A
patent application filed in any foreign country
must comply with the local patent law of that
country. Most foreign countries
require a patent application to have a filing
date before the sale or publication of the
invention anywhere in the world. In
the United States, while it is recommended
to file a patent application before the first
sale, offer for sale, or other public disclosure
of the invention, the application can be filed
within one year after any of these events. Doing so, however, may have a detrimental
effect upon foreign filing rights.
In
this respect, the patent laws of virtually
all foreign countries are more strict than
the laws of the United States. These
inconsistencies are alleviated to a great
degree by an International Treaty
governing foreign patent filing procedures. Nearly
every foreign country of major manufacturing
capability subscribes to this Treaty. Briefly
stated, under the Treaty a foreign patent
application filed within one year of the U.S.
application filing date will be treated as
if it had been filed on the same day as the
related U.S. application. Thus, assuming
a U.S. patent application is filed with the
USPTO before any sale or public disclosure
of an invention, the foreign filing rights
are intact, provided corresponding applications
are filed no later than one year from the
earliest U.S. filing date.
Most
foreign countries can be consolidated into
a single patent filing under the terms of
the Patent Cooperation Treaty (PCT),
thereby reducing total filing costs and deferring
certain expenditures, such as translations,
for several months. A PCT application
must also be filed within one year of the
first-filed related U.S. application, and
must designate all countries in which patent
protection is desired.
The
filing of a PCT application is primarily a
cost deferral strategy to avoid incurring
the major expenditures for foreign filings
until more information can be obtained regarding
possible patentability of the related U.S.
application. The PCT Division will render
a "search report" at approximately
15 months from the filing date of the first-filed
U.S. application (the priority date). This
report provides important information regarding
the likely scope of patentability in the United
States and other countries. The application
is then published and available worldwide
at the 18 month mark from the priority date. The
deadline for filing foreign national patents
is 30 months from the priority date, but it is
not required that an application be filed
in every country originally designated in
the PCT application.
One
of the designation options in a PCT application
is the European Patent Office,
under which sub-designations can be made to
pursue coverage in European nations. When
filing in three or more member countries,
it is cost-effective to file in the EPO.
Foreign
applications filed in Non-PCT countries
must be filed within one year from the earliest
U.S. filing date. If applications are not
filed by this date, it may still be possible
to file foreign patent applications; however,
backdating the filing date of the foreign
application is not possible since the benefits
of the International Treaty would not be available.
For
general information on Patents,
click
here.
For information on U.S. Patents,
click
here.
