Advanceplanningtomaximizeyourinternationalpatentprotection_lauro_piffat

Advance Planning to Maximize Your International Patent Protection BY PETER C. LAURO, ESQ., AND KATHRYN A. PIFFAT, PH.D., ESQ. Peter C. Lauro is a Partner and Kathryn A. Piffat, Ph.D. is an Associate in the Intellectual Property Department at Edwards Angell Palmer & Dodge, LLP, a national law firm with 520 attorneys focusing on private equity and venture capital, financial services and technology. They may be reached at [email protected] and [email protected].

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he Patent Cooperation Treaty (PCT), implemented on June 1, 1978, established a framework to simplify and harmonize international patent protection for applicants of member nations. In today’s global economy, this framework plays a critical role in the international patent protection strategy of many businesses. Advanced planning can maximize the efficiency and impact of patent protection in the global arena. Yet, too many applicants leave international filing/PCT-related decisions until the last possible moment. Although clients often file a PCT application 12 months after filing a domestic or foreign priority application, many never take advantage of this period to consider fully and promptly an international filing strategy in anticipation of the Paris Convention/PCT application and/or national phase filing deadlines. Instead, once the pressure of filing the initial priority application has passed, applicants all too often ignore the matter of international filings for the next eleven months, notwithstanding the periodic reminder letter from the patent practitioner. Even after the PCT international application is filed, many applicants continue to delay consideration of international filing strategies, putting off important decisions until just before the deadline for filing national phase applications. Perhaps such delay on the part of applicants is exacerbated by the recent streamlining of the PCT international phase. 18

Such recent streamlining changes include automatic designation of all PCT member states (countries) upon filing of the PCT Request and, for nearly all PCT member states, extension of the Chapter I national phase filing deadline to 30/31 months through elimination of the requirement to file a Chapter II Demand for International Preliminary Examination at 19 months. (As of April 22, 2005, only Switzerland (CH), Luxembourg (LU), Sweden (SE), Tanzania (TZ), Uganda (UG) and Zimbabwe (ZM) still require the filing of a Chapter II Demand at 19 months to preserve the 30/31 month national phase filing option, and all of these countries are available through regional patent conventions (e.g., EPC, OAPI, ARIPO, etc.), which offer the Chapter I/30/31 month filing option.) Once filed, the PCT international application is essentially on “autopilot” and an applicant need not take any further action until the deadline for initiating national phase filings. Consequently, many applicants may ignore the PCT international application until the national phase filing deadline. Instead, an international patent filing strategy should be considered and developed at the outset, i.e., at the time of drafting the priority application, e.g., a U.S. provisional patent application. The strategy should be revisited periodically and finetuned not only well in advance of critical filing deadlines but also during the Convention period and the international phase. Accordingly, at the outset, an applicant needs to consider the following: 1. Where are the markets for the claimed technology? 2. Where do the competitors operate? 3. What is the cost/benefit for filing in a given country or countries? 4. Are any of these countries non-PCT countries? 5. Is a foreign filing license needed from the U.S. government or from a foreign government? INTELLECTUAL PROPERTY TODAY

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6. Does the subject matter to be claimed constitute patentable subject matter in the target countries? 7. Is the launch of a product to be covered by the patent application imminent? 8. Is there ongoing infringing activity by a competitor or is infringing activity imminent? Clearly, the applicant will be in the best position to answer some of these questions, although the applicant may not realize that such questions must be answered. Therefore, it is incumbent upon the practitioner to ask the appropriate questions and, based upon the responses, outline possible strategies so that the client can determine which strategy is most likely to achieve the desired outcomes.

WHERE TO FILE A patent in a particular country enables the patent holder to exclude others from making, using, offering for sale or selling the claimed invention in that country or from importing into that country the claimed invention. In selecting countries in which to file a patent application, the applicant should determine: (1) the countries where the market for the claimed invention exists; (2) the countries where competitors (potential infringers) operate; and (3) the availability of patent protection for the particular subject matter to be claimed. In considering the first two factors, the applicant must weigh a particular country’s share of the global market against the cost for obtaining and maintaining a patent in that country. For example, if filing in ten countries will capture 100% of the global market at a cost of $X, but filing in five of those countries will capture 85% of the market at 50% of cost $X, then it may be advisable to file in only those five countries. In considering the third factor, it may not be possible in certain countries to obtain a patent claim to the desired subject matter. For example, in the information technology field, computer software or business methods may not constitute patentable subject matter in certain countries. Likewise, in the biotechnology field, newly cloned genes or transgenic animals may not constitute patentable subject matter in certain countries. The practitioner can be very helpful in this process by advising the applicant about the relative costs of obtaining and maintaining patents in particular countries and about the laws of various jurisdictions that

govern what constitutes patentable subject matter. As the foregoing analysis requires considerable research, it is important that the applicant and practitioner work together at an early stage. Once the desired countries have been identified, the next step is to select the type of filing.

