Category: Patent Law

I am often asked by inventors how they can protect their invention outside of the US. Although you can file patent applications in individual countries, probably the most common avenue is to file a Patent Cooperation Treaty (PCT) patent application.

If you file a PCT patent application, you can then enter any or all member countries individually within 30 months of the priority patent application filing date. Click here to view a world map and list of countries that are members of the World Intellectual Property Organization (WIPO).

As you can see, there are some countries that are not WIPO members. If you want to file in any of these countries, you will need to file patent applications in those countries individually prior to any public disclosure (including press releases or other publications).

The filing fees alone for filing a PCT patent application are currently about $2500. Attorneys typically charge another $500 or more for filing the PCT patent application. You will then need to file national stage patent applications claiming priority to your PCT patent application in individual countries (or the European Patent Office) within 30 months of the priority application filing date (20 months in some countries, and a few months longer in others).

Filing in individual countries gets very expensive, because you have to pay your US attorney, the foreign  attorney, and foreign government fees  for every transaction (and don’t forget the monetary exchange rates!). Filing a single national stage patent application can quickly cost several thousands of dollars. In addition, many foreign governments charge annual fees while your patent application is pending. Then to respond to foreign office actions, you will incur additional fees.

Don’t forget translation fees if you are filing your patent application in non-English speaking countries!

As you can see, foreign filing gets very expensive, very quickly. I typically do not recommend my individual or small business clients spend their money on foreign filing, unless they already have operations in a particular foreign country or reasonably foresee going into that market in the near-term. That’s because the money saved can usually be better spent pursuing their invention in the US. For example. spending that money on building, testing, and marketing their invention, instead of on foreign patent applications.

I don’t like to see anyone blow their budget on international filing, and then not have enough money to pursue their invention and end up having to walk away from it all after having made a substantial investment.

That being said, however, filing foreign patent applications is a business decision that every inventor will need to make based on their own budget and goals for their invention.

There are certain dates that trigger deadlines for filing a patent application, called “bar” dates. No, these aren’t dates at the local pub. Okay, enough patent attorney humor. In all seriousness, bar dates can prevent you from applying for a patent for your invention if you’re not careful.

Bar dates are similar to the statute of limitations for bringing a lawsuit. For example, if you are hurt in a car accident, you may have a certain amount of time in which to file a law suit, or the judge may throw your case out as having missed the statute of limitations.

The concept is similar in patent law. In the United States, you have one year from the date of first public disclosure, public use, publication, sale or offer for sale of your invention, in which to file at least a provisional patent application, or you will be forever barred (hence the term “bar date”), or prohibited by law, from filing a patent application for your invention.

For example, if you had publicly disclosed, publicly used, published, sold or offered for sale your invention on December 1, 2010, then you must file at least a provisional patent application for your invention by December 1, 2011, or you are prohibited from filing for a patent application. Essentially, you would have donated your invention to the public domain.

Most foreign countries have an even stricter standard. In many foreign countries, you cannot have disclosed your invention at all prior to filing a patent application.

The particular circumstances surrounding any one of these events is important to determining whether you have triggered a bar date. Therefore, you should meet with your patent attorney right away to discuss your particular situation if you think you may have triggered a bar date.

Of course, it is always best to keep your invention confidential, and not disclose it to anyone, before you file at least a provisional patent application.

You might also be interested reading “Should I use a nondisclosure agreement (NDA)?“

Inventors call me all the time and ask if their [fill in the blank – business partner, spouse, children, parents, friend, investor . . . ] can be named as an inventor on their patent application. The answer is “Only if they made an inventive contribution to the invention.”

Simply being related to someone, and even paying for the patent application, is not sufficient to name someone as an inventor on a patent application. Failing to properly name all inventors, or conversely, naming people who are not inventors under the definition of the law, may result in any patent that issues on the patent application being declared invalid. This may also be considered fraud on the Patent Office.

After telling this to the caller, the inventor then explains that their business partner did not make an inventive contribution to the invention, but the business partner will only give the inventor funding if the business partner can own part of the patent application.

There are ways, however, to share ownership of a patent application without having to name someone as an inventor. Perhaps the easiest way to share ownership of a patent application with a non-inventor is to form a business and then have the inventor or inventors assign their rights in the patent application to the business. You can set up the business however you want so that both the inventors and non-inventors have an ownership interest in the patent application.

You can even specify the percentage ownership interests each member of the business will have in the patent application. For example, the inventor or inventors can choose to retain 51% control of the business, while giving a 20% ownership interest to an investor who contributed $20,000 to the business, and a 29% ownership interest to another investor who contributed $29,000 to the business. Or you might give equal shares to everyone.

Be sure to work with an experienced business law attorney to help setting up your business.