The Puget Patent Blog
Some Considerations For National Stage Entry In Foreign Jurisdictions
Posted Sunday, November 29, 2015.
When attempting to obtain patent protection outside the United States, the path taken is often that defined by the Patent Cooperation Treaty (PCT). The process begins when an “international application” (also known as the PCT application) is filed, either directly with the World Intellectual Property Organization (WIPO) or at an international Receiving Office (RO), of which the United States Patent and Trademark Office is one. Once the PCT application is filed, the applicant may then enter the “national stage,” where examination by individual national patent offices is requested.
I’ve previously blogged about the process of obtaining patents overseas here: Process for Prosecuting Patents Overseas and here: Patents Outside the United States. With respect to entry into the national stage, which is the point at which the applicant requests examination by particular national patent offices, there are several important considerations.
While one benefit to the PCT process is that the applicant is able to delay payment of the fees for examination to national patent offices for up to 30 months (31 months in Europe) from the date of the first filing (including provisional applications), it is important not to wait until the last minute to initiate the foreign filings. There are a number of considerations for filing in foreign patent offices which may not be of concern when filing in the United States.
For example, most national patent offices restrict those who can represent applicants and file applications on their behalf. The European Patent Office (EPO), for example, only allows entities who have their primary place of business in an EU member state to represent applicants in proceedings before it. Those representatives must also be EU nationals. This means that it is necessary for your U.S. representative to work through an EU firm to get a patent application through the EPO. Puget Patent has established relationships with several such EU firms. However, in different foreign jurisdictions, it may be necessary to find an agent to file the application in the local patent office.
Another consideration relates to filing fees. Foreign agents often request payment by international wire transfer, so if initiating a wire transfer is something that will take an applicant a few days to organize, planning ahead makes sense.
Further, most foreign patent offices will require a translation of the application into the official language of the country. For U.S. applicants, translations are not needed in Europe, Canada, Australia, India etc., but in countries such as Mexico or Brazil, a translation will be necessary. Ordering and receiving such a translation usually takes some time so this process must also be started well in advance of the 30-month deadline.
An unusual requirement of patent offices other than the U.S. may be that an original “in ink” copy of an assignment or power of attorney document may be required. In such cases it is not sufficient to sign the document and fax or send an electronic copy. These documents must be mailed to the foreign agent, adding some time to the process. Again, this provides another reason not to delay the national stage entry.
Other offices may require the applicant to provide copies of any references which were cited by the International Search Authority (ISA) on the International Search Report. These are, of course, easily obtained via the Internet, but in some countries the patent office wants them filed concurrently with the application rather than obtaining the copies themselves.
Another consideration is shifting exchange rates, which may alter the estimated cost of filing in an overseas patent office between the time the estimate is prepared and the application is actually filed. Also, in some countries the applicant is granted further time before a formal request for examination must be made, which delays the time before the fee for the formal examination is due. Speaking of fees, as I wrote in the previous blog posts, an applicant should not forget about maintenance fees. In the US, we only pay maintenance fees once a patent issues, but in many foreign jurisdictions maintenance fees are due even while the application is still awaiting a first examination. (As I’ve previously written, the cost of obtaining a patent in the United States is a relative bargain when compared to the fees levied by other national patent offices.)
Last, an applicant who is considering patents outside the United States must remember that while nearly all countries are signatories to the Patent Cooperation Treaty, not all are. The most notable countries who don’t participate are Argentina and Taiwan, where an application must be filed much sooner than 30 months after filing in the United States. If you are up against the 30 month deadline for PCT, it’s likely already too late for Argentina or Taiwan.
Obtaining a patent outside the U.S. is very beneficial when your product has worldwide appeal. The process is intricate, although initiatives like the Patent Cooperation Treaty and the Patent Prosecution Highway help simplify it a bit. Primarily, though, proper advance planning is needed. Waiting until the end of the 30-month international phase can be costly and difficult.
Expedited Appeals
Posted Friday, October 30, 2015.
While the normal timetable for receiving a patent can be three years or more, the United States Patent and Trademark Office (USPTO) offers a number of programs for expediting review of a patent application once it is filed. Even the appeal process within the USPTO can be expedited through various programs. Appeals can often add three more years to the patent issuance timeline, so programs to expedite appeals are worth consideration.
Patent applications may be made special due to age or health of the inventor, or because the patent application relates to particular subject areas and for other reasons. A “made special” patent application will go to the top of an examiner’s docket once assigned to that examiner. Generally, that means the patent examiner completes work on the case being worked when the made special application is assigned, and then begins to examine the made special application. That status will follow an application right through the appeal process, if needed.
