Advance Planning to
6. Does the subject matter to be claimed
Maximize Your International
Patent Protection
BY PETER C. LAURO, ESQ., AND KATHRYN A. PIFFAT,
PH.D., ESQ.
Peter C. Lauro is a Partner and Kathryn A.
Piffat, Ph.D. is an Associate in the
Intellectual Property Department at
Edwards Angell Palmer & Dodge, LLP, a
national law firm with 520 attorneys focus-
ing on private equity and venture capital,
financial services and technology. They may
be reached at PLauro@eapdlaw.com and
KPiffat@eapdlaw.com.
T
he Patent Cooperation Treaty (PCT),
implemented on June 1, 1978, estab-
lished a framework to simplify and har-
monize international patent protection for
applicants of member nations. In today’s
global economy, this framework plays a crit-
ical role in the international patent protec-
tion strategy of many businesses. Advanced
planning can maximize the efficiency and
impact of patent protection in the global
arena. Yet, too many applicants leave inter-
national filing/PCT-related decisions until
the last possible moment.
Although clients often file a PCT appli-
cation 12 months after filing a domestic or
foreign priority application, many never
take advantage of this period to consider
fully and promptly an international filing
strategy in anticipation of the Paris
Convention/PCT application and/or
national phase filing deadlines. Instead,
once the pressure of filing the initial prior-
ity application has passed, applicants all
too often ignore the matter of international
filings for the next eleven months, notwith-
standing the periodic reminder letter from
the patent practitioner.
Even after the PCT international appli-
cation is filed, many applicants continue to
delay consideration of international filing
strategies, putting off important decisions
until just before the deadline for filing
national phase applications. Perhaps such
delay on the part of applicants is exacer-
bated by the recent streamlining of the PCT
international phase.
18
Such recent streamlining changes
include automatic designation of all PCT
member states (countries) upon filing of the
PCT Request and, for nearly all PCT mem-
ber states, extension of the Chapter I
national phase filing deadline to 30/31
months through elimination of the require-
ment to file a Chapter II Demand for
International Preliminary Examination at
19 months. (As of April 22, 2005, only
Switzerland (CH), Luxembourg (LU),
Sweden (SE), Tanzania (TZ), Uganda (UG)
and Zimbabwe (ZM) still require the filing
of a Chapter II Demand at 19 months to
preserve the 30/31 month national phase
filing option, and all of these countries are
available through regional patent conven-
tions (e.g., EPC, OAPI, ARIPO, etc.), which
offer the Chapter I/30/31 month filing
option.)
Once filed, the PCT international appli-
cation is essentially on “autopilot” and an
applicant need not take any further action
until the deadline for initiating national
phase filings. Consequently, many appli-
cants may ignore the PCT international
application until the national phase filing
deadline.
Instead, an international patent filing
strategy should be considered and devel-
oped at the outset, i.e., at the time of draft-
ing the priority application, e.g., a U.S.
provisional patent application. The strategy
should be revisited periodically and fine-
tuned not only well in advance of critical
filing deadlines but also during the
Convention period and the international
phase.
Accordingly, at the outset, an applicant
needs to consider the following:
1. Where are the markets for the claimed
technology?
2. Where do the competitors operate?
3. What is the cost/benefit for filing in a
given country or countries?
4. Are any of these countries non-PCT
countries?
5. Is a foreign filing license needed from
the U.S. government or from a foreign
government?
INTELLECTUAL PROPERTY TODAY SEPTEMBER, 2005
constitute patentable subject matter in
the target countries?
7. Is the launch of a product to be covered
by the patent application imminent?
8. Is there ongoing infringing activity by a
competitor or is infringing activity immi-
nent?
Clearly, the applicant will be in the best
position to answer some of these questions,
although the applicant may not realize that
such questions must be answered.
Therefore, it is incumbent upon the practi-
tioner to ask the appropriate questions and,
based upon the responses, outline possible
strategies so that the client can determine
which strategy is most likely to achieve the
desired outcomes.
