Chapter §25.01 Introduction

• Jurisdiction: United States

§25.01 Introduction

The rise of global commerce requires that U.S. patent practitioners possess not only a thorough understanding of domestic patent law but also familiarity with the substance and procedure for obtaining and enforcing patent rights worldwide. Certain fundamental aspects of patentability and infringement previously described in this treatise are approached differently by foreign patent systems. This chapter introduces the key distinctions. It also summarizes the primary multinational treaties, conventions, and agreements that simplify the task of protecting an invention in multiple countries around the world. The primary provisions of U.S. patent law that implement these treaties are analyzed. A number of useful reference texts provide a more detailed treatment of international and comparative patent law.¹

[A] Territorial Scope of Patents

It is fundamental that patents are national, not international, in scope. Patents are generally not enforced extraterritorially.² This means that the patentee's right to exclude others is extinguished at the geographic borders of the patent-granting country. For example, the owner of a U.S. patent cannot rely on that U.S. patent to stop an unauthorized third party from copying and selling the invention in Japan.³ Rather, she must obtain a Japanese patent on her invention and enforce the Japanese patent against the infringer, most likely in the courts of Japan.⁴

Consequently, the title of this chapter, which refers to "international patenting," is something of a misnomer. Currently there is no such thing as an international patent, at least in any form other than academic proposals. There are, however, a number of international treaties, conventions, and agreements that simplify the process of obtaining patent protection in multiple countries. Understanding the historical background and economic context in which these various agreements were enacted is necessary to understanding the present system of multinational patenting.

[B] Obtaining Foreign Patent Protection Prior to the Paris Convention

The Paris Convention for the Protection of Industrial Property (Paris Convention),⁵ which entered into force in 1883, was the first truly international agreement concerning industrial property (i.e., patents, trademarks, and industrial designs). The Paris Convention created important rights for nationals⁶ of member countries that made it much easier for those persons to obtain patents in multiple countries. The complexities of multinational patenting prior to the Paris Convention's enactment demonstrate why this treaty was such an important advance.⁷

Before the Paris Convention, it was extremely difficult and expensive to obtain patent protection for the same invention in different countries. Some countries (e.g., Country A) considered an application filed on the same invention in another country (e.g., Country B) even one day before the filing of the application in Country A to be prior art that would destroy the novelty of the invention under the patent law of Country A. Thus, patent applicants had to arrange to file multiple applications on the same invention in multiple countries on the same day. The cost and complexity of accomplishing this, particularly before the invention of the telephone, fax machine, and Internet, are self-evident.

Prior to enactment of the Paris Convention, the various national patent systems differed in some very fundamental aspects of substantive patent law. For example, the United States did not substantively examine patent applications for novelty between 1793 and 1836.⁸ France did not do so until the 1960s. Italy, for a time, examined only those patent applications that were related to foods and beverages. Many of the world's developing and least-developed countries refused to grant patents altogether on pharmaceuticals or agricultural inventions.⁹

Procedures for prosecuting patents also varied widely between countries. Patent applications were published at varying times. Some countries published patent specifications immediately upon the filing of an application, others during the application's pendency, and some countries (such as the United States) did not publish the content of patent applications at all prior to the patent grant.¹⁰

By the late 1800s, national governments and economists determined that these differences between national patent systems could be used as tools to manipulate national wealth. More specifically, they realized that granting patents to foreign nationals generally results in a net outflow of national wealth.¹¹

To understand why this is so, consider the example of a U.S. national who obtains a U.S. patent on her invention, a useful, novel, and nonobvious "widget." The price of the widget that the U.S. national can obtain in the marketplace will reflect the fact that the widget is covered by patent, which price would likely be higher than if the widget were not patented and could be made and sold by multiple competing parties.¹² In this domestic patenting scenario the link between the costs and benefits of the U.S. government's decision to grant patent rights to its own national is relatively tight.¹³ Presumably the sales revenues received by the U.S. national would be reinvested...