Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting this for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're taking a trip around the globe with an expertly guided tour into the high stakes world of international patenting.
In today's global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could happen in Asia or India while your products are shipped into and distributed from ports.
In the target markets of the largest economies across the globe would be competitors, and infringers could be next door neighbors or perhaps across the pond. But as you'll learn today, there's no such thing as an international patent. No one global patent that protects you everywhere. Instead, patents are jurisdictional property [00:01:00] rights.
For example, a US patent only grants the rights to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities performed in Canada, Mexico, China, or anywhere else in the world to restrict activities there. You'll need a patent granted in each of those countries.
But how do you choose where to file? How long do you have to decide? What pathways exist for filing internationally? How do you pursue international protection in an intentional, strategic cost-effective manner that won't break the bank? And what should you be thinking about now while drafting your patent to set yourself up for the greatest odds of success once on the international stage.
Dr. Ashley Sloate. Aurora's very own international patenting tour guide leads today's discussion with our all star patent panel, traveling from the US to Europe, Africa, India, east Asia, Australia, and everywhere In between exploring the intricacies and nuances of ensuring your patent rights are protected everywhere it [00:02:00] matters.
Along the way, Ashley and the panel discuss reasons for pursuing international protection, how to choose locations with a cost effective international strategy. Foreign filing deadline and strategy pointers, the most common pathways for foreign protection, including the Patent Cooperation Treaty, the Paris Convention, the European Patent Convention, unitary patents in the African Regional Intellectual Property Organization.
Also, some things you need to be thinking about while in advance in terms of drafting your patent and the international dangers of public disclosure. And even some bonus considerations for how political happenings like tariffs, trade wars, and Brexit can impact your patent strategy. Ashley is joined today by our always exceptional group of international IP experts, including Dr.
David Jack, president of Jackal Consulting, Kristen Hansen, patent strategy specialist in Aurora, Marie Smith, patent agent at Break Hughes Beman, LLP, and making their patently strategic debut. Albert Dew and Dr. [00:03:00] Tiffany Miller are the two newest additions to the Aurora family. Now before fueling up the PJ and taking off with the panel on our international expedition, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements and patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's minute, Adam discusses some of the most inventor friendly vibes we've seen coming out of DC in a long time.
Adam Mossoff: Springtime always brings the National Inventors Hall of Fame induction ceremony where current and historical innovators are inducted into the Hall of Fame. One of the preconditions being not just that they have to have come up with an incredible innovation.
That they have, have to obtain a patent to protect their innovation and have it deployed into the marketplace through that patent. This year for the very first time, secretary of Commerce spoke Howard Lutnick, and it was a [00:04:00] fantastic speech in which he talked about his life as an innovator and his own receipt of many patents, hundreds of patents, in fact, and his.
Profound support for reliable and effective patent rights, which is incredible because the Secretary of Commerce usually does not give such attention to the US Biden Trademark Office or the patent assistant specifically. And we know in fact that Commerce Secretary Lutnick means what he has said because acting director Koch Morgan Stewart has been implementing over the past couple of months important key and profound reforms at the patent Trial and appeal board.
This. Tribunal that cancels patents and has been violating due process rights and the substantive rights of inventors canceling patents at rates of 83% or higher, and just undermining these reliable and effective property rights that are drivers of economic growth and innovation. She has implemented important reforms that have restricted and restrained the ability for people to abuse [00:05:00] this tribunal.
And we're hopeful that more reforms will be enacted soon with the support of Commerce Secretary Lutnick. And as soon as John Squires, I. Nomination is confirmed by the Senate as the full director and director. Stewart takes her official position as act as deputy director working with Squires to continue the great innovation system that our founders put into place in this country.
Stay tuned for more.
Josh: Thanks, Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram reels, YouTube shorts, and TikTok. You can check out these shorts and follow us at Aurora patents on all three platforms. Now without further ado, take it away Ashley.
Ashley: So this is gonna be an overview of international patenting, right?
As you all appreciate, you could spend probably untold hours on any particular subsection of this. And we do have Will Doherty, our European council that we've used for a number of years. He's actually [00:06:00] doing a more European centric PSM next month. And so this will be a good. Warm up to kind of thinking about the international implications and if we really like next month's session two, we could entertain seeing if some of our other foreign associates would come, wanna come on.
And, because I think it's beneficial, we don't, we're not as in the weeds in these different jurisdictions all the time. So I think it's interesting to get some of the nitty gritty from people who are adept in those. Countries, so into international patents. And so I think one of the biggest confusion points when you have newer inventors is when you say, you know, we can do something called an international patent application.
And in their mind they're like, Ooh, look it, there's one application that is world. Covers all the world, right? And obviously that's not the case. There is no international patent. You know, all, and this, I know this, A lot of this will be reviewed for a lot of us today on the call, but feel free to jump in with like interesting tidbits you learned about different jurisdictions and things like [00:07:00] that, or interesting strategy pieces.
