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Procedure for Obtaining a Foreign Patent

What are the steps to obtaining foreign patent protection?

Patents provide protection only in the issuing country. When one files a patent application, the USPTO issues a Foreign Filing License. That license specifies a priority date. Foreign patents must be filed within one year of the priority date or the priority date is lost. This one year window can be extended to thirty (30) months or even longer in some cases with the filing of an application in accordance with the Patent Cooperation Treaty (PCT). Foreign patent applications must then be filed before the expiration of the PCT application.

What is the significance of the priority date?

Almost every country in the world requires filing a patent application before the occurrence of a public disclosure or offer for sale. Filing in every country prior to such a disclosure would be cost prohibitive for all. Countries have agreed to treat each application filed in accordance with particular rules as if that application had been filed on the priority date. The practical effect is that one can pursue sales of their invention for up to twelve (12) months before a PCT application needs to be filed and up to thirty (30) months, assuming a PCT application has been filed, before filing in individual foreign countries.

What is the purpose of a PCT application?

The filing of a PCT application gives two principle benefits. Filing a PCT application gives a second priority date. This can be important if the invention has not been publicly disclosed or offered for sale. The PCT application also extends the time one has to file foreign patent applications. This extension is up to thirty (30) months and in some select few countries even longer.The extension is beneficial in several ways. Most importantly, the extension allows one to market the invention and find licenses before incurring more substantial costs. Additionally, the domestic patent usually issues, if it will issue, before the application must be filed in foreign countries. This saves on filing patent applications that never will issue. This situation further saves on the cost of Amendments, since one knows how one examiner believes the claims should be written to be allowable.

What happens when foreign patent applications are filed?

Most countries prosecute patent applications in the same manner as the US. There are a few notable exceptions. Canada and Japan permit one to delay the examination (Office Actions and Amendments) up to seven years from the priority date. European countries are typically prosecuted in the European Patent Office (EPO) all in one application. When the EPO allows the application, the application is split into the individual countries and each designated country issues a separate patent. African countries use a process similar to the EPO procedure.

What is the key business consideration with foreign patent practice?

Foreign patent practice can be expensive. The underlying business should justify the costs in all cases, but even more so with foreign patent applications in view of the cost. Actively seek marketing avenues and/or licensure/assignments in foreign countries preferably before filing a PCT application, but more importantly before filing in individual countries. Although costs can be considerable, these business opportunities can easily justify the cost of foreign patent protection.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/

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