Additionally, the USPTO began the “Expedited Patent Appeal Pilot” earlier in 2015. It applies in instances where an applicant has at least two appeals pending (i.e. an appeal for each of two applications). A petition is submitted to the Patent Trial and Appeal Board (PTAB). There is no fee for participating in the program. The cost is that, in exchange for the applicant agreeing to withdraw an appeal, a second appeal will be advanced out of turn and receive quicker consideration by the PTAB.
The application for which the appeal is withdrawn may receive continued consideration at the patent office through filing a Request for Continued Examination (RCE) and paying the associated fee.
An appeal which is “made special” via this petition does not maintain its special status once the appeal is decided. That is, upon being returned to the examination corps from the PTAB, the application will go back into the normal queue for examination. That said, patent examiners generally work applications in order of earliest-filed first. So, if an application has been pending long enough to be twice rejected (the prerequisite for any appeal) and subsequently appealed, made special and remanded for further examination, it probably won’t be long before an examiner takes it up for additional action anyway.
Read more about expedited routes to patents here.
Hello Everett
Posted Saturday, September 26, 2015.
Puget Patent has recently opened an office in Everett to go along with its location in Bellevue. Located on the first floor of the 2917 Pacific Avenue office building, the new location is easily accessible to and from I-5. We look forward to getting to know clients in Everett and throughout the north end, including those in Snohomish, Lynnwood, Edmonds, Mountlake Terrace, Bothell, Mill Creek, Woodinville, Mukilteo, Marysville, Lake Stevens, Whidbey Island and beyond. As this blog post from earlier this year shows, many local inventors call north end cities home. Puget Patent is positioned geographically and strategically to provide quality service to everyone.
Give us a call today and arrange an in-person consultation regarding your intellectual property legal needs at Puget Patent’s convenient new Everett location.
How To Get Prioritized Examination of an International Application Entering the US National Stage
Posted Monday, August 31, 2015.
For a few years now, the USPTO has been accepting requests for prioritized examination of patent applications under its Track One program. The Track One program is described more fully here, and enables an applicant to possibly receive a patent within a year of filing, instead of in the normal timeline.
As of July 2015, the “normal timeline” means that a patent will issue or go abandoned on average in 26.6 months. However, the USPTO’s stated goal of the Track One program is for the patent to issue or go abandoned inside 12 months, and I have personally obtained patents for clients in as little as five months with Track One. I am a big fan of prioritized examination via the Track One program.
However, Track One is not available for applications which begin as international applications and then enter the U.S. National Stage. Applicants with foreign filings could file a Track One application concurrent with the international (PCT) application, but this can be kind of costly since PCT applications themselves have expensive filing fees. Some applicants prefer to go the PCT route I wrote about here, and not seek the patent in the US until later. That approach spreads the costs out.
Let’s say you file a PCT application, then wait the 30 months until the deadline for filing a national stage application in the U.S. And at the time of the U.S. national stage entry, you would like prioritized examination. How can you do that? The USPTO won’t accept a Track One application for a national stage application, unless it’s an RCE (usually filed after a Final Office Action – read more here).
The answer is: file the national stage application at the USPTO, and then file a U.S. continuation application which claims priority to the national stage application (read more about continuing patent applications here). You can then request prioritized examination of the continuation application, pay the Track One surcharge, and get faster US examination of your application even though it began as a PCT application.
At that point you have two applications pending. You could even change the claims in one application or the other and have claims to two different inventions examined via this process. You will likely receive an answer first on the application you filed second, but my experience is that once the Track One application is examined, if the same examiner is assigned to both you usually get the initial application examined very quickly afterwards (possibly sooner than you would otherwise).
I have used this strategy successfully to accelerate examination of inventions disclosed in national stage applications, even though the USPTO states they won’t accept a Track One request for such an application.
Continuing Patent Applications
Posted Saturday, June 13, 2015.
Success! Your patent application was approved by the patent office and is scheduled to issue in the next few weeks. Congratulations… and you should really consider having an additional application filed for your invention before your first patent issues. If you are bringing the invention to market as a product for sale, or if you are disclosing the invention to potential licensees, an additional application is an inexpensive way to ensure you can get additional patent coverage in changing market conditions.
To better understand why, we need to remember that the scope of coverage that your patent offers is specified by the patent claims. Patent claims are recited at the very end of the patent document and are one sentence descriptions of intellectual property for which you are granted the exclusive right in your patent.
The patent claims are analogous to a legal description for a piece of real estate. A legal description for real estate often references a survey map which is stored in a county recording office, but it can also expressly call out boundary lines for the parcel of real estate using latitude and longitude, or some other means of expressing geographic lines. Within those boundaries lies the real property for which the owner has the exclusive use.
