New England Biz Law Update
In deciding whether to obtain patent protection outside the
U.S., there are a number of factors a company should consider.
As a preliminary matter, it is important to understand that
most foreign-filed applications will eventually be published. As such, a
company will forfeit trade secret protection for the subject matter disclosed
in a foreign-filed application. If, however, the company files only in the
U.S., it currently has the option of maintaining the secrecy of that subject
matter until the application issues as a patent, assuming proper steps are
taken.
Thus, a company must decide if publication of the invention
before any patent is granted is an acceptable consequence of foreign filing the
application.
The next step is to determine in which countries would
patent protection likely provide value. In what countries will products
embodying the invention likely be manufactured or sold? In what countries will
other companies likely manufacture or sell competing products? In what
countries will enforcement of patent rights be cost effective and practical?
Although each company’s situation will vary, foreign patent
protection is typically sought in Australia, Canada, China, Israel, Japan,
Korea, and various countries of Europe. A related issue to consider is cost,
which can be significant depending on factors such as the selected countries
and required translation.
A cost benefit analysis should be performed to determine
what and where patent filings are justified. The cost estimates provided below
assume the filing is based on an earlier filed U.S. application.
Once it is determined that foreign patent protection is
desired, a number of filing options are available. One option is to timely file
a patent application directly in the patent office of a selected country.
A company should consider filing applications directly in
national patent offices if the company: (1) is certain in which countries
patent protection is desired; (2) does not desire to reserve the right to seek
protection in other countries at a later date; and (3) is prepared to pay the
associated filing and translation costs.
Typical costs for directly filing an application in a
national patent office range from about $2,000 to $12,000 per country,
including attorney fees and translation costs. Canada tends to be at the lower
end of the range, while Japan tends to be at the higher end. Note that these
estimates do not include the costs for obtaining
or maintaining a patent.
For example, in Japan maintenance fees range from several
hundred dollars in the first year of the patent term to several thousand
dollars in the last year.
European Patent Office
Another foreign filing option is to timely file a patent
application directly in the European Patent Office (EPO). Filing in the EPO
allows the company to file one application designating any of the member
countries of the European Patent Convention instead of filing a separate
application in each of the desired national patent offices.
The EPO conducts an examination of the application, which
can take several years, and “grants” the patent. The company must then
“perfect” that grant in the various individual countries in which protection is
desired. Perfecting the patent grant usually entails paying various
administrative fees and translating the patent into the appropriate language.
Some countries only require translation of the claims, while
others require translation of the entire patent. Translation costs average
about $100 per page of the U.S. application.
From a strategy standpoint, if the company is only
interested in European countries and intends to file in three or more those
countries, then the company should generally file an EPO application
designating those countries, rather than filing individual national
applications.
This will allow the company to avoid multiple examination
fees, and to defer payment of translation costs until the patent is granted.
The cost of obtaining a patent grant in the EPO and perfecting it in three
countries typically runs about $10,000-$20,000, depending upon the countries
chosen, the application length, and the duration and extent of the prosecution.
Note that maintaining the patent will incur additional costs.
Patent Cooperation
Treaty
A third foreign filing option is an application under the
Patent Cooperation Treaty (PCT). The primary advantages associated with filing
a PCT application are to delay having to make a decision on where to file a
foreign patent application, and to defer payment of regional or national filing
and translation fees.
Generally, a company should consider filing a PCT
application when any one or more of the following applies: (1) the company
wants to preserve its patent rights in various PCT countries and regions, while
assessing commercial potential in the various foreign markets, and while
deferring costs associated with regional or national patent filings; (2) the
company is uncertain of the countries in which patent protection is desired;
(3) the company wants to assess the results of the U.S. prosecution before
filing in other countries, and/or (4) wants to assess the commercial viability
of the invention before filing in several countries.
The PCT process is broken into an “international” phase and
a “national” phase. The international phase includes two sub-phases, referred
to as “Chapter I” and “Chapter II,” the procedures under which have recently
changed for PCT applications filed as of Jan. 1, 2004.
Chapter I is required, and includes a preliminary international
search for prior art. The search is carried out by an “international search
authority” (ISA), which is usually the United States Patent & Trademark
Office (USPTO) or the EPO. The search is typically carried out within
three-to-six months of filing the PCT application, and a resulting search
report is provided to the company.
One strategy is to simultaneously file both a U.S.
application and a corresponding PCT application, designating the USPTO as the
ISA. Often times, the examiner that is assigned to carry out the PCT search is
also assigned to examine the U.S. application. Thus, if the PCT search report
is favorable, then the examiner may be inclined to grant an early allowance of
the corresponding U.S. case.
Note, however, that this strategy is by no means a sure bet,
and a less than favorable PCT search report can just as likely result in an
early rejection of all claims. In any event, such a strategy may jump start an
early prosecution of the corresponding U.S. application, which would otherwise
not be examined for two to three years.
A written opinion is established by the ISA based on the
search report. The opinion is a preliminary non-binding opinion as to the
patentability of the claimed invention. If no Chapter II “demand” is filed, the
written opinion is converted into an “international preliminary report on
patentability” (IPRP-Ch.1), which has the same content as the ISA’s written
opinion. Amendments to the claims are allowed after the search report is
established. However, with no demand filed, the company can only informally
comment on the opinion.
If, on the other hand, a demand is filed, then Chapter II
commences, where the “international patent examination authority” (IPEA)
generally uses the ISA’s written opinion as its initial opinion. Unlike Chapter
I, the company can amend the application and formally argue against the written
opinion.
The IPEA may respond with further written opinions, at its
discretion. The IPEA then issues a final “international preliminary report on
patentability” (IPRP-Ch.2). This report is also a non-binding opinion as to the
patentability of the claimed invention.
Thus, filing an optional chapter II demand allows the
company to formally argue the merits of the PCT application before the IPEA.
This may be desirable in order to obtain a favorable IPRP, which may facilitate
a smooth prosecution at the various national patent offices (assuming those
offices will show deference to the IPRP).
One important caveat here is that a few remaining countries
still require a demand to be filed in order for the company to defer entry into
the national phase. With no timely demand filed, the national phase for these
few countries must be entered about 10 months sooner than other countries.
Otherwise, the PCT application will go abandoned.
In the national phase, which is typically 20 or 30 months
from the priority date or most countries, the company must timely file the
application in each region or country where protection is desired. Each
national patent office may use the PCT search results and/or conduct further
searching. A binding examination is then conducted, which may or may not
provide results similar to the non-binding IPRP, depending on the various
patentability requirements of that country and additional prior art that is
found.
Including legal fees, the cost of filing a PCT application
usually ranges from about $3,000 to $5,000, depending upon which chosen ISA,
the number of countries designated, and the number of pages in the application.
In addition, the cost for filing a demand runs about $1,000 to $2,500,
depending upon the chosen IPEA.
A company has various options for pursuing patent protection
outside the U.S. Such options should be discussed with patent counsel to ensure
strategic and timely filings are made.
Neil F. Maloney is a
partner at Maine & Asmus, a N.H. law firm specializing in intellectual
property law. Neil focuses his practice on patent law and strategic patent
portfolio development, and has represented clients ranging from start-ups to
Fortune 500. Prior to attending law school, he worked as an electrical engineer
for over eight years, and has broad knowledge in the hardware and software
arts. He can be reached at [email protected] or by calling (603)
886-6100.
