Chapter 37 - § 37.5 • FOREIGN PATENT APPLICATIONS

• Jurisdiction: Colorado

§ 37.5 • FOREIGN PATENT APPLICATIONS

A U.S. patent is applicable to someone practicing an invention in the United States or someone importing an invention into the United States. However, it generally has no extraterritorial effect.⁵⁷ To obtain protection for an invention in foreign countries, one must apply for a patent in each of those foreign countries. Notably, each foreign country has its own laws as to what activities can bar patent protection. Generally speaking, those laws are usually stricter than in the United States. For example, many foreign countries follow an "absolute novelty" rule. This rule bars an applicant from being able to obtain a patent if the invention was made public prior to a patent application being filed — i.e., there is no one-year grace period, as is the case in the United States. Generally, this rule applies regardless of whether the inventor or a totally unrelated party makes the disclosure.

Foreign patent filings can be a very expensive proposition, especially for a start-up client. Thus, it is useful for business attorneys to understand the Patent Cooperation Treaty system and the cost-saving measures that it provides.

Practice Pointer
A business attorney can serve a client well by advising the client to carefully consider whether there will be a need for foreign patent protection before the client makes public an invention. In countries that follow an "absolute novelty" rule, such "making public" before the filing of a patent application can result in a bar to patenting of the invention. Depending on the country, such "making public" activities might include publishing a paper, posting a white paper on the Internet, offering a product for sale, using the invention commercially, or demonstrating the invention at a trade show, among others.

§ 37.5.1—Patent Cooperation Treaty (PCT) Patent Applications

The Patent Cooperation Treaty (PCT) system is an international, treaty-based patent filing system that includes the vast majority of the major industrial countries of the world. Currently, over 148 countries participate in the PCT filing system.⁵⁸ Notable exceptions are Taiwan and several South American countries.

Essentially, the PCT system allows a patent applicant to file a single PCT application and obtain an application filing date in all of the 148 countries. Such an application should be filed within one year of the applicant's original U.S. filing date. The PCT application is essentially a placeholder application. It...