party that violated the agreement. However, the contract claim stem- ming from violation of the nondisclosure agreement does not undo the public disclosure itself. The public disclosure by the third party prior to patent filing will probably create patent-destroying prior art, notwith- standing the contractual breach. The bottom line: Inventors who file patent applications on subject mat- ter prior to disclosing that subject matter publicly put themselves in a favorable position in terms of patent law. International filings Filing a patent application as quickly as possible to take advantage of global first-to-file regimes also starts the global filing clock. As a general rule, patent applicants have 12 months from first filing of their invention to initiate global filing. Taking U.S. filers as an example, U.S.-based applicants typically file first at the U.S. Patent and Trade- mark Office. Either an informal provisional application or a formal nonprovisional patent application starts the 12-month deadline for international filing. If an inventor wants to pursue patent protection outside of the U.S., he or she should either file an international application or file all desired foreign applications within 12 months. Two key international agree- ments dictate this deadline — the 19th century Paris Convention and the U.N.-administered Patent Cooperation Treaty (PCT). For almost 150 years, the Paris Convention has given applicants a year to file foreign patent applications claiming priority to their first-filed appli- cations. The PCT opens up further options for applicants, providing additional time if would-be patentees file an international application under the treaty within a year of first filing. Global patent filing provides wider protection but costs significantly more money to prosecute. Applicants must eventually file an additional patent application claiming priority to their first filing for each nation in which they strive for patent protection. In view of high costs, many applicants settle for either one or a handful of nations. For example, seeking wider patent coverage in 10 nations easily translates into a six-figure patent bill for an innovator. Japan typically costs the most, while Europe offers some cost-savings by offering a single regional patent application covering most of the continent. The general rule of thumb many applicants follow is to use the Paris Convention to cover three nations or less, while resorting to the PCT for wider global filing efforts. Applicants make Paris Treaty filings on a nation-by-nation basis; PCT filing involves more nuance. Patent Cooperation Treaty Using the PCT costs about US $5,000 and preserves at least an option to file almost everywhere in the world for as many as 30 months from first filing. Whereas the Paris Convention cuts off at one year from a first filing on a given invention, filing a PCT application within one year of first filing gives an applicant a full two and a half years from the first, priority filing to file follow-on applications around the world. Many applicants, particularly corporate filers, often need the extra time to make up their minds on how to spend their intellectual property budget. Corporate research and development, marketing, sales, prod-
STEPHEN L. KEEFE, P.E., ESQ. , is a patent attorney with the Sigma Law Group (www.sigmalawgroup.com), based in the greater New York City and Philadel- phia metropolitan areas. After graduating from West Point with a degree in civil engineering and serving in the U.S. Army, Keefe earned a Master’s Degree in civil engineering from Columbia University and practiced as a structural engineer in New York City and Virginia for six years. He served as a patent examiner at the U.S. Patent & Trademark Office, received a Juris Doctorate from the George Washington University Law School, and has practiced patent law for more than 10 years at leading intellectual property law firms and as in-house corporate patent counsel. He can be contacted at steve.keefe@ sigmalawgroup.com. Finally, patent law naturally favors tangible fields such as civil and structural engineering. Civil and structural engineers should not hesi- tate in taking their innovations to the patent office. As global patent law remains territorial, nation-specific wrinkles cre- ate further complexities for international filing. Some nations require translations, while others do not. Most nations follow European-style as opposed to American-style patent prosecution, notably China. When pursuing foreign filing, most applicants cover the U.S., the ma- jor European nations, and China. Some other common filing nations include Japan, Korea, Canada, Australia, Brazil, and Russia. India’s sclerotic bureaucracy and uneven patent system still discourage many applicants from choosing that nation. Bottom line takeaways Although U.S. and international patent acquisition involves a firehose of detail and complexity, following some of the basic rules discussed above can help inventors and innovative enterprises protect their in- novation. File as quickly as possible, before making public disclosures, if possible. If pursuing foreign filing, remember the 12-month deadline from first filing. Consider using the Paris Convention for a few direct foreign filings, while keeping the PCT as an option to gain additional time for decision-making. uct managers, and financial controllers all typically hold a stake in intellectual property, so the decision-making cycle can take some time. Going through a typical filing pattern may help to illustrate why many applicants choose PCT and how they use it. For example, an exemplary applicant follows the best practice of filing an application as soon as possible, prior to any public disclosure. The applicant, if a U.S.-based enterprise, files first in the U.S. Patent & Trademark Office. The ap- plicant values the invention highly and wants to pursue foreign filing, but the stakeholders have not reached consensus on global patent filing strategy within a year of the first application filing. The applicant files a PCT application within 12 months of the first American filing, buying at least another 18 months to pick foreign filing nations. Many nuances exist within the PCT. Some nations give 30 months from first filing, while others give 31. China has a grace period. Europe offers a regional phase followed by individual national validations. Other regional filing options exist as well. Although all major econo- mies have signed onto the PCT, some smaller nations do not participate in the PCT and only participate in the Paris Convention.
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june 2018
csengineermag.com
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