I think that's how we can get into some more of the. Nitty gritty, interesting weed kind of stuff, but patents are jurisdictional property rights, right? So, you know, a US patent protects the selling offering for sale, importing, manufacturing, using of a, an invention in the United States within its borders, but also includes our territories, Puerto Rico, Guam in the US Virgin Islands.
If you get a patent in China, it. Protects those same rights within China. If you get one in Australia, those same rights within Australia. So you do have to think about a portfolio and these rights as very jurisdictionally constrained. And I am using jurisdictional here because in some cases it is just very specific, a country.
And then in a few regions of the world, they're kind of multiple countries that have banded together to do different portions of the patent process. And we'll talk about that more later. So suffice it to say if [00:08:00] you have interest in a country, you need to file on that specific country. And there's lots of ways to do that.
So why might a company or an individual pursue foreign patent protection? Well, of course you may find economic value in other markets. It's a global economy. If you have competitors in a particular location, a particular jurisdiction, and you want to sell in that jurisdiction, it may make sense to inhibit them from competing with you for that particular invention in that particular market.
So a lot of the questions that we ask inventors are, you know, where are you planning to manufacture the technology? Where are you importing, exporting that technology? Where do you have competitors? Because if you don't, you know, I always make the argument, if you don't have a competitor in a country, then who are you really stopping?
Obviously you can't foresee, you can't crystal ball and say, you know, you're never going to have a co, you know, competitor in that country. But for the foresee future, if you have no company. In Australia that's gonna compete with you, then why do you need a patent in Australia? Right? Because you're not preventing anybody from [00:09:00] doing it, but you could, you know, that could change.
Are you entering into partnerships with foreign companies? I do know that certain countries are, can be more nationalistic or at least, um, it can be a sign of respect to get a patent in particular countries where you're doing business with entities in those countries. So I would say like Japan is an example of that, where.
It may in, if you're gonna do business with a Japanese company, it may heighten your need to get a patent in Japan to kinda show respect for that country's property rights. I also, I think it's an interesting one too, for a lot of startups, if your plan is an exit, you know, within 2, 5, 7 years or whatever, um.
Consider who would maybe buy you and where do they file? Right? So if you know Novartis is your target company, where does Novartis file their patents? You know, and at what frequency? Right? Are they, you know, they're for sure in Europe. Do they file a ton in China, Japan, South [00:10:00] Korea, Australia. You know, if.
Google is your plan to exit. Although Google wouldn't pay for any technology, they'd probably just take it. Just kidding. Sorry for those in the call or Google. You know, looking at where they file and that can be easily found in Google patents. You know, you can look at the two letter country, two letter country code to see where different companies are filing.
So that's also something to think about is, you know, how do you make your portfolio enticing for other companies? As they may has to be. Any other, um, strategy pieces, whether they consider with clients, other things that they bring up.
David: It's a, it's an interesting point and, uh, just area, because I feel it, it's so business related, these questions.
Mm-hmm. Mm-hmm. Um, e every patent you file should, of course, have some connection to a business strategy and be filed for a reason. But where to file internationally, these que it's so expensive. You know, um, any international patent, [00:11:00] but when you go to multiple countries, it can add up quickly. And, um, one thing that we, all these things, so all I agree with all of your, your, you know, areas there and the questions that you ask people about the business plans and manufacturing plans, et cetera.
One thing that. Can make it more kind of concrete as well, is something we talk to people about is if someone was infringing your patent in X, Y, or Z country, would you ever litigate? Would you ever go after someone for infringement in this country? Would it be worth it? You know? And what are the chances of that?
And if it's. If they, if they can't even imagine a scenario where they'd want to enforce a patent in a jurisdiction, then don't spend the resources to file there. Right. So that's another way to kind of think about it, I guess.
Ashley: Yeah. No, that's, I mean, your willingness to enforce your rights, and I think that's actually, you bring up a good point too.
So it, Dave, so it's, yeah, your willingness to enforce those rights in that country. And there are certain jurisdictions that are not as amenable. To foreign [00:12:00] entities enforcing their rights. And then the other piece of it is invalidation rates in those, I mean, this is like years ago now, but I remember a long time ago I had looked into invalidation rates across several jurisdictions and as an example, the lifetime cost and the valid the invalidation rates for patents in South Korea.
Was by far one of the highest, highest in cost and higher invalidation rates. So it's a small, you know, in that case it's a small economy. Um, you know, competitors are not, but you know, would you litigate their high in validation rates and the lifetime cost of a patent there is really high. So, you know, what is the value of South Korea then to your company, right?
And it may be highly valuable. So you're willing to do that, right, and take those risks. But I think that's a great point, Dave. 'cause again, we kind of. Forget that the ultimate goal of a patent is to enforce it. Right,
David: right, right. Yeah. And, oh, go ahead, Al.
Al: Oh, and on that note, we, we've had clients that are like, they wanna [00:13:00] just file cease and desist letters, right.
Uh, for like copies or something like that. Right. For, uh, for China and India or whatnot. And so having a patent there kind of helps them do that, right?
