The following article appears in the journal JOM, 44 (4) (1992), p. 62. JOM is a publication of The Minerals, Metals & Materials Society

Patents Outside of the U.S.: A Cost-Effective Approach

Obtaining patent coverage outside of the United States is an expensive and time-consuming process. It is, however, necessary if a U.S. company wants to protect inventions overseas. The process and the expense can be especially daunting to smaller companies that, on one hand, want worldwide patent protection for a new technology but, on the other hand, do not have experience selling in nondomestic markets or do not yet know about the commercial potential of the new technology. Adding to this dilemma is the fact that, in most situations, a decision concerning whether or not to file for a non-U.S. patent should generally be made within 12 months of filing of a U.S. patent. Usually at that time, not much is known about either the overseas marketing potential of the new technology or in which countries applications should be filed.

One solution is to file a Patent Cooperation Treaty (PCT) application in the U.S. Patent and Trademark Office. The PCT is an international agreement designed to unify and simplify the procedures to be followed by nationals or residents of one member country when filing patent applications in other member countries. The United States has been a member country since 1978. Other notable member countries include Japan, Australia, Canada, the United Kingdom, France, Spain, Sweden, Germany, and Italy.

A PCT application filed in the Patent and Trademark Office is deemed as a filing of the same application in each PCT member country designated by the applicant. The main benefit of filing a PCT application is that actual patent filings in the designated countries can be delayed until such time as the PCT process is completed. This means the ultimate decision as to whether or not and in what countries a patent application should be filed can be deferred. The deferral can be up to 30 months from the time a PCT application is filed. This extra time can prove invaluable in assessing whether or not patent protection should be pursued.

Before the PCT was available, a company usually had to make a decision as to where patent application filings would be made within 12 months of filing a U.S. patent application. To be safe, many companies would file patent applications in many countries, incurring significant expenses in the form of translation costs, local patent attorney or agent fees, and government filing fees. If the technology covered by the patent was not marketed, the substantial costs and effort would be wasted. On the other hand, if a company did not file for patents and the product was successful, patent protection could be lost in those countries where a patent application was not filed.

In either situation, it would be beneficial to defer the date on which national applications would have to be filed. The PCT can provide this deferral and enable commercial development of the new technology without regard to the loss of patent rights.

It should be noted that the PCT is essentially a procedural system for the centralized filing and patent searching of a single international application. This means no substantive patent rights are obtained by filing a PCT application. The substantive patent rights are obtained only by filing applications in the countries designated by the PCT applicant.

There are several other advantages to the PCT. One is the ability to preserve the benefit of the U.S. patent application's filing date in other countries. In most cases, a U.S. inventor first files a U.S. patent application. Under the Paris Convention, patent applications in other countries must be filed within 12 months of the filing date of the U.S. patent application if the benefits of the filing date are to be obtained. The filing of a single PCT application within 12 months of the U.S. filing date preserves the benefit of the U.S. filing date in the countries designated in the PCT application.

Another advantage of the PCT is that a European Patent Office (EPO) search and examination can be obtained. The original U.S. application will be examined by the U.S. Patent and Trademark Office. Although the office's examiners sometimes consider patents and publications from other countries, practicality requires that the examination be based primarily on U.S. patents. Under the PCT a U.S. applicant can request that the PCT application be searched by the EPO. Thus, the applicant can get both a U.S. patent examination as well as an EPO search and examination, thereby reducing the likelihood of surprises from prior art that might surface during patent prosecution or in litigation. Significantly, a large portion of the search fees paid to the EPO in the PCT case are refunded if and when the applicant files a regional European application with the EPO.

Yet another advantage of obtaining an EPO search and examination is that the results can be used when the regional patent application is filed in the EPO after the PCT process has ended. This can save substantial EPO prosecution fees which would have to be paid to patent attorneys.

One final advantage of the PCT process for an inventor in the United States is that all correspondence is in English and that prosecution can be controlled by a U.S. patent attorney. This is advantageous in that a U.S. patent attorney, who most likely prepared and filed the U.S. application, is probably more knowledgeable about the invention than are associate patent attorneys in other countries. Thus, he or she can control prosecution of the PCT application rather than turning prosecution over to someone elsewhere.