Tag: foreign jurisdictions

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Multijurisdictional Patent Infringement

Patent Cooperation Treaty Patent Applications have the potential to mature into Patents in most nations, but currently, there is no enforceable World Patent. Unaddressed Patent infringement can reduce your company’s profits.

Patent Rights in Multiple Jurisdictions

Many companies own patent rights in at least some of the jurisdictions in which they conduct business.

What If We Don’t Own Patent Rights in Jurisdictions Where We Do Business?

A frequent multijurisdictional situation is:

My Company owns ten US Patents, three European Patents, five Chinese Patents and three Japanese Patents. The Patents cover the company’s fifth most profitable product.

At a tradeshow in Singapore, our regional vice president discovers that a Vietnamese company has duplicated our invention and is exporting the duplicated invention to Australia, Canada and Japan. Further, the Vietnamese company intends to export the invention to Germany and the United States.

What Can You Do About “Knock offs” of Your Product Overseas?

As a general rule, Patent rights are only enforceable in the jurisdiction that granted the Patent.

  • In Australia and Canada, your company owns no Patent Rights and cannot stop the importation and use of the knock off in those jurisdictions
  • If Germany is one of the European nations covered by the European Patents, then your company can utilize European counsel to assert its Patent rights in Germany
  • In Japan, your company can use Japanese counsel to enforce its Japanese Patent rights
  • In the United States, your company can utilize US counsel to enforce its Patent rights that can include a court order to stop the knock offs at the port of entry

In the global economy, when another determines that your Company’s product is profitable, it is almost inevitable that someone will attempt to “bend the rules” and trade on your Company’s market share and goodwill for their own financial gain. Without Patent rights, you have little to no recourse in most jurisdictions.

What Should My Company Do To Prevent Patent Problems?

It is astute to procure Patent rights in all jurisdictions where your business plan, business model, actual and projected market forces justify the procurement of intellectual property.

A small front-end investment in intellectual property can reap increased future multijurisdictional sales.

If you have questions about your company’s multijurisdictional intellectual properties, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

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How to Expedite Foreign Patents

Will a US Patent Application Expedite Foreign Patents?

Yes, one way to expedite foreign patents is to apply for a US Patent. This approach can expedite procurement of foreign Patents in many foreign jurisdictions.

Under European Patent Office practice, the grant of a US Patent may or may not correlate with the expedited grant of its parallel European Patent.

Three General Rules for Domestic and Foreign Patents

  • The sooner the Nonprovisional Patent Application is filed, the sooner the Patent can issue
  • In most jurisdictions, the sooner the Patent issues, the less expense incurred by the Patentee
  • The sooner the Patent issues, the sooner the Patentee has enforceable patent rights, and the sooner the Patent can become a wealth-generating asset

Business Strategy to Expedite Foreign Patents (Example)

  • Regardless of the nationality of the Patent Applicant, file a Patent Application in the USPTO
  • It best for your company to originally file a Provisional, Nonprovisional or PCT Application in the USPTO — however, if the Provisional, Nonprovisional or PCT Application was first filed in another jurisdiction, a US Nonprovisional Application can be filed in the USPTO until the US statutory deadline has passed
  • If a PCT Application is not the first Application filed, a PCT Application claiming priority to a Provisional or Nonprovisional Application is filed in a PCT Receiving Office (preferably, the USPTO Receiving Office)
  • File a US Nonprovisional Patent Application shortly after the PCT Application was filed, rather than waiting until near the deadline allowed by the PCT
  • By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Applications filed in other jurisdictions are examined
  • As previously indicated, the grant of a US Patent can expedite the grant of parallel Patents in many foreign jurisdictions

If you have questions about cost-efficient business strategies for filing your company’s Patent Applications, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

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Patent Applications – Foreign Jurisdictions

How To Select the Best Path for Patent Applications in Foreign Jurisdictions

My company is contemplating filing Patent Applications in foreign jurisdictions. Is the use of the Patent Cooperation Treaty or the Paris Convention Treaty the better route?

Patent Cooperation Treaty vs. Paris Convention Treaty

Your business model and judgement determine the best course for the filing of Patent Applications in foreign jurisdictions. Both the Paris Convention Treaty and the Patent Cooperation Treaty routes have advantages and disadvantages.

Under each Treaty, the Applicant makes a claim to the priority application (document) that was filed in a jurisdiction other than the jurisdiction (country/region/union) which you desire to file the new Patent Application. The priority document can be a non-provisional, a provisional or an international Patent Application.

The Paris Convention Treaty

  • The non-provisional Patent Application must be filed before the expiration of one year following the filing of the priority document
  • For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
  • If you are only filing in a few foreign jurisdictions, the Paris Convention will likely be the least expensive route to file the foreign Patent Application
  • Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent

The Patent Cooperation Treaty (PCT)

  • The non-provisional Patent Application must be filed before the expiration of thirty months (some jurisdictions allow thirty-one months) following the filing of the priority document
  • For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
  • The PCT Application can be filed as the original and priority document
  • An International Search Report is generated by the International Searching Authority of the World Intellectual Property Organization
  • When needed, the International Search Report can provide a basis for amending the claims of the PCT Application prior to entry into the national stage of a foreign jurisdiction’s Patent Office or the United States Patent Office.
  • Amendment of the claims of a PCT Application prior to entry into the national stage can result in a speedier and more cost-effective issuance of a Patent in the United States or a foreign jurisdiction
  • Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent

If you have questions about filing Patent Applications under the Paris Convention Treaty or the Patent Cooperation Treaty, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.