Ashley: Mm-hmm. Yeah. So maybe, you know, even understanding the. In certain jurisdictions too, understanding the enforcement vectors. Right. How easy is it to send some of those letters?
Right? Because I know like in the uk, I think, and maybe we can, this something we can talk to will next month, but I think in the UK, if you send a cease and desist letter, you have to be willing to litigate. Like there's very careful language that you have to walk on either side of. And if you step over that line, you basically can, you can be in trouble for.
I can't remember what the word is, but scaring, you know what I mean? Kind of scaring somebody with no teeth behind it, right? Mm-hmm. So you have to use certain language. You gotta be willing to go that extra mile, otherwise you could face your own legal actions. So that's a [00:14:00] great point Al too. Just what do you wanna do in that country?
How would you enforce and what are the, what are the lines in those countries?
Kristen: One
Ashley: of the things
Kristen: I talk to clients about, um, who are, who are thinking about weird oddball countries and wondering where they should go, um, for consumer electronics or for components.
Mm-hmm. You know,
Kristen: look at major ports.
There's major ports in the Netherlands. You, you know, if you're going with a component into a major, um, semiconductor fab and you're going in with raw material that you've. You know, created as part of your invention, like wafers or, um, components that make up electronics. Right. Maybe you'd be over by Taiwan or maybe you'd be, you know, Hong Kong.
It. These things are kind of important to think about how shipping and importing breaks down. Mm-hmm. Especially if you're going to import or manufacture. Yep.
Al: And that ties [00:15:00] to the tariffs and stuff like that going on right now. Right?
Kristen: Yeah. Um, we have
Al: clients that are considering moving manufacturing locations just because of that.
Kristen: Mm-hmm. Or building new manufacturing locations
Al: because
Ashley: of that. Yeah. Yeah. All great points. Um, all right. So obviously there's lots of ways to get to a cost effective international strategy. I think it's easy to go all over the place. I think it's harder to not go all over the place, and I think, but I think that's where you're gonna be the most effective and best use of funds.
Because it can, to Dave's point, it can add up. Your US council is working with a foreign associate in every country in which you are filing, and so those foreign associates are experts in their country's laws, and so they're gonna have associated feedback and fees for what they need to do to make sure everything complies with their laws.
There's fees, there's US patent office fees, there's fees for the patent offices in foreign countries. And then depending on the [00:16:00] jurisdiction, there's translations. And so all of this can add up kind of a ballooning of costs if you don't, if you're not strategic about where you go and how you spend your capital.
So again, as you said in the previous slide, you gotta make a pros, cons list in all the places you're gonna make, and sell it and use it and import it where your competitors exist and all the things we talked about on the prior slide. So again, it's kind of like in the same, same realm. So strategy pointers, sales and use.
Think about where your target customers are. Think about competitor presence. Where are your co, where are your competitors, and would you enforce against them if they are there? Manufacturing, not thing That was interestingly brought up recently is that certain Asian countries have more significant China ties, so like Vietnam and Malaysia.
And so if you're manufacturing in one of those jurisdictions, there may be some bigger implications there with China having so much input into those countries. I don't know much more than that. [00:17:00] I'd have to research it more, but that was something interesting that one of our clients had brought up that.
They were considering fully shifting to India to fully get away from the, the influence of China and certain other Asian markets where you might otherwise consider manufacturing. Although Vietnam and Malaysia do have their own IP systems. Again, I'm not sure the interplay there, but something interesting to think about.
Distribution to Kristen's point. Think about importation and also there are, you know, there are other. Governmental bodies like Customs and Border Control, and the International Trade Commission in the United States, or other ways to enforce IP rights at Borders. So that's also an interesting thing to be thinking about, even outside of ip, right?
'cause you don't necessarily have, I mean, well, I guess related, right? You'd probably have to have some kind of IP rights in that country to be able to use those governmental agencies. And then exit strategy, as we talked about, what companies do you want to buy your company, if that's your exit goal, and where do they file ip?
David: So I was wondering, uh, when China was gonna come up, I think [00:18:00] we could probably do an entire PSM just on patents in China. Yeah.
Um,
David: but, um, you know, it kind of, it's interesting 'cause I think it ties together with all of this and what we were talking about just a minute ago, is that it also, what space you're in and the type of technology that you have and the type of manufacturing that you do can change the equation a lot.
So for instance, um, let's say you're a semiconductor. Fab, huge amounts of CapEx go into creating some kind of a factory like that. If they're doing that kind of manufacturing in China and you assert a patent against them and you wi, because it, I'm not an expert on patents in China, full disclosure by far.
But what I've heard is that. The patent system there is relatively fair and relatively friendly, even to non-Chinese entities. The damages can be relatively small, but they take, they take these things seriously and it's relatively fair, so you can get. Positive judgments. You [00:19:00] can get a positive judgment on a, on an infringement case against somebody else, but the problem is, if you're using a cm, let's say, to build a plastic toy or something like that, they can just shut that company down and pop up as a new name, new company, new cm, new address, everything with it.
