priority date for a PCT application is the filing date of the first patent application filed for the same invention, provided that the PCT application is filed within 12 months of this initial filing date. This initial application can be a US provisional or non-provisional application, or a foreign application in any contracting state, as long as it adheres to the international treaty requirements under the Paris Convention.

The priority date is crucial because it establishes the timeline for national phase entry deadlines. Typically, an applicant has 30 or 31 months from the priority date to enter the national phase in each treaty member country where protection is sought. This means filing national phase applications in individual patent offices of each of these member country. For instance, if a US provisional application is filed first, it sets the priority date for subsequent PCT applications. This priority date remains valid in the US and other countries within the PCT system. The PCT application is then filed within twelve months. Subsequently, the applicant chooses the member countries in which it needs to enter the national phase. The unified international treaty approach ensures that the PCT application is recognized in the desired jurisdictions.

Filing a PCT Application

Filing a PCT application involves several key steps:

1. Filing an international application with a receiving office, which can also serve as an International Searching Authority (ISA). The applicant must choose the ISA at the time of filing. The United States Patent and Trademark Office (USPTO) can serve as the receiving office and ISA for an original PCT application filing or for a PCT Application claiming priority to a US patent application.

2. The application undergoes an international search by the chosen ISA.

3. The ISA provides an international search report and a written opinion on the patentability of the invention. Applicant reviews the search results and the written opinion, which provides patentability analysis. This analysis is typically adopted by the patent office of contracting states in which the applicant pursues patent rights. The Applicant can file claim amendments in response to the search report and written opinion to place the claims in better condition for examination in national patent offices.

4. Applicants may request an international preliminary examination by an International Preliminary Examining Authority (IPEA). This provides further examination by the International Bureau of the World Intellectual Property Organization (WIPO) in advance of national phase and allows for amendments to the specification, drawings, and claims. One of the key benefits of the IPEA is providing a second, more detailed opinion on the potential patentability of the invention. This includes an assessment of novelty, inventive step, and industrial applicability. The IPEA issues a written report, which can be valuable for applicants in making informed decisions about how to amend the application when entering the national phase. The IPEA process must be requested within the prescribed time limit of the later of 22 months from the effective filing date or three months after the international search report. This additional step helps applicants address any issues raised in the initial search, potentially strengthening their application before it enters the national phase.

The Role of WIPO and the International Bureau

WIPO administers the PCT and oversees the international phase of the international patent application. The International Bureau of WIPO ensures the smooth functioning of the international patent system, including the publication of international applications and managing communications between applicants and national or regional patent offices.

National Filings

After the international phase, the applicant must enter the national phase in the designated countries where patent protection is sought. This involves filing patent applications in each foreign country or region. The filing date of the international application is preserved as the priority date for all national applications.

Patent Cooperation Treaty (PCT) System Benefits

The PCT system offers several advantages for applicants seeking international patent protection:

1. Cost-effective: By deferring national filing fees and translation costs, the PCT provides a cost-effective approach for filing patent applications in multiple jurisdictions.

2. Simplified Process: The unified procedure under the PCT reduces the complexity and administrative burden of filing separate patent applications in different countries.

3. Comprehensive Search and Examination: The international search report and written opinion provide valuable insights into the patentability of the invention, helping applicants make informed decisions about entering the national phase.

Regional Patent Offices and Their Roles

Several regional patent offices facilitate international patent protection within specific regions. These include:

1. European Patent Office (EPO): Provides a centralized procedure for obtaining patent protection in Europe.

2. African Intellectual Property Organization (OAPI): Manages patent protection in its member countries in Africa.

These regional patent offices streamline the patent application process, offering a unified approach within their respective regions.

Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is a program designed to expedite the examination process for patents in foreign jurisdictions based on the favorable examination results of a US patent application. By utilizing the PPH, applicants can benefit from an accelerated examination process in participating national and regional patent offices. This streamlined procedure allows for faster filing and approval, leveraging the international patent system to secure foreign patent rights efficiently.

To take advantage of the PPH, an applicant must meet specific criteria, including the filing of a request within the prescribed time limit and adherence to the respective regulations of the participating patent office. The PPH leverages the existing search and examination results from the US patent application, reducing redundancy and speeding up the overall process.

Benefits of the PPH include reduced examination time, lower costs due to decreased redundancy in search and examination, and increased chances of obtaining patents in multiple jurisdictions. By using the PPH, applicants can navigate the international patent system more effectively, ensuring timely and efficient filing and prosecution of patents globally.

International Registration of Industrial Designs

The Hague System, administered by WIPO, facilitates the international registration of industrial designs. By filing a single international application, applicants can seek protection for their design patents in multiple jurisdictions, similar to the PCT system for utility patents. This application can cover multiple designs and designate several countries where protection is sought. The main advantage of the Hague System is its ability to consolidate the filing process, reducing the need to submit separate applications in each country. This leads to significant cost savings on translation and administrative fees.

Hague System is Efficient and Cost Effective

The Hague System operates under a set of unified regulations, which standardize the filing process across all member countries. This harmonization ensures that the same basic procedural requirements are followed, regardless of the country in which protection is sought. However, it is important to note that each designated country will examine the international design application according to its own national law. This means that while the filing process is simplified, the substantive examination and the criteria for protection will still vary somewhat from one country to another. The Hague System provides a cost-effective and efficient method for securing international design protection.

Conclusion

Pursuing international protection for utility inventions and designs can be accomplished through the PCT and Hague systems. By leveraging international treaties, applicants can effectively seek protection for their innovations on a global scale. The process of obtaining international patent protection is intricate, yet the benefits of securing patent rights across multiple jurisdictions make it a worthwhile for businesses that seek to take advantage of foreign markets.

Applicants should strategically consider where to file patent applications, keeping in mind the associated fees and deadlines. Engaging with patent professionals is necessary for successfully securing international patent rights and protecting intellectual property on a global scale.