Now that you’re interest is piqued, let me clarify that if you’re new to the world of patents, an international patent does not exist. Patents must be filed on a country-by-country basis. However, there is an international patent application (PCT), and filing with the World Intellectual Property Organization (WIPO) that allows you up to 30 months to decide which individual countries are the best fit for your product and business model.
However, the question of how to protect your product in an international marketplace is increasingly common now that some of the major online retailers such as alibaba.com and aliexpress.com are based outside the United States. Having the ability to sell your product to an international market can seem like the ideal opportunity. However, you may need protection from counterfeiters who also think that selling your product outside the United States is the ideal opportunity—and trust me, they won’t be sending you revenue.
If you’re anticipating working with an overseas manufacturer, you may need to obtain a patent in that country. The other situation to consider is if you are already manufacturing your product in another country, and want to begin sales in the United States. I’ll also discuss this scenario further in this article.
Australia has two types of patents, a standard (utility) patent and an innovation patent. Innovation patents where introduced in 2001, replacing the Australian “Petty Patent”. The Petty Patent was intended for inventions of short commercial duration but which had a suitably high level of inventiveness, supposedly increasing the inventors return on investment and encouraging greater innovation.
A government review in 1995 suggested that the Petty Patent was not delivering on these goals and recommended a system which “protects incremental inventions that may not be inventive enough to warrant standard patent protection and are not covered by design legislation” [emphasis added].
As a result, the innovation patent system was introduced and intended to stimulate innovation in Australian small to medium business enterprises (SMEs) by: (1) providing Australian businesses with IP rights for their lower level inventions that meant that competitors could not copy them; and (2) to reduce the compliance burden on users of the patent system by providing easier, cheaper and quicker rights for inventions than the rights formerly provided by the petty patent system.
In 2011, an Advisory Committee (AC) was instructed by the Hong Kong Government to conduct a review of the Hong Kong Patent System. The AC held a consultation period from October to end-December 2011, soliciting input from the patent and general legal profession, academia, political organizations, and trade bodies.
On 7 February 2013, the AC issued its formal Report (209 pages long) recommending various changes to the system which will affect not only Patentees, but the entire Patent profession in Hong Kong. In general, the AC’s Report recommends three changes which can be described as being quite bold in some areas, whilst at the same time, being conservative as the changes permit much of the existing system to be retained.
The AC’s recommended changes fall into three categories: the introduction of an “Original Grant Patent” (OGP), the refinement of the Short Term Patent system and the introduction of a regulatory framework for the Hong Kong Patent profession, which at present is not regulated.
A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights. It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file meansfile first!
That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.
The European Patent Office (EPO) welcomed the adoption by the European Parliament in Strasbourg of two draft regulations on the creation of the unitary patent, hailing it as a historic achievement. “The European Union is to be congratulated on this decision, which clears the way for the completion of the European patent system with a unitary patent and a Unified Patent Court, which we have been waiting for in Europe for 40 years,” said EPO President Benoît Battistelli. “The significant lowering of the cost of patenting inventions in Europe will strongly benefit European enterprises, especially research centres and SMEs. The vision of the founding fathers of the EPO to equip the European economy with a truly supranational patent system now can become a reality, strengthening Europe’s competitiveness.”
The European patent with unitary effect (unitary patent) in the 25 participating states is based on two regulations, one creating the instrument, and one on the applicable language regime for the new patent. The EPO has been entrusted by 25 EU member states to deliver and administer unitary patents. The third element of the package is the creation of a unified patent litigation system set up under an international convention establishing the Unified Patent Court (UPC), a specialised court with a first and an appeal instance with exclusive jurisdiction concerning infringement and validity questions related to unitary patents. The positive vote in the Parliament became possible after the EU member states endorsed the regulations in their Competitiveness Council meeting on Monday. The unitary patent now has to be formally adopted by the EU Council and the European Parliament, which is expected soon.
The decision whether to file a patent application is not just limited to whether an innovation has been achieved, but whether there is enough of an advance to make it worthwhile to undertake the cost of preparing and ultimately obtaining a patent. For universities the question is an even more difficult one than you might think because universities are almost universally engaging in early stage, highly-speculative research. Thus, the decision to file typically needs to come very early on in the process so that the inventor, typically an academic or researcher affiliated with the university, can publish findings and share information with the world.
Universities produce a lot of patentable inventions, but the patent laws around the world do not provide special treatment for those innovations that are based on foundational scientific research that may be years away from fruitful commercial application. What this means in patent terms is that once a university files a patent application the clock starts ticking. If, for example, a university files an international patent application there will be 30 months from that filing within which to decide whether to pursue patent rights in the Member Countries that have signed on to the Patent Cooperation Treaty. That same 30-month deadline applies even if the first filing is a U.S. provisional patent application or a U.S. nonprovisional patent application, both of which can provide support for a later filed international patent application. For more information see PCT Basics: Obtaining Patent Rights Around the Worldand PCT Basics: Understanding the International Filing Process.
Scientifically speaking, there is really very little time the point in time that work in a university laboratory is concrete enough to call “an invention” and capable of description in a patent application until the 30-month deadline to pursue rights in various countries around the world. What that means is that universities are constantly faced with a difficult decision. Do they undertake the expense of seeking patent protection in a variety of locations or do they forego the invention? This decision is particularly problematic for universities engaged in the life sciences where there is of necessity a very long time horizon from conception of the invention to even knowing whether there is a legitimate opportunity for commercialization.