I, from what I've heard, at least relatively easily, low CapEx, fungible, fungible kind of manufacturing that you can do lots of different places easily. Um, and so it de that is an example where it really kind of can depend on your particular technology area. Yeah.
Ashley: Yeah. That's fair. That's fair. Well, and the other thing too that brings us brings up a good point too, Dave, if you have method of treatment, I.
Part of your innovation is a method of treatment. You have super limited places where you can go now, you know, US and Australia for sure, and then in other jurisdictions you can maybe rework it as some kind of secondary use claim for compositions or a device configured to have certain functions or something like that.[00:20:00]
But you know, when you start getting into the biotech, pharmaceutical kind of spaces, medical thinking about kind of what that strategy is too, and if that limits. Where you can go.
David: Yeah. And Europe has its own STR rules about that, that are very different from the US in terms of Right. Uh, therapies and things.
Right? Yep.
Ashley: Yeah, and I think we, I think I'm going to do a PSM on that later this summer, like method of treatment stuff. So. Stay tuned. A foreign filing deadline, you must file internationally within one year of your earliest date. And this, I think, surprises a lot of people too. A lot of people get to that, you know, get close to that one year date and they're like, can I just do the US now?
We'll think about internationally later. And it's like, no, it's kind of now or never for this material. The other thing that catches people off guard is that if you've been publicly disclosing your technology prior to your earliest date. [00:21:00]Then you may also have lost your foreign filing rights, and there's a lot of different grace periods.
And again, that could be its own whole talk around. Which countries have grace periods, which countries don't like. China and Europe do not have grace periods. Some countries have grace periods, but it's relative to the international filing date, not a provisional filing date. So it gets really messy really quickly.
And so as soon as you learn that a client has done some public disclosure activity, then it's like, okay, well what did they do and when and how does that map to all the countries that they're interested in? Even if that filing is. Much further away. And how do we preserve as many rights as we can now to get them the protection that they want in all the different places so it becomes kind of a quicker strategy session and may meeting earlier discussion about this than you had planned on.
Quick. You know, obviously for different patenting pathways, you can go straight to an international application. You don't have to step through a provisional or you don't have to step through a non-provisional. You can go right and [00:22:00] file international application day one. It pens for 30 months or 2.5 years.
You can also go from non-provisional to international. Again, if you're in the patent Cooperation treaty, which we'll talk about more later. Other countries respect other countries non-pro provisionals. And so it becomes that stake in the ground priority document for the later international application.
But you can also do the provisional, which only certain jurisdictions have that the US being one, and again countries in the patent cooperation treaty, respect that provisional. And so you can claim priority to that and do your international application off of that. So lots of different ways to get to the same end point.
So, you know, in thinking about where to foreign file, it is important to remember. I think this is one of those hidden things where if you haven't had to deal with it before, it's easy to catch you off guard. But in, again, the global economy, there are, you know, you're working with people who are resident in China, you're working with people who are resident in India, [00:23:00] and if that's the case, you may need a foreign filing license in the US or in that jurisdiction first.
And so really monitoring where invent inventive activity is happening. Where people are resident people's nationalities and figuring out whether you need a license or not. You know, when is this gonna come up? I don't think patent offices are really looking at this or anything, but in theory, in litigation it could come up as an invalid filing 'cause you didn't have a license.
It could come up in maybe some kind of deal when they're doing their due diligence and they come across the fact you didn't have a license. And so it's not valid. So it could really sync sink you at later times. Um. I don't know if anybody has any experience with the pitfalls
Kristen: that for,
Ashley: well, certain,
Kristen: certain countries come with jail time for the inventor.
Yeah. Yeah. They don't get their foreign filing license appropriately, so it's a real deal.
Marie: Mm-hmm. Yeah. I think some of the, [00:24:00] yeah, the punishments run from jail time for to, for the inventors to the fact that you. Can't ever file in that country again. I don't know. I mean, I, I'll ask if anybody's had this experience.
I don't know if during litigation. Even if you didn't get a foreign filing license and you didn't file in that country, that was kind of your punishment, so to speak, for not doing it. If it still can be kind of a negative thing for the patent that you did not mm-hmm. Properly do that. I mean, in the United States, if you don't get the foreign filing license right, you can't.
What I think the punishment is this you can't file in the us Is that it?
Ashley: I don't how much They're all closer. They're looking at that. That's, that's the thing. Like it's something you should do because you know, you don't, the consequences could be there, but I don't know. I don't know who's keeping track of [00:25:00] this stuff, you know?
Kristen: You know, the point is it's discoverable, so you know, you don't want the most negative thing to happen to your client, so
Ashley: No, for sure. But like no patent offices outside of that like litigation account we were talking about. I don't think governments are monitoring whether you did or did not. Right. And whether I don't think patent officer are looking that closely at, so it's interesting.
It's like something you should definitely do, but at the earliest stages, nobody's paying attention. It feels like I. Right. I mean,
Kristen: well, I think, I think national security sort of stuff, they would be, I think they have, they are combing patents for those sorts of things. They're, yeah. For
Ashley: secrecy. Yep. Yeah.
