Generic Challenge:. Martin a. Voet

if there was a dispute between inventors in the U.S., it was resolved in a proceeding called an “interference” in which each party tried to establish it invented first. Interferences occurred in very few cases and were fought in the U.S. Patent and Trademark Office (PTO) in a formal procedure which was expensive, time consuming and contentious. They also could be settled using a private arbitrator if both parties agreed to do so, often with the understanding that the winner, whoever it turned out to be, licensed the loser. Outside the U.S. there is no need for such a procedure since the first to file is entitled to the patent, unless the second to file can prove the first to file had stolen the invention from him.

      The new U.S. rule on first to file thus puts the emphasis on prompt filing in the U.S. While the one year so-called “grace period” still remains, it is now personal to the inventor and generally does not cover third party disclosures of the invention made prior to the date of filing.

      One of the urban legends about patents is that the way for an inventor to prove his date of invention is to mail to himself a sealed envelope containing his invention disclosure to get a postmark establishing his date of invention. Some inventors tend to be secretive and even a little paranoid (in a good way) so they like this idea. The only problem is that such a procedure cannot legally establish a date of invention. This is because the patent laws provide that a date of invention can only be established if a third party, who is not an inventor, corroborates the date of the invention in writing.

      Today one does not even have to establish a date of invention as the first to file is awarded the patent regardless who invented first. But if you want to establish a date of invention, prepare a written disclosure of it and have a non-inventor read it and sign and date it. That establishes the legally required corroboration.

Provisional Applications

      The current trend in filing patents in the U.S. is to first file a provisional application because the governmental filing fees are low and it is not necessary to provide claims or other formalities. To perfect the provisional application, you must file a complete application within a year of the filing date of the provisional and you get the benefit of the earlier filing date of the provisional. You can file anything as a provisional application, such as a scientific paper, and use it as the basis of a patent application within the year provided. The only catch is that the provisional must provide the proper legal disclosure for a patentable invention in order to get the benefit of its filing date when you file the complete application later.

      If you don’t file the complete patent application within the year, the provisional dies in secret and has no further use. A bonus for filing the provisional application is that it does not count towards the life of the patent, so you really get 21 years from the filing date of a provisional patent application if you perfect it with a regular patent application filing within one year.

Foreign Filings

      Currently the U.S. Patent Office publishes only regular applications within about 18 months of the first filing. Foreign patent applications are typically filed in foreign countries within 12 months of the date of the first provisional or regular filing if there was no provisional. This is based on an international treaty (Paris Convention) that most countries belong to which provides that the first filing date of a patent becomes its effective filing date in all other countries, so long as it is filed in those other countries within one year of its first filing anywhere.

      3. First page of a European Patent

      4. Front page of a PCT Application

      In order to file outside the U.S., you must first obtain a license to do so from the U.S. Patent Office. Licenses are automatically granted after filing a patent application, unless your patent happens to relate to national security, atomic bombs, and the like. In the unlikely event you do not get the automatic license, it would not be wise to file abroad until you’ve seen your patent lawyer, since your U.S. patent could be invalidated and you will likely have violated data security laws. If you do file abroad by mistake without a license, you can request a retroactive license if the subject matter is not of the kind to raise an issue and without having the FBI call for a chat.

Patent Cooperation Treaty (PCT)

      There is also another treaty, the Patent Cooperation Treaty or “PCT”, which allows a single place holder application to be filed within one year of the earliest filing date of a patent application or provisional application, which effectively preserves the right to file in most countries in the world within 30 or 31 months after the earliest filing date. This gives you more time to evaluate the invention without loss of any rights before having to file it abroad at significant expense. Filing a PCT also entitles you to receive an international search report on patentability which is useful in deciding whether to incur the expense of national filings abroad.

      The rules are very unforgiving. If the 12-month PCT date is missed by even one day, the right to the earlier filing date may be lost forever, though some countries including the EU provide for a short grace period for inadvertent mistakes. If it is lost and if there was an intervening publication, even your own publication, disclosing your invention between your U.S. filing date and your late foreign filing date, your foreign patent may not be valid.

      A typical PCT application is relatively inexpensive to file as foreign patent costs go (typically under $5,000) and it reserves your rights in most major countries worldwide. Remember that within about six months after filing a typical PCT it is published for all to see. If you want to keep your invention a secret until it is patented, don’t file it abroad and don’t file a PCT.

Costs of Filing

      Filing, obtaining and maintaining patents is not cheap. In addition to lawyer fees for preparation and prosecution before the Patent Office, there are governmental filing fees, examination fees, grant fees and periodic maintenance fees over the life of a patent. Current costs for obtaining a U.S. pharmaceutical patent including legal fees and government charges average about $25,000: $7,500 to $15,000 for preparation and filing, the same for prosecution and grant, plus maintenance fees due at the 4th, 8th and 12th year anniversaries of the patent totalling another $13,000 or less if one qualifies for discounts under Patent Office rules as a “small” or “micro” entity.

      In the U.S., “Small Entities” (individual inventors or companies with less than 500 employees and Universities), and “Micro Entities” (individuals with a certain gross income limit who have filed fewer than 4 patent applications or persons associated with an institute of higher education) also get a break on U.S. Patent Office fees, and are generally charged 50% and 25% respectively of the fees charged to “Large Entities”. The catch is that if and when a small or micro entity becomes a large entity e.g., by licensing the patent to a large entity, normal fees are due from that time forward. This can be a trap for the unwary as fee mistakes can invalidate a patent. In non-English speaking foreign countries the costs are generally higher due to translation costs and higher government application and issue fees and annual maintenance fees over the life of the patent.

      An agreement between member states of the European Patent Organization (EPO) called the London Agreement went into effect May 1, 2008 for patents granted in Europe on or after that date. That Agreement provides that you only have to translate the claims of an EPO filed patent into the language of the European country in which it is granted, rather than translate the whole patent document (except for Spain and Italy). This has brought about a significant reduction in the cost of obtaining patents in Europe by substantially reducing translation costs which typically accounted for as much as 80% of the cost of issuing a patent in non-English speaking countries in Europe.

      In 2012, the European Council came to an agreement on the European Union’s proposed “unitary patent system” which would provide a single patent filed in either French, German or English, covering all EU member states (except Spain and Italy who were pouting about their language being left out) and a single European patent court with branches located in Paris, London and Munich, having exclusive jurisdiction