WHERE TO FILE
A patent in a particular country enables
the patent holder to exclude others from
making, using, offering for sale or selling
the claimed invention in that country or
from importing into that country the
claimed invention. In selecting countries in
which to file a patent application, the appli-
cant should determine: (1) the countries
where the market for the claimed invention
exists; (2) the countries where competitors
(potential infringers) operate; and (3) the
availability of patent protection for the par-
ticular subject matter to be claimed.
In considering the first two factors, the
applicant must weigh a particular country’s
share of the global market against the cost
for obtaining and maintaining a patent in
that country. For example, if filing in ten
countries will capture 100% of the global
market at a cost of $X, but filing in five of
those countries will capture 85% of the
market at 50% of cost $X, then it may be
advisable to file in only those five countries.
In considering the third factor, it may
not be possible in certain countries to
obtain a patent claim to the desired subject
matter. For example, in the information
technology field, computer software or
business methods may not constitute
patentable subject matter in certain coun-
tries. Likewise, in the biotechnology field,
newly cloned genes or transgenic animals
may not constitute patentable subject mat-
ter in certain countries.
The practitioner can be very helpful in
this process by advising the applicant about
the relative costs of obtaining and main-
taining patents in particular countries and
about the laws of various jurisdictions that
govern what constitutes patentable subject
matter. As the foregoing analysis requires
considerable research, it is important that
the applicant and practitioner work
together at an early stage.
Once the desired countries have been
identified, the next step is to select the type
of filing.
WHAT TYPE OF INTERNATIONAL
APPLICATION TO FILE
At this stage, most applicants will have
already filed a priority application, e.g., a
U.S. provisional patent application. If the
international application is to claim benefit
of the earlier filed priority application, the
international application must, in accor-
dance with the terms of the Paris
Convention, be filed not later than 12
months from the filing date of the priority
application.
The next step is to select the type of
international filing. Since its inception in
1978, the PCT international application
has been an extremely attractive option for
applicants seeking international patent
protection. The PCT application enables an
applicant to preserve patent rights in
numerous countries throughout the world
by filing a single application. After a period
of time, the applicant must enter the
national phase by perfecting the underlying
PCT application in the particular PCT
countries selected, or else lose patent rights
in those countries.
The PCT application also provides the
applicant with a sense of the potential
patentability of the claims of the applica-
tion. The International Searching Authority
conducts a search and a report of the
results of the search are provided to the
applicant. A Written Opinion setting forth a
preliminary opinion of patentability is also
provided. Upon the filing of a Chapter II
Demand, the applicant has the option of
responding to the Written Opinion by sub-
mitting written arguments and/or claim
amendments, after which an International
Preliminary Examination Report (IPER),
setting forth non-binding findings regard-
ing patentability, is issued. The practitioner
can assist the client in reviewing this valu-
able information in preparing for national
phase filings, e.g., by preparing an
amended set of claims for national phase
filing, or even deciding to dispense with
national phase filings altogether.
As noted earlier, all member states
(countries) of the PCT are automatically
designated upon filing of the PCT Request.
To date, so many countries have joined the
PCT that an applicant may automatically
assume that all countries of interest are
members of the PCT and will be automati-
cally designated. However, that is not the
case. Argentina, Chile, Taiwan, Thailand,
Malaysia, Pakistan, Uruguay and
Venezuela, to name a few, are not members
of the PCT although they are members of
the Paris Convention.
This is an example of why advance plan-
ning is very important. If protection in a
particular country is desired and that coun-
try is not a member of the PCT, a PCT inter-
national application cannot be used to
preserve patent rights in that country.
By opening a dialog early on with the
applicant, the patent practitioner will be in
a position to advise the applicant whether
any of the desired countries are non-PCT
countries. If so, a direct Convention filing
must be initiated in such countries. Certain
non-PCT convention countries may require
the filing of a translation of the priority
application into the native language of the
country. Again, advanced planning is rec-
ommended to avoid rush translations and
the significant added costs associated with
expedited translations.