Kristen: Yep.
Marie: Yeah, that's fair. I think it just looked, to me, it just looks like poor prosecution, but that's just kind of Yep. My slop opinion. Mm-hmm. Yeah. Sloppy that you didn't pay attention. I mean, I, I had a client who just decided they weren't going. To do it. I [00:26:00] think the pa it was Greece and I think the penalty was you couldn't ever file in Greece and they didn't care, so they were good to go.
I mean, I, I, I have trouble with that because I think it just doesn't look good if somebody down the line really scrutinizes things. But I don't think there was more of a quote unquote punishment for not doing it than that, so, yep.
Ashley: So once you get all that in order, um, you know, for foreign filing, you can do direct national filings through what's called the Paris Convention.
Um, I would recommend this if you only had one jurisdiction in mind and you were okay with spending more money up front. If you wanna delay cost, the Patent Cooperation Treaty, which is that international application. That gives you another 18 months or 30 months total to make decisions. So it delays cost and that protects your rights in 150 plus countries.
It's constantly changing, but it's always 150 plus. And so that's kind of the mark that I use.
Kristen: Um, so I guess [00:27:00] we would say protects your ability to file in 150 countries. Right? It wouldn't necessarily. Be protected,
Ashley: right? Yep, exactly. You still have to go into that country if you want protection, but you kind of keep that up.
We always. I always tell clients an it's an option card, that extra. So, you know, a US filing fee, I think now is, do they change it again to seven 30 or something? I don't know. It changes every week, I feel like. And A PCT cost, you know, is three to four X that. So somewhere between 3000 and 4,000 or 20 504,000.
And so you're basically buying an option card, right. I don't know what, I don't know right now, but I want the ability to file in those countries later. So I'm gonna pay the extra money now for that option, but it's not as much. As if I had to enter all those countries today. Uh, so application overview for the Patent Cooperation Treaty or PCT application, it's filed, um, via the World Intellectual Property Organization or wipo.
And again, it depends for 18 to 30 months, depending on [00:28:00] when you pull that trigger on that filing. You know, if you do the provisional or provisional year and then within that year do that. PCT, then the PCT is 18 months and your other filing was 12 months. Um, again, gives time for planning, country selection, delays, cost delays, ballooning of your budget, and then obviously you can claim priority back to those original documents because it is part of that treaty and, and the process.
And we'll talk a little more about provisionals in a few slides. Um, so yeah, that's, mm-hmm.
David: I don't know, and maybe that's one of the things I think that works pretty well for startups. Mm-hmm. Particularly in small companies. If you're like at a seed stage and you file your provisional, it gives you kind of a year.
Uh, and then you can file a PCT. Yep, which gives you another year and a half, and then you're kind of getting more funding, seeing where you're getting traction, developing all of your business relationships. At that point, you don't know which countries you might be interested in. It's [00:29:00] not maybe enough time for a lot of coun companies, but because of it so costly, I feel like this PCT really does add so much value and give companies so many options that they wouldn't have otherwise, which I think is why it's so.
Popular, right?
Ashley: Yeah. Oh, 100%. So you know if you are going to file A PCT, so things to consider is that all countries are the same. Some countries like China and Europe, and maybe even Japan have much more explicit support requirements. And how have you said things in the spec? And if that exact language was in your claims, would you be okay with that?
And if you're not okay with that, then you need to adjust the spec language and or provide more spec language that would be more appropriate for your claims. Also, certain jurisdictions don't like the removal of elements that otherwise seem to be required. And so if you want the application and the claims to be read more broadly, you need to include more examples or paragraphs where your [00:30:00] invention is super stripped back of just, you know, the true most simplistic core elements and then you add in different ones over time.
And that's like a big issue in Europe. So just thinking about that, you know, where might your client want to file? And how can you best set them up for success? Now when you're drafting in the US in the PCT, there is no excess claim fees. So you can include lots of different claim variations, again, to kind of hedge against some of those intermediary claiming issues that you might experience.
But you do pay for extra pages above 30, and I think it might be up to 16 or $18 per extra page above 30. So. Even though there's no excess claim fees, you can still run up the cost if you include, you know, 10 pages of claims. And then again, just wanna do careful planning because it's a, it, it is still a good chunk of money that can have lots of upside, but if corners were cut, can, there can be some more downsides.
The timeline, as we said, wipo, the World Intellectual Property Organization is the ultimate entity that is [00:31:00]reviewing these applications. But you have, you file it with a receiving office and the white and Wipo can be the receiving office, or you can find one that's, you know, within closer to your jurisdiction.
So the U-S-P-T-O, for example, can be a receiving office, but it does need to be competent based on the applicant. So if the inventors are US residents, you know, I can't remember all the ones that are competent, but the Canadian Patent Office probably is the US one. It's reasonably broad. If you're a European entity, Europe, EPO, European Patent Organization or office is competent, but I don't believe the US one is.
