A U.S. Patent may be enforced against parties that make, use, offer to sell, or sell a patented invention in the United States, or imports such a patented invention into the U.S. Individuals seeking patent rights enforceable for actions outside of the U.S. may do so by obtaining patents from government offices in countries or jurisdictions where patent rights are desired. Procedures set forth by the Patent Cooperation Treaty (PCT) may enable a U.S. patent applicant to obtain such a patent in countries outside of the U.S.
Within one year of the date of filing a patent application in the United States, an applicant may file a corresponding International Patent Application (IPA) through the PCT using a process established by the World Intellectual Property Organization (WIPO). Following the filing of such an IPA, the applicant must take additional action to complete “National Stage” filings in patent offices of specific countries where patent rights are desired. These National Stage filings typically must occur within 30 months of the earliest claim of priority(e.g., filing date of a corresponding patent application filed in the United States from which priority is claimed).
When filing an IPA, an applicant typically selects an International Searching Authority (ISA) (e.g., the USPTO or foreign patent office) that will conduct a search for prior art based on claims in the IPA to generate an International Search Report (ISR). The ISA may issue a Written Opinion (WO) commenting on the patentability of claims in the IPA based on documents identified in the ISR. At various stages in the life of the IPA prior to completion of any National Stage filings, the applicant may have opportunities to amend claims and provide arguments to convince the ISA to issue a favorable opinion on the patentability claims in the IPA.
In filing an application at the National Stage, an applicant may have an opportunity to voluntarily amend claims prior to examination. When prosecution of the National Stage commences in a foreign patent office, the foreign patent office may examine the National Stage application for formalities and patentability based on the claims, documents in the ISA located by the ISA, and additional information obtained by the foreign patent office in an additional search. Here, the examiner may issue office action and/or examination report stating the grounds of rejection of claims and identifying informalities to be addressed before a patent may grant. The applicant may then have the opportunity to amend claims and/or submit arguments to address identified informalities and/or rejection of claims.
The cost for the filing of a foreign patent application claiming priority to a U.S. patent application via PCT procedures includes professional fees and official fees for completing an initial filing of an IPA within one year of the filing of the U.S. patent application, and for completing a National Stage filing in a foreign patent office. A National Stage filing may incur additional costs for translations where a foreign patent office requires the description and/or claims to be in a language other than English. The applicant may incur additional costs for professional fees and official fees to submit claim amendments and arguments to address the findings in an ISR/WO issued by the ISA.
Once the National Stage filing is completed, the additional cost for obtaining a patent from a National Stage filing may include examination fees, grant fees and professional fees incurred by US and foreign counsel for prosecution. Applicants should be aware that costs for prosecuting a National Stage application to grant are significant and difficult to predict.
By delaying the filing of applications in foreign countries by up to 30 months following the filing of a priority application in the USPTO, PCT procedures may enable deferment of costs until an applicant has greater clarity regarding relevant product/service market viability. By providing search and examination prior to National Stage filing, the PCT procedures may also enable greater insight regarding patentability and available scope of patent protection prior to incurring significant costs for filing and prosecuting one or more National Stage applications.
If you are interested in pursuing foreign patent rights please contact us at info@bltg-ip.com or 503-439-6500 for a consultation.