Heads of the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) – collectively known as the Trilateral Offices – met in Kyoto, Japan earlier this week to hold their annual Trilateral Conference, which marks their 30th anniversary this year. Since 1983, the Trilateral Offices have worked together to produce new databases and IT systems, evolving their cooperation by conducting various projects designed to solve common challenges. Indeed, the Trilateral Offices have led the way on international patent cooperation and laid the groundwork for work sharing efforts globally.
Meanwhile, a coalition of the world’s five largest patent offices – the IP5 – earlier today announced the release of the IP5 Statistics Report 2011 Edition. The IP5 is comprised of the USPTO, the EPO, the JPO, the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). These IP5 Offices together handle approximately 80% of the world’s patent applications. The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.
All of the accomplishments of the IP5 and Trilateral Offices “lead to improving global patent systems today,” said Hiroyuki Fukano, Commissioner of JPO. “It is our current task to build an appropriate framework in which applicants are able to be granted patents smoothly in every corner of the world. In order to achieve building truly global patent systems in a global era, we would like to take the lead in developing such global patent systems.”
What keeps you up at night? For patent attorneys, it could be the one time you sent your client’s patent off to be translated from English to German, and since you don’t read German, didn’t know that a translation error changed the meaning of the patent enough that a judge ruled a client’s claim against a competitor invalid.
That would keep me up at night!
Over the past few years, many of the world’s largest patent filers have consolidated patent work to fewer law firms. As a result, patent attorneys and managers of the translation process are now responsible for overseeing a larger number of disconnected in-country translation service providers. Unfortunately, this can lead to increased errors and risks.
That isn’t so good, especially when trying to protect your client’s intellectual property.
Australia has two different types of utility patent. A ‘standard patent’ is the traditional type, in which all valid claims must meet the well-established requirements of novelty and inventive step (i.e. nonobviousness), and which has a maximum term of 20 years from filing if all annual maintenance fees are paid. Extensions of this term by up to five years are available for certain pharmaceutical patents, as compensation for time effectively lost while obtaining regulatory approvals.
The second type of patent, called an ‘innovation patent’, is in many respects unique to Australia. An innovation patent provides a ‘second tier’ right, with a lower barrier to validity than the conventional inventive step test, and a shorter maximum term of protection of just eight years. An innovation patent also differs from a standard patent in that a maximum of only five claims is permitted, although there are no additional restrictions on the form of these claims. For example, any number of them may be independent claims.
Second tier invention rights, more typically known as ‘utility models’ or ‘short term patents’ and having terms of between 6 and 15 years, are not particularly unusual. Such rights are available, on one form or other in over 70 countries around the world. In China, utility model patents are obtained about as often by domestic applicants as are standard patents, although the second tier system is barely used by foreign applicants.
We are rapidly closing on the next wave of implementation for the America Invents Act in the United States. On 16 September 2011, the U.S. enacted landmark patent legislation. As a result of the Leahy-Smith America Invents Act (AIA) the patent laws of the United States will experience the most widespread changes since the initial patent statute was first passed in 1790. Not even the 1952 Patent Act is as sweeping because that almost exclusively codified decades of common law into the statute, with only one significant departure from the law as it evolved under the guidance of the Judicial system.
The most sweeping changes to American patent law will not take effect until March 16, 2013, but there have already been some changes and the next wave of changes become effective on September 16, 2012, on the anniversary of President Obama signing the bill into law. The next round of changes largely deal with post grant procedures and challenges, but also deal with a variety of smaller issues, such as implementing the OED statute of limitations for disciplinary actions and the submission of third party prior art during a patent prosecution.
For the international community, however, there is an important change slated for September 16, 2012. The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT). The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.
Given the sluggish economic recovery and continued budget pressure on IP departments, it makes sense to consider new strategies for lowering the steep costs related to international patent filing. Translations can account for up to 50% of the cost of national stage entry, so cost-cutting strategies could make a significant difference in the bottom line. Strategic costs savings can then be used to stretch a diminishing budget, or offer opportunities to expand patent protection into other countries without busting your budget.
Before moving into discussion about ways to cut cost it is important to focus on the end goal. It is one thing to cut costs, but to borrow a popular political phrase – you want to cut with a scalpel, not a cleaver. Thus, keeping in mind the ultimately end goal at every step will allow you to engage cost cutting strategies without compromising your patent project. Of course, the end goal is to obtain the broadest, strongest patent portfolio; obtaining patents in a variety of jurisdictions where meaningful business opportunities exist.
For many companies the best course of action is to file an International Application under the Patent Cooperation Treaty (sometimes referred to as a PCT application) and pursue patent protection around the world with the filing of a single, uniform patent application. The PCT process is favored by many companies because of the long processing time. The international stage of the PCT application can last for up to 30 months, which puts off when you have to make a decision about where to pursue rights. This is particularly helpful if the innovation is early stage or encompasses basic scientific research that will need to be translated into a commercially useful innovation, or scaled in order to be feasible. In these scenarios so much can go wrong from scientific breakthrough to commercially useful invention that it does not make sense to spend vast sums of money early in the process when the invention may still fail to prove itself.
Typically there are a logical set of countries where maximum market opportunity exists for any innovation and you are likely to want to pursue protection in those countries where the economy is well adapted to provide the most economic potential for exploitation. With some innovations there are many countries that are capable of supporting a market for high-tech innovations, which sometimes causes people to want to apply for patents in a variety of jurisdictions.