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Foreign Filing FAQ

Do I need to hire a foreign associate to handle foreign filing?

Absolutely.  Not only are you prohibited in many or even most countries from filing your own application, but you couldn't possibly do a good job of it.  Patent laws differ from country to country, and claims and strategies that work well in the U.S. are often completely unacceptable in foreign prosecu-tion.  This is especially true in the fields of medicine and computers, and for business methods.

The World Intellectual Property Organization (WIPO) has guides to patent treates and the laws in its member countries, but it is extremely difficult to wade through the laws to decipher what they mean.  A good summary of what you can do in certain countries can be found in Strategic Patenting.

How does foreign patent practice differ from US practice?

The World Intellectual Property Organization (WIPO) has guides to patent treates and the laws in its member countries, but it is extremely difficult to wade through the laws to decipher what they mean.  The best summary is found in Strategic Patenting.  Among the many differences:

US Foreign Countries
- first-to-invent - first-to-file
- one year filing window - absolute novelty
- claims to treatment of humans, broad software and method of doing business - many forbid or severely narrow claims in these areas
- many independent claims - limited no. of indep claims
- scope of claims is not
limited by examples
- scope of claims is often limited by examples

How much do foreign filings cost?

Costs range from about $500 to $1,000 and up.  Some chemical patentability searches can run $10,000.  A typical patentability search takes anywhere between one day and several weeks. Note that the simpler the invention, the harder and more expensive it is to search.

How long does it take?

Foreign prosecution usually takes at least three to five years from filing to grant.  The process is even longer in practice because patent applicants usually delay their file foreigns until about a year after filing their U.S. utility application (without PCT) and about two and years after filing their U.S. utility application (with PCT).   Additional delays can occur where the applicant fails to request when filing the foreign application.

As in the U.S., there are ways of speeding up prosecution.  The EPO, for example, will generally accelerate examination upon request, without any justification and even without paying any additional fees.  Some countries also tend to follow the lead of other countrie, granting patents in their countries when they learn of similar grants in the U.S. or EPO.

Which countries should I file in?

The threshold issue is cost.  One must assume that it will cost at least $15,000 to obtain a patent in each foreign country, and then at least another $750 a year to maintain the patent.  On top  of that, applicants should understand that patents are not self-enforcing.  It can easily cost a million dollars to enforce a patent, and that is for each country in which suit is brought.  Thus, unless it makes economic sense to prosecute a patent application to issuance, and then to enforce it, there is little percentage in filing foreign patent applications.  Where applicants do file foreign patent applicatns, they generally file in EPO, Japan, China, Canada, and Mexico, and then possibly Korea, India, Brazil, and Taiwan.  Of course, the pattern can differ depending upon the industry.  Oil-related inventions tend to be filed only in the major oil producing countries.

When do I need to file my foreign applications?

Under the Paris Treaty, foreign applicaions must be filed within one year of the coresponding U.S. filing.  That window can be extended by filing a Patent Cooperation Treaty (PCT) application within the one year period.  If that is properly done, the deadline to file foreign in PCT countries is usually extended to two and half years (30 months) from the U.S. filing.  The complete list of deadlines is available at the WIPO website.

One critical word of caution -- most countries outside the U.S. are "absolute novelty" countries.  Applications must either be (a) filed in those countries before the invention is made public, (through publication, sale, or otherwise), or (b) the foreign application must be able to claim priority to a U.S. or PCT application filed before the invention was made public.

Can I incorporate material "by reference" as in the US?

Some countries, notably Japan, do not allow incorporation by reference.  Thus, if one files a formal PCT or U.S. utility application claiming priority provisional application, and incorporating figures or other information by reference without actually inserting the information into the formal application, a subsequent filing in Japan will omit all of that referenced information.  European practice does allow incorporation by reference, but the EPO will sometimes require the applicant to remove the incorporation statement, and literally add into the application whatever material is supposed to be incorporated.  Thus, if one tried to incorporate by reference an entire textbook on pharmaceutical development, the EPO might well require that the applicant copy  into the application all material that he is actually incorporating.

Do I need to tell the foreign patent offices about prior art?

Most foreign countries have no such duty to disclose.  Two exceptions are Japan and Australia, at least with respect to written prior art documents.

Several countries do want to see a listing, or even copies, of all prior art references cited against corresponding applications in other countries.  If the patent family is large, it is probably a good idea to keep a copy of all cited references in a single folder, in addition to keeping copies in the various individual country folders.

