Stopped at the Border: Patent Rights

Patent Rights
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The topic of national borders is and always has been a hot-button issue. Reflect on what you know about the border conflicts around Israel, between Ireland (in the EU) and Northern Ireland (part of the United Kingdom, soon not to be in the EU), the DMZ between North Korea and South Korea and, of course, the U.S. southern border. Border integrity and related “nationalism” concerns are not going away anytime soon.

Patent protection is available worldwide but is jurisdictional in nature, and the form and scope of protection varies from country to country. For that reason, borders matter in patent rights law.

For a U.S. company, the typical process for obtaining international patent protection involves first filing a U.S. patent application. There are then three options for obtaining protection outside the U.S. based upon that U.S. patent application: (1) filing direct in other countries, if the country of interest has a patent office; (2) filing an application in the European Patent Office (EPO) which can be brought into force in most European countries; or (3) filing an application under the Patent Cooperation Treaty (PCT) which by itself does not convey any rights, but reserves the patent applicant’s rights to later file corresponding applications in designated countries. 152 countries are members of the PCT (out of the 195 countries in our world today).

DIRECT FILING

An application can be filed in other countries if that country is equipped to examine patent applications. Most countries have such offices and will examine patent applications. Some countries are more attentive to detail than others and some countries tend to rely on patentability determinations that are made by other countries with more experienced patent offices.

EUROPEAN PATENT OFFICE APPLICATION

The European Patent Office is a single body which examines applications for most European countries. This Office is an alternative for a patent applicant even if a desired country has its own patent office. With the European Patent Office, the applicant can have its patent application examined once and, if allowed, can bring the subsequent patent into force in designated European countries. Generally, filing an EPO application is cost effective if protection is desired in three or more of the 38-member countries of the EPO.

Once an EPO patent application has been allowed, the applicant is then required to obtain translations (German and French are mandatory) in order to bring the patent into force. Each country also requires that grant fees be paid in order to bring the patent into force in that country.

An EPO patent can be made effective in the United Kingdom. Remarkably, the exit of the United Kingdom from the European Union—this month, in what we all know affectionately as Brexit—does not change this. The EPO is not an agency of the EU but rather an independent international organization (of which the UK was a founding member back in 1977). Indeed, there are a number of members of the EPO that are not members of the EU (including now the UK).

PCT APPLICATION

A PCT application conveys no rights to the applicant and is not a substitute for either the direct filing of the application in the selected country or the filing of the application with the EPO. Rather, a PCT application reserves the applicant’s rights to later file in other countries. By filing a PCT application, an applicant defers the date upon which filing must be made, hopefully to a time when the amount of coverage available for patent protection and the interest in the marketplace for the invention can be more clearly defined.

It is possible to designate the EPO in a PCT application without individually designating every country belonging to the EPO. By filing a PCT application, the applicant reserves its right to file applications in a designated country until about 30months after the original U.S. filing date.

Seeking international patent protection is an expensive proposition and takes several years to bear fruit. It can provide a significant advantage, however, for a company attempting to raise capital or trying to elevate the value of the company by showing that steps have been taken to protect the intellectual property of the company in areas outside the United States (such as in markets of interest or regions of competitive manufacturing). Enforcement of international patent protection is quite mature in some countries but not as fully developed in others. It is also an expensive proposition, although not typically as expensive as U.S. patent litigation.

It is important to remember that in all countries, a patent is not an affirmative grant of rights from the government. Rather, a patent provides the owner of that patent with the right to exclude others from engaging in certain activities related to the patented invention for a limited period of time. Z. Peter Sawicki and James L. Young 

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