International Patent Basics
INTERNATIONAL PATENT FILING
The filing of a first application in a first country (e.g., the United States) may provide a filing date for a later patent in other countries. There are many considerations.
ABSOLUTE NOVELTY: Most countries except the United States and Canada require that a patent application be filed before the invention is disclosed to the public. Absolute novelty requires that the application be filed before a publication is made which discloses the invention. If the application is to be filed outside the United States, a first patent application must be filed before disclosure or publication.
CONVENTIONS AND TREATIES: Many countries including the United States belong to the Paris Convention and the Patent Corporation Treaty. These agreements allow an individual to file initially in one country and then have a period of time to file in other countries. By filing in the first country, an initial filing date is provided which is effective for all subsequent filings, provided certain rules are followed.
WHERE TO FILE FIRST?: U. S. Law 35 U.S.C. section 184 states that no patent application may be first filed in a foreign country if the invention was made in the United States. The law allows such foreign filings six months after the filing in the United States or after a foreign filing license is obtained. Generally, if an invention is made in United States, a U.S. regular patent application or provisional patent application must be filed prior to filing in foreign countries.
PARIS CONVENTION: The Paris convention provides the right of priority with regard to applications filed in other countries after an application is initially filed in a home country (such as the United States). Provided a patent applicant files in the other countries within the one-year of the initial patent application filing date, the patent applicant receives the initial patent application filing date as the effective filing date in the various other countries. For example, by filing a patent application in Germany less than one year after the initial patent application is filed in the United States, the effective filing date in Germany will be the United States patent application filing date. The Paris convention requires that the initial application be the first application made on the invention (it cannot be a continuation in part application to). The Paris convention also requires that a certified copy of the initial application be filed in each country in which a claim of priority is made.
PATENT CORPORATION TREATY (PCT): The patent cooperation treaty provides for an international or PCT application. Such an international application must be filed within one-year of filing the initial application (for example within one year of filing a United States application). At the time the international application is filed, it is necessary to designate one or more countries. After 30 months (for most countries) has expired from the initial application, the applicant can enter the national phase in one or all of the countries initially designated. Besides providing the mechanism for entering other countries with an effective filing date which goes back to the initial patent application, an international application also provides an international search report. The PCT procedure provides a good mechanism for deferring the filings in other countries until a first (e.g., U.S.) examination report has been issued (first office action on the merits) and after an international search report has issued. If the search reports are quite negative, the application can be abandoned without incurring the costs associated with the various other countries.
EUROPEAN PATENT OFFICE: The European patent office provides a procedure wherein one European patent application may be filed which designates one or several European countries. The examination of the application takes place at the European patent office. After completing the European examination process successfully, and after the opposition time has passed with no successful opposition to the European patent application, the procedure moves to the designated countries. The designated countries issue the actual patents.
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