And so we started getting international. Clients, you gotta consider which receiving office. And then when in doubt, just file directly with Wipo. That's also an ability just to file directly with Wipo and bypass all of that, the searching authority that you select as part of this process. So again, you can choose whatever searching authority you want.
You know, there's US searching authority, Europe, Russia, [00:32:00] China. Some other ones, you can select them and they will issue a search report and written opinion, which is your first glimpse at patentability of the claims, at least the first invention as deemed by the searching authority. Though that patentability assessment is not binding on any subsequent office, but it is, like I said, the first glimpse.
And you may wanna adjust your claims depending on what art they find, and. The quality of that search will is dependent on which searching authority that you select. I would argue that the US is kind of like middle of the pack in terms of my, you know, the kind of art and quality of art they find. I would say that Europe is a pretty good, they find some good stuff and then like Russia, I probably put them a little bit, you know, it's cheaper if you wanna save costs.
It is cheaper to have Russia search, but it may not find all the most relevant art. And that's, even if Russia was let back in, I think they like kicked them out with their invasion of Ukraine. So I don't even know if Russia's an option right now. Anyways, I digress. [00:33:00] Anybody have any thoughts or comments on that?
David: All pretty straightforward. I guess like a question maybe for everybody. It's a little bit of a corner case potentially, but if you, if you think you might be subject to a secrecy order. Hmm. And you want to file a PCT first before a non-provisional US application. Would you recommend that they use the US if, and it's a US invention, U US inventors, um, would you suggest that they use the US as a receiving office?
And will that, will that cure cure any issues? If it, if there is a se, if they do determine there's a secrecy order?
Kristen: It depends if you have another inventor on there from another country that also has the same requirement. Mm-hmm. I believe filing the PCT is your only route. Um mm-hmm. And that absolves you, I believe, from that foreign filing license.
Mm-hmm. But I don't [00:34:00] know who you pick as the search authority.
Ashley: I don't
Kristen: know if it matters.
Ashley: Does that impact who you select as your receipt? Like if the whole foreign filing is, that's interesting. So the foreign filing license implications there too, if you went right to A PCT, do you have to file it with Wipo then so you wouldn't have to otherwise get I would.
'cause
Kristen: I think that's the only way you can absolve yourself from getting that foreign filing license. Yeah. Oh, interesting.
David: Hmm. Wow. That that is a quagmire. If you have two inventors in different countries and both countries are like, no, this is secret.
Kristen: Yeah, you can't share anyone else, or you have to file first year.
Yeah. Mm-hmm.
David: Yeah. Interesting.
Kristen: It's a real thing. Yep. I believe I've run into that in India. I've run into that in Russia. I've run into that one other weird country it, but it just, it was just a, happened to have different nationalities on the inventor and both countries required first filing. So the only way to get around that is either [00:35:00] handle the foreign filing license or file PCTI.
Ashley: But the secrecy order, like let's say it was, you know, a, a Russian defense system. Can Russia put a hold on Wipo to the publication for them to assess it internally? Then I don't know. I don't know. Hmm. Dave, I feel like you need to look into that and report back next time. Okay, got it. Who, who needs to get homework on PSM?
Yeah, so choosing, so obviously there's some interesting, you know, questions we had about choosing the right receiving office, but choosing the the right ISA, honestly, I mean, I would choose for whatever aligns with your primary market, but like we had a client one time who was short on cash. Temporarily, but wanted to get it filed and so we did Russia as a searching authority, like as it was the cheapest option that was, that could be used at that time and, and we knew that we'd be going through US prosecution and would be, you know, [00:36:00] adjusting it.
We also have a client that does a lot of work in Europe and so they do actually Europe as a searching authority because it quickens your timeline to prosecution because that search report that's issued ends up being the first search report. Facts levied by the European Patent Office. So it might compress your prosecution timeline in Europe, which can be somewhat ridiculously long.
So then when entering national stage, again, you have to do it within by the 30 month deadline. Some countries have a 31 month deadline, or you can late file the translation at 32 months. So there's some flexibility there. Safe to say that roughly speaking, 30 months is your deadline, so you kind of gotta choose.
Countries by that point. Again, pay attention to the fact that there's national filing fees, there's translations, there's local council costs. Some countries have maintenance fees or annuities during pendency. The ones that come to mind are. Europe and Canada. Europe is rather expensive, so every [00:37:00] single year, Europe is dinging you to let that patent application sit there.
So it does behoove you to try to encourage expeditious prosecution. They have a PACE program and things like that that you can kind of encourage the European Patent Office to pick it up sooner. And then all countries, as far as I'm aware, have annuities after grant. Not necessarily including design patents, but utility patents for sure.
And I will say, I'm not really touching on design patents here. Design patents do have their whole, they have a whole international strategy and stuff too, and I feel like that's a whole nother can of worms. But suffice it to say that you can't also internationally file design patents, but I'm not really touching on that today.
