The following article appears in the journal JOM, 42 (1) (1990), p. 46. JOM is a publication of The Minerals, Metals & Materials Society

Avoiding the Inadvertent Forfeiture of One's Rights to Foreign Patents

Meaningful rights to obtain foreign patents are frequently, inadvertently, lost because of the inventor's conduct or as a result of an inventor's employer's failure to understand that certain acts, even if performed in the U.S., can result in the loss of foreign patent rights. It is hoped that this article will provide some awareness of the nature of activities which can result in such a loss. As standards vary from country to country and the type of conduct which can cause loss of rights may depend upon the nature of the invention and the specific nature of the conduct, those desiring to preserve foreign rights should seek advice before making public disclosure of an invention, employing it commercially or placing it on sale.

Insofar as U.S. patents are concerned, a period of grace is provided. One must file an application in the U.S. within one year after publication of the invention anywhere in the world or the placing on sale or commercial use of the invention in the U.S. If one fails to do so, the right to file a patent application in the U.S. may be irrevocably lost. It should be noted that the one-year period of grace in the U.S. is initiated by publication anywhere in the world, but the placing on sale or commercial use is relevant only if it is within the U.S.

In many foreign countries, including most major foreign countries, the concept of "strict novelty" or "absolute novelty" applies, with few or no exceptions. This means, in general, that a publication or other public disclosure in the U.S. or elsewhere may result in forfeiture of the right to seek a patent in all such countries.

Treaty arrangements between the U.S. and other countries may help preserve foreign rights. In general, with respect to most foreign countries, there is a treaty which states that if one files in a foreign country within one year after filing a patent application in the U.S., the foreign country will treat the effective filing date in that country as relating back to the date of filing in the U.S. For example, if a U.S. patent application is filed on an invention on July 1, 1989, and a corresponding application is filed in West Germany on January 10, 1990, claiming the benefit of priority under the treaty, the West German patent application will be deemed to have been filed on July 1,1989, even though publication of the invention anywhere in the world before filing in West Germany would normally bar filing an application in West Germany. If one were to make a publication of the invention on July 2,1989, this would not bar filing in West Germany as the German application would have the effective filing date of July 1, 1989. By contrast, if one were to make a publication of the invention on June 30, 1989, filing in West Germany under these facts would be barred as such publication would antedate the July 1,1989 effective filing date.

Even though an inventor or assignee of an invention may be commercially active in only the U.S., this does not mean that foreign patent rights have no value. If the invention has merit, there may be opportunities to license others to practice the invention in foreign countries and, as a result, the foreign rights could be of substantial value.

Obviously, the safest course to follow is to make no public disclosure, sale, or commercial use of the invention anywhere until after the filing of a U.S. patent application, thereby providing an additional year within which the foreign applications may be filed under the treaty.

While it is easy to articulate the standards for the ideal situation wherein no conduct which might potentially cause a loss of foreign patent rights is engaged, commercial or professional needs often compel a departure from the ideal standards. In some instances, even though a U.S. patent application is not pending, other precautions, while not necessarily as reliable as the filing of such an application, may be employed.

If a disclosure of the invention must be made to a third party, such disclosure may be made in accordance with a written confidentiality agreement which would not involve the disclosure being a public disclosure. A risk inherent in such an approach is that the recipient may, in breach of the agreement, engage in conduct which will cause the loss of foreign patent rights as by publication, or otherwise making it known publicly.

In instances where a publication is required or highly desirable, it may be possible to avoid making a publication, which results in loss of foreign rights. For example, one may make a disclosure of the beneficial results of using the invention without actually disclosing details of the invention. If a publication which merely states the beneficial results d using the invention, but does not disclose the invention, it would not cause the loss of foreign patent rights. It is important to have advance counseling regarding whether a proposed publication will jeopardize foreign patent rights. For example, a research physician reporting, in an article in a medical journal, successful results in the treatment of a particular disease, if the invention per se is not disclosed, would not normally be deemed to have published the invention or placed it on sale or in commercial use. On the other hand, a pharmaceutical company's advertisement in the same journal may be deemed to be evidence that the product may have been in commercial use or have been sold or otherwise publicly disclosed.

In summary, it is hoped that by being alert to the types of activities which may cause inadvertent loss of foreign rights, one will not engage in such activities in situations where foreign patent rights may be of value without first seeking counseling from one knowledgeable in intellectual property law.