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Archive for the ‘International Patent Pitfalls’ Category

Patent Reform is Not Just a Bill Sitting on Capitol Hill

The Leahy-Smith America Invents Act (“American Invents Act”), H.R. 1249, will dramatically reform patent law.  Judicial Committee Chairman Lamar Smith brought to the floor a manager’s amendment to the bill which revised text approved by the Judicial Counsel.  The manager’s amendment was approved, resisting several floor amendments, which sought to strike amended language, including the first inventor to file provision.  On June 23, 2011 the bill passed in the House of Representatives by 304 to 117 (10 not present).

The America Invents Act replaces the current “first inventor to use” system with “first inventor to file,” a common system among most foreign countries.  It also modifies the earlier inventor to file defense to infringement by specifying that the subject matter must be reduced to a practice and commercially used at least one year before the effective filing date.  These are just to name a couple of the changes enactment of this bill will bring.  Congress expresses that the American Invents Act promotes international uniformity by harmonizing U.S. patent registration with that of other countries with whom the U.S. conducts trade.

Part I of the America Invents Act was amended to include technical edits and substantive changes including prior user rights; language to direct USPTO to develop methods for studying diversity of patent applicants; to add a sense of Congress that it is important to protect the rights of small businesses and inventors; to add requirements to the satellite office location selection process; to mandate a USPTO-led study on what USPTO, Small Business Administration, and other agencies can do to assist small businesses obtain, maintain, and enforce foreign patents; to restore language for calculation of 60-day period for application of patent term extension; and to prescribe a requirement that parties provide sufficient evidence to prove and rebut a claim of derivation.

For full text of Part I of the America Invents Act or a Summary prepared by the Congressional Research Service (CRS), a nonpartisan arm of the Library of Congress, please go to:

http://http/thomas.loc.gov/cgi-bin/bdquery/z?d112:h1249:

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Which countries are members of the PCT?

The Patent Cooperation Treaty (PCT) allows anyone who is a national or resident of a PCT contracting State to seek patent protection for an invention simultaneously in each of a large number of countries.  The PCT currently has 145 member countries, three of which are pending entry into force**.  Those members countries are:

PCT Members

Of those countries, Argentina, Holy See, and Iran are pending entry into force.

Though these countries are members of the PCT, the patent itself is not issued until a National Phase application is considered in each of the desired countries.

 

*as of the date of this post

** The Treaty shall enter into force three months after eight States of the member country have deposited their instructions of ratification or accession, provided that at least four of those States fulfill the requires of Article 63 of the PCT.

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Preserving Your International Patent Rights Via the PCT

If you want to obtain a patent in a country other than the United States there are several paths you can take to achieve this goal. They are as follows:

  1. You can file directly in the country of choice
  2. You can file a PCT application and then later designate your countries of choice so long as that country is a PCT member
  3. You can file a utility patent application in the U.S. and within 12 months from filing do either items 1 and/or 2

Each of these options has pros and cons which need to be carefully considered. The most important consideration is timing. Failing to take whatever steps are needed within the time frames required to preserve your international filing rights causes these rights to be irretrievably lost. If a patent application is already pending in a PCT member country (of which the US is one), you must file the PCT application within one year from the filing date of the priority application. The PCT is often favored as an avenue for preserving international filing rights because it enables applications to wait up to 30 months from the initial priority date dates before a decision must be made about what countries to seek patent protection in.  The timeline below illustrates how the PCT process works.

The advantages of the PCT are that it:

1. Enables the applicant to delay the expense of filing international patent applications

2. Provides an examination process that enables the applicant to assess the likely patentability of the idea before further examination costs are incurred.

3. Provides the applicant with a way to amend and modify the application to put it in good form for examination before any examination occurs

4. Most countries of interest are PCT members so by filing a PCT application you preserve rights in numerous countries for at least 30 months and longer if you then go through the examination process in that country.

There are many nuances that go into an international filing decision and if you are considering how to protect your invention internationally you should get in touch with a qualified patent attorney.

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