A relatively new regulation in Japan requires not only a listing of previously cited prior art, but also statements as to each reference.

Can I file for foreign patents even after I received a US patent?

Almost all foreign countries are "absolute novelty" countries, meaning that your application will be rejected if the invention was publicly known anywhere in the world before the filing date of the foreign application.  Since US patents are published as of the issue date, the invention has already been disclosed to the public.  One exception if where you filed a timely PCT application.  PCT allows you to file foreign up to 30 months or more after the earliest claimed priority date.  Even if your patent issued during that 30 month window, you can still file in PCT countries until the end of the 30 month window.

If you really want to file a foreign application after your US patent issued, you will need to identify some additional features of the invention that are patentable over your previous disclosure, and file foreign on those features.

Can I file for foreign patents after the one-year window?

The foreign filing window generally closes one year to the day after the filing date of the earliest claimed priority application.  The main exception is that if you filed a PCT application during the one year window, then you typically have another 1.5 years after the window closes (30 months from the earliest claimed priority date) to file in PCT countries.  Otherwise you may be out of luck.

Note that even if you failed to file foreign applications and failed to file your PCT application during the one-year deadline, you can still file foreign if  your invention and application are still secret.  In that case you simply re-file the US application, receive the foreign filing license, and then file the foreign applications wclaiming prioirity only to the re-filed US application.

Do foreign countries allow divisionals, CIPs, etc?

Foreign countries almost always allows for divisionals, i.e., dividing child applications off a parent application.  That process can usually be done any time during the prosecution.

Foreign countries also generally allow for continuations, i.e., paying additional fees to continue processing a pending application.  Confusingly, the patent offices in EPO, Japan and many other jurisdictions call such applications "divisionals."

I am not aware of any countries that allow CIP practice similar to that permitted in the US.  If you want to add new subject matter to an application, you need to file an entirely new application.  Unfortunately, any previously published applica-tion, including your own, will likely be cited as prior art against the new application.

Can I get broad protection in foreign countries?

Generally yes, but not so broad as can be obtained under U.S. law.

Methods of treating diseases in humans are often unpatentable in foreign countries.  Those that do allow claims in that area often require a special claiming format or clever claiming strategies (e.g. "a method of shampooing hair by including <<a drug>> in the shampoo").

Methods of doing business and computer sofware are also generally unpatentable abroad.  But here again it is possible to secure claims in those areas through clever wording.

U.S. and foreign claiming strategies are extensively covered in Strategic Patenting.

What countries does the European Patent Office cover?

A European application can designate all of the following countries: Austria, Belgium, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, UK, Greece, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Netherlands, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia and Turkey.  The most current list is available online.

The EPO has an excellent website that includes a useful guide to the European patent system, free patent searching, and an interesting collection of facts and figures (albeit outdated).

What is the Patent Cooperation Treaty?

The PCT is an international treaty dealing with patent protection.

A PCT application is basically a door stop that extends the foreign filing deadline from 1 year to 2. 5 years or more in member countries, as measured from the earliest claimed priority filing.  PCT applications are examined, and proper use of the PCT process can greatly reduce foreign filing charges.  The examiner usually issues a combination Search Report / Written Opinion within 5 - 15 months of the earliest claimed priority date, and an Int'l Preliminary Examination Report (IPER) by about 18 or 19 months.  If the applicant pays an extra fee (Chapter II fee), the examiner can consider the applicant's arguments in preparing the IPER.

Why are there different claim sets in different countries?

When we file through the European Patent Office (EPO), all countries necessarily have the same claims (albeit as translations) because there is only one prosecution.  Outside the EPO countries, however, the claims almost always vary from country to country.  We could minimize the differences by conforming the claims in each country to a single updated set, but the degree of conformity would still be limited by the fact that the patent laws differ from country to country.   In addition, conforming the claims in each country to a single updated set would mean that any obnoxious examiner in any country would have a choke hold on the breadth of claims in all countries, and the common claim set would be unnecessarily narrow.  For all these reasons, we do end up with different claim sets across different countries, and that is the correct result.

What is a "deadline for acceptance" in foreign prosecution?

The patent offices in New Zealand and some other countries give deadlines for "acceptance of the application"  and applicants often worry that their applications will go abandoned if that deadline is not met.  The reality is that the deadline is set to push the application forward.  If the applicant is responding correctly to office actions, and in other ways the prosecution is proceeding properly, the examiner will usually keep extending the deadline.

Even if the deadline is reached, the applicant can appeal the then-existing rejections, and continue the prosecution.

end faq