Patent claims are similar in that they describe the boundaries of the intellectual property which the patentee has the exclusive right to make, use, and sell. Patent claims are slightly different from legal descriptions of real estate, however. While legal descriptions for real estate generally use standardized language, patent applicants (or their representatives) get to choose their own language when submitting patent claims.
Your patent attorney will do the best job possible getting a patent claim approved by the patent office which completely describes your invention. However, once your patent issues and your competitors become aware of the patent, they will be reading the patent to see if they can figure out a way to “design around” your patent. In other words, they will see if there is a way to design their competing product so that they don’t infringe your patent.
A competitor may alter a component of their product so that it no longer includes something essential to your patent claim. There are various legal doctrines which will still protect a patentee in this situation, such as the Doctrine of Equivalents (read more about the Doctrine of Equivalents here). In short, at trial the result should be that if the accused infringing device performs substantially the same function in substantially the same way to yield the substantially the same result, it still infringes even if the patent claim in question doesn’t exactly cover the device.
But litigating a patent is very expensive, much more so than obtaining a patent. Removing questions that need to be resolved at trial is highly beneficial through reducing the expense of patent litigation. And one way to negate the question of whether an accused infringer is selling an infringing device, even if it isn’t exactly described by the patent claims, is to obtain an additional set of patent claims which do exactly describe the accused infringing device. That makes it a shorter trial – or even obviates the trial entirely once the accused infringer sees your new claims and decides to settle.
The manner of obtaining that additional set of patent claims is to file an additional application in the patent office for the invention – one which uses language which fits on the accused infringing device more precisely. The cost of obtaining a second patent which reads right on the accused infringing device is almost trivial when compared to the cost of litigating the issue. When you bring that second patent to court, there are many fewer issues to litigate, significantly reducing your cost to enforce the patent.
There are limits to this strategy however. The first is that the patent claims in your second application must be able to be supported by the description of the invention contained in your first application. Simply put, you can’t claim an invention that you didn’t have in mind and disclose at the time the first application was filed.
The second, and really critical point, is this: once your first application matures into an issued patent, the applicant loses the right to file an additional application for that invention. Any additional application, called a “continuing application,” has got to be filed prior to issuance of the original patent. (In practice, “prior to issuance” has meant “no later than the day of issuance.” Recent court decisions suggest, however, that filing the continuing application the day the original patent issues may not be sufficient. Filing no later than the day before is becoming prudent.)
When your patent issues, if you already know of a competitor that has come to light since the application was first filed, you definitely want to have the patent attorney look at that competitor’s product and file a continuing application with patent claims that better describe that competitor’s product. In fact, you may want to take advantage of the patent office’s Track One program (read more about Track One here), and have the patent that enables you to better ward off your competitor in a matter of months instead of the normal three year timetable.
By the way, if this seems like a shady and possibly illegitimate practice, know that the courts have said there is nothing wrong with attempting to obtain a patent which better reads on your competitors’ devices which came after yours, provided the claims you are trying to get are based upon on your original filing. See Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (C.A.F.C. 1988) (read the Kingsdown decision here) (“It should be made clear at the outset of the present discussion that there is nothing improper, illegal or inequitable in filing a patent application for the purpose of obtaining a right to exclude a known competitor’s product from the market; nor is it in any manner improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application.”)
What happens if your patent is about to issue and you are unaware of any competitor that might enter your field? File a continuing application anyway! Re-filing an application which was already drafted is not terrifically expensive. Your attorney will likely advise at least submitting a different set of patent claims to keep the examiner from merely copying/pasting work done previously in rejecting the claims, but other than that the cost to re-file is essentially only the filing fee and a nominal attorney charge to get the application on file.
Where you are unaware of a specific competitor lurking, but where it is at least possible that one may come to light, re-file the original application as a continuing application without the Track One surcharge. For likely a couple of years, should such a competitor bring something to market that is close to yours, you will have the ability to change the pending patent claims to describe the competitors product.
Many organizations consider continuing patent applications an essential part of their strategy to protect intellectual property. It is not unheard of for a company to keep filing continuations to keep the subject matter of the original application “alive” at the patent office throughout the entire term of the original application. Any patentee who is planning to bring the invention to market, or is actively selling it or seeking a licensee, really ought to have a continuing application filed as the issuance of the original application nears.
Just remember – and this is the key takeaway – your ability to file a continuing application goes away upon the issuance of the original application. If you don’t have a continuing application filed and a competitor is subsequently identified, your only avenue for asserting your exclusive right to make, sell or use your invention is the patent that you have. If the competitor has done something sneaky so that their copy no longer literally infringes your patent, you’re still protected, but it’s likely going to be a more expensive road than it could be if you had a continuing application pending.
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