And then again, your national filing becomes a separate matter. It has a separate, you know, a serial number will become a separate patent. We'll have separate associated costs. So it's really its own entity at that point. And then, so if you don't go the patent cooperation treaty route, that whole international filing that preserves your rights for 150 plus countries that you later [00:38:00] select if you go direct filing to a country through the Paris Convention.
You have to do that within that same 12 month period. Again, any foreign filing has to be done within 12 months of your earliest date. It can be faster, of course, 'cause you're going directly into a country. There's no 18 additional months of pendency, but it could be more expense upfront, depending on the country.
And, but also maybe the only route for countries like Taiwan. Taiwan is not part of the patent cooperation tree, which is the most notable one I can think of. But, so it is an option. But again, if you wanna delay costs, the PCT makes more sense. If you know that China is the only other market you wanna file in, then I'd say go right to China.
You're not gonna save anything or you know, or increase the budget by waiting. So we kind of touched on you briefly on the provisional, the danger of the provisional patent application strategy and what it can mean abroad for your other filings. So again, filing a US provisional does start the clock for your foreign filings, right?
[00:39:00] 12 months from that provisional filing date you have to foreign file, you know, certain other jurisdictions do have, might have more rigorous or strict standards around support in provisionals. And so, you know, think about what your provisional said. What your non-provisional is saying and how those align and whether you can actually truly claim that priority date from that provisional and how much benefit does that provisional provide.
Like we had a case, I was actually in an opposition proceeding for a client several years ago now where the technology had just changed and so their later filed European patents, tried to more broadly. Capture their new innovation while their provisional was more restrictive. And so through the opposition proceeding, we were still able to get claims, but they were much more restrictive and it was less, had less coverage for their current product because the [00:40:00] provisional.
Was there older technology and while there were laundry lists, this is one of the, I know one about Europe. Europe hates laundry lists. If you have laundry lists of things in a provisional, Europe does not allow you to cherry pick from those and recombine them. Um, you can cherry pick one thing from a laundry list, but then you can't cherry pick from another one.
And it's just, yeah, you gotta, again, have those embodiments, have those like nicely packaged. This is one example of an invention. This is another one from really broad to pretty narrow. So think about that. You know, again, provisional should be as complete as possible if you've got the time and budget. And so again, kind of talked about international, which is this way to preserve your rights for 150 plus countries, then select those countries and file specifically in those countries.
There are a few other organizations in the world that also function that way. So the European Patent Convention. Allows you to file one application with the European patent organization and then which, so it's one [00:41:00] filing for 39 member countries. And then once you get a grand with EPO, then you actually select countries.
In which your patent will be enforced or valid, right? So you say, okay, EPO, review this. Okay, I got a grant. Well now I really only want it to be valid in Germany 'cause that's my main manufacturing center. And so it's a way to kind of preserve rights for lots of EPO countries, but then narrow it down to the countries that really matter.
'cause every country you select in Europe will have its own annuity. So two times, whatever the cost is, three times, whatever the cost is, how much you're gonna pay every year once that validation happens, and it does include some non-EU, non-European Union countries as well. The other route is through the unitary patent system, which is much newer in Europe, so that is one patent for 18 EU countries.
If you really want broad European coverage, this could be a good deal for you. However, in my experience. Because it does not cover a few key European markets, [00:42:00] especially the UK 'cause of Brexit. If you're not interested in four or more member countries, it doesn't financially make sense. So if you wouldn't file in four or more EU countries, or have, if you want rights in less than four countries.
I wouldn't do the year. The unitary patent financially doesn't make sense. Obviously there's the big, like other question mark of just how are they gonna treat patents and things. That's supposed to be reasonably patent friendly. But I don't know what the data is on that yet and how much data there is. I dunno if anybody else has thoughts on traditional validation versus the unitary patent system.
I know it's fairly new, but that's, this is kind of my view of the world
David: I agree with, with every Oh, go ahead Ashley.
Kristen: Just one. And that's, that's basically. Uh, if you go with this unitary, unitary patent setting and your patent is litigated and shot down and you lose, it's gone in all 18 EU countries.
That's fair. You kinda uphold Yeah. If you go in the other direction. [00:43:00] With the EPO direct and you, you've got Italy and you've got Germany and you've got five other countries, you, you have to separately litigate in each of those countries in order to get your patent knocked down and knocked out. Mm-hmm.
So there are benefits, but there are risks.
Ashley: Yeah, that's fair
David: point. Exactly what I was gonna say, Kristen, it. Pros and cons. Yep. Yep.
Ashley: Great minds. So again, use EPO for multiple countries or if you know undecided on scope, you can go directly into particular European countries. You don't have to do it through epo, but in my experience, I mean, it depends on the country.
It can be more expensive actually. So for example, we had a client at one point who thought about going directly into Germany. And it was actually more expensive because with, if you go into Germany, you have to translate the whole spec into German, I think. And so. Direct filing, you know? 'cause right now with epo, you go in with a US specification and then you just [00:44:00] have to translate the issued claims into French and German, I think.