WHAT TYPE OF INTERNATIONAL APPLICATION TO FILE At this stage, most applicants will have already filed a priority application, e.g., a U.S. provisional patent application. If the international application is to claim benefit of the earlier filed priority application, the international application must, in accordance with the terms of the Paris Convention, be filed not later than 12 months from the filing date of the priority application. The next step is to select the type of international filing. Since its inception in 1978, the PCT international application has been an extremely attractive option for applicants seeking international patent protection. The PCT application enables an applicant to preserve patent rights in numerous countries throughout the world by filing a single application. After a period of time, the applicant must enter the national phase by perfecting the underlying PCT application in the particular PCT countries selected, or else lose patent rights in those countries. The PCT application also provides the applicant with a sense of the potential patentability of the claims of the application. The International Searching Authority conducts a search and a report of the results of the search are provided to the applicant. A Written Opinion setting forth a preliminary opinion of patentability is also provided. Upon the filing of a Chapter II Demand, the applicant has the option of responding to the Written Opinion by submitting written arguments and/or claim amendments, after which an International Preliminary Examination Report (IPER), setting forth non-binding findings regarding patentability, is issued. The practitioner can assist the client in reviewing this valuable information in preparing for national phase filings, e.g., by preparing an amended set of claims for national phase filing, or even deciding to dispense with national phase filings altogether. As noted earlier, all member states (countries) of the PCT are automatically

designated upon filing of the PCT Request. To date, so many countries have joined the PCT that an applicant may automatically assume that all countries of interest are members of the PCT and will be automatically designated. However, that is not the case. Argentina, Chile, Taiwan, Thailand, Malaysia, Pakistan, Uruguay and Venezuela, to name a few, are not members of the PCT although they are members of the Paris Convention. This is an example of why advance planning is very important. If protection in a particular country is desired and that country is not a member of the PCT, a PCT international application cannot be used to preserve patent rights in that country. By opening a dialog early on with the applicant, the patent practitioner will be in a position to advise the applicant whether any of the desired countries are non-PCT countries. If so, a direct Convention filing must be initiated in such countries. Certain non-PCT convention countries may require the filing of a translation of the priority application into the native language of the country. Again, advanced planning is recommended to avoid rush translations and the significant added costs associated with expedited translations.

WHEN TO FILE If a PCT international application is to claim the benefit of the priority application, it must be filed on or before expiration of 12 months from the filing date of the priority application. For most member states of the PCT, national phase applications in the member states must be filed before expiration of 30 months from the filing date of the priority application (18 months from the filing date of the PCT application). The practitioner should be sure to provide the applicant with sufficient advance reminders of the national phase filings deadlines for the countries of interest to the applicant, especially for the handful of countries that still require the filing of a Chapter II Demand to extend the national phase filing deadline to 30 months. In addition, the practitioner and applicant should use the 18-month international phase to revisit and fine-tune the international filing strategy, in particular by considering the results of the International Search Report and Written Opinion described above. If a direct convention application (for non-PCT countries) is to claim the benefit of the priority application, it must be filed INTELLECTUAL PROPERTY TODAY

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on or before expiration of 12 months from the filing date of the priority application. Thus far, these applications have been discussed solely in the context of obtaining patent protection in non-PCT countries. However, they may be particularly useful in countries that are members of the PCT. As noted above, national phase applications based on a PCT international application are not filed until 30 months from the filing date of the priority application. It could then be from several months to a few years before a national phase application is examined in a particular country. However, there may be circumstances that warrant a faster track to examination and prosecution. For example, launch of a product in a very important market country may be imminent. Alternatively, a competitor may be infringing or about to infringe claims covering a product of the applicant, and it will be important for an enforcement strategy to have expedited examination and prosecution of a patent application so that the patent can be granted as soon as possible. Therefore, the practitioner and the applicant should, sufficiently in advance of the Convention filing deadline, consider whether such circumstances exist to file one or more direct convention filings in PCT member states, rather than proceeding solely via the PCT application for those countries. Under such circumstance, it is not uncommon for an applicant to file concurrently a direct Convention application in a PCT country, e.g., the United States, and a PCT international application to preserve rights in other PCT countries. In any case, it is prudent to insure that a foreign filing license is in place before proceeding with the filings. Another timing issue that may have an impact on an international patent strategy is one that arises in the wake of a publication of subject matter to be patented prior to the filing of the priority application. Although under most circumstance, patent rights will likely be lost in Europe (an absolute novelty jurisdiction), there are some countries, including Australia, Canada, Japan and the United States, that provide a grace period for filing an application under such a circumstance. For example, the grace period in the United States is one year from the date of publication. The practitioner should be sure to advise the applicant as to which countries have grace periods and the duration of the grace period for a particular country. It is 19

very important to file the application as soon as possible to toll the grace period, making sure that a foreign filing license is in place as needed. The surest way to toll the grace period in a country that has one is to file a direct national application in that country. Certain countries allow the filing of a PCT international application to toll the grace period and some reportedly allow the filing of an application in the home country to toll the grace period. The practitioner would be prudent to consult associates in the particular countries at issue.

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It should be noted that the grace period in the United States can only be tolled by the filing of a national application (provisional or non-provisional application) in the United States. This is clear from 35 U.S.C. §102(b), which provides: A person shall be entitled to a patent unless …(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…. [Emphasis added.]

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CONCLUSION There are many matters that must be considered in developing an international patent strategy. The forgoing suggestions merely provide a basic framework for the timely and effective development of such a strategy. Nevertheless, the practitioner and the applicant will readily appreciate that starting the dialog early and continuing the dialog on a frequent basis is critical to achieving a viable and successful international patent strategy. IPT