WHEN TO FILE
If a PCT international application is to
claim the benefit of the priority application,
it must be filed on or before expiration of 12
months from the filing date of the priority
application. For most member states of the
PCT, national phase applications in the
member states must be filed before expira-
tion of 30 months from the filing date of the
priority application (18 months from the fil-
ing date of the PCT application).
The practitioner should be sure to pro-
vide the applicant with sufficient advance
reminders of the national phase filings
deadlines for the countries of interest to the
applicant, especially for the handful of
countries that still require the filing of a
Chapter II Demand to extend the national
phase filing deadline to 30 months. In addi-
tion, the practitioner and applicant should
use the 18-month international phase to
revisit and fine-tune the international filing
strategy, in particular by considering the
results of the International Search Report
and Written Opinion described above.
If a direct convention application (for
non-PCT countries) is to claim the benefit
of the priority application, it must be filed
on or before expiration of 12 months from
the filing date of the priority application.
Thus far, these applications have been dis-
cussed solely in the context of obtaining
patent protection in non-PCT countries.
However, they may be particularly useful in
countries that are members of the PCT.
As noted above, national phase applica-
tions based on a PCT international applica-
tion are not filed until 30 months from the
filing date of the priority application. It
could then be from several months to a few
years before a national phase application is
examined in a particular country.
However, there may be circumstances that
warrant a faster track to examination and
prosecution. For example, launch of a prod-
uct in a very important market country may
be imminent. Alternatively, a competitor may
be infringing or about to infringe claims cov-
ering a product of the applicant, and it will be
important for an enforcement strategy to have
expedited examination and prosecution of a
patent application so that the patent can be
granted as soon as possible.
Therefore, the practitioner and the
applicant should, sufficiently in advance of
the Convention filing deadline, consider
whether such circumstances exist to file
one or more direct convention filings in
PCT member states, rather than proceeding
solely via the PCT application for those
countries. Under such circumstance, it is
not uncommon for an applicant to file con-
currently a direct Convention application in
a PCT country, e.g., the United States, and
a PCT international application to preserve
rights in other PCT countries. In any case,
it is prudent to insure that a foreign filing
license is in place before proceeding with
the filings.
Another timing issue that may have an
impact on an international patent strategy
is one that arises in the wake of a publica-
tion of subject matter to be patented prior to
the filing of the priority application.
Although under most circumstance, patent
rights will likely be lost in Europe (an
absolute novelty jurisdiction), there are
some countries, including Australia,
Canada, Japan and the United States, that
provide a grace period for filing an applica-
tion under such a circumstance. For exam-
ple, the grace period in the United States is
one year from the date of publication.
The practitioner should be sure to
advise the applicant as to which countries
have grace periods and the duration of the
grace period for a particular country. It is

INTELLECTUAL PROPERTY TODAY SEPTEMBER, 2005 19

very important to file the application as
soon as possible to toll the grace period,
making sure that a foreign filing license is
in place as needed.
The surest way to toll the grace period in
a country that has one is to file a direct
national application in that country. Certain
countries allow the filing of a PCT interna-
tional application to toll the grace period
and some reportedly allow the filing of an
application in the home country to toll the
grace period. The practitioner would be
prudent to consult associates in the partic-
ular countries at issue.
20
It should be noted that the grace period
in the United States can only be tolled by
the filing of a national application (provi-
sional or non-provisional application) in
the United States. This is clear from 35
U.S.C. §102(b), which provides: A person
shall be entitled to a patent unless …(b)
the invention was patented or described in
a printed publication in this or a foreign
country or in public use or on sale in this
country, more than one year prior to
the date of the application for patent
in the United States…. [Emphasis
added.]
INTELLECTUAL PROPERTY TODAY SEPTEMBER, 2005
CONCLUSION
There are many matters that must be
considered in developing an international
patent strategy. The forgoing suggestions
merely provide a basic framework for the
timely and effective development of such a
strategy. Nevertheless, the practitioner and
the applicant will readily appreciate that
starting the dialog early and continuing the
dialog on a frequent basis is critical to
achieving a viable and successful interna-
tional patent strategy. IPT