But if you go directly into some of these countries, you actually have to translate the full specification. That's also true though, for validation, that I think if you validate in Spain and maybe even Italy, you have to translate everything. You can't just translate the claims. So every country's gonna have its specific requirements.
So again, that's another like. Funnel point of strategy of where does it really matter to validate and what are the cost implications of validating in all these different countries? And that's where maybe the unitary patent system would make more sense than again, if you have lots of expensive countries.
Africa also has an option like this. You can go into a repo, but so it is a regional system. Just like EPO. You file once for multiple African nations. And again, this is great if you're not quite sure how you're going to commercialize in your OR in Africa. So we've used this for one client. Obviously Africa's not always a top of mind jurisdiction, but for those emerging markets or technologies that are meant to.[00:45:00]
Work in developing nations. You know, it's good to remember that repo kind of has a similar process as Europe, and then I'd be remiss not to touch on divisional practice. So in the US, and that's kind of what Dave mentioned earlier, we do have continuation practice in the us, which means you can keep on from one original patent, keep on getting additional claim sets over time to get.
More patents of varying scope or to protect different inventions that are all in that original specification the same. Is not technically available in other countries, but it is in a little bit different way. It's called divisional practice, and I think the key difference there is that you know, they do need to more clearly be inventively different if a foreign office believes that your prior issued patent and the new claims you're trying to get are two.
Like they share a similar inventive concept. There's no different inventive [00:46:00] concept. You're not gonna be able to get those new divisional claims. I know the US sometimes, like you'll get a continuation claim set and literally there's one word in the claim that you don't like, so you'll tweak that one word and throw it back in.
I don't think that would work in a lot of foreign patent offices. But now, if you have lots of different inventions, system claims versus device claims versus. How the software works in some kind of method, like claims or something, then you know, that's great and right for divisional claims. The biggest consideration that I can think of is that one, there are certain practices where you need to preserve your rights in certain countries by, I think, presenting more of the claims upfront.
And then also consider cost. So Europe is the one that comes to mind where if you file a divisional in Europe, you have to pay annuities all the way back to the beginning. So it's not like, oh, from this date of my divisional filing, I now need to pay yearly fees for this. Dependency. I need to pay it as of this date, but I also need to pay for [00:47:00] all the time that it could have sat there.
So it's kind of crappy, I mean, frankly, but it is what it is and I don't know if it's gonna change. And a divisional in Europe could easily be $11,000 when it, if you, if it were the first claims that you filed, it would've been like five or 6,000. So it can be quite costly. So yeah, that was a lot. And really just like the tip of the iceberg, I feel like there is no global.
One patent that protects you everywhere. They are very, patents are very jurisdictionally, restrained, or contained, however you wanna put it. So if you want to protect your rights in a particular country or jurisdiction, you need to get a patent in that particular country or jurisdiction. Use these different treaties or conventions, the Patent Cooperation Treaty or the Paris Convention.
Use them to match your business needs. If you know what you wanna do up front. You can limit expense by going directly into different places. If you're not sure, buy an option card, do the PCT path, but again, 12 months is your deadline. And be careful about public disclosure prior to any filing. 'cause public disclosure [00:48:00] prior to any filing can really be problematic.
And then obviously think about budget. You know, you can't rely on your council. I mean, we try to provide as much data as we can upfront. And I was gonna, Kristen shared some great. Graphics about costs, and I didn't wanna scare people,
but, you know, just don't expect people to manage your budget for you. Ask the questions, get the data so that when you jump into these places, you know what it's, you know what's gonna look like over whatever time period you plan on holding this before you exit or sell the ip. So that is it. Thanks for hanging with me everybody.
That was quite the smorgasbord of information. That
Kristen: was good. I only have one question to tie. Mm-hmm. The international search report concept at the PCT level to the US Patent Office. Mm-hmm. So I wanted direct this question to Al because Al used to be an examiner Ooh. [00:49:00] Put on the spot a
Al: while ago. Yes.
Kristen: But when you picked up a US case to examine, what reliance did you have on the international search report if there was a counterpart PCT filing and how'd you use it?
Al: I, I don't think there was there much reliance. I, I don't recall. I don't, I just, um, I think a lot of that stuff, even the related other. Countries if it's filed in like an IDS. Right. The, those reports, like you're not using it as the end all be all, you're just looking at it for the references and see if they're close.
Right.
Kristen: Okay. It cuts,
Al: cuts your time a little. Helps you narrow it down a little. So your full
Kristen: review Yeah. Took your full review just like normal and, okay. Well that's good to know.
Yeah, that's,
Kristen: I, I have clients ask that, you know how well. Search report [00:50:00] says this, and in the US this happened and why didn't they consider this?
And you know, yeah. So just, just good to know from one source.
Al: But I would wonder if, uh, if, I mean, I don't think they give them to the same examiners, so that's, that's the thing. I'm not sure. No.
Kristen: If it was a US searcher on PCT, I believe those are contractors. I don't know that those are us. I don't think
Al: they.
Yeah, I don't think I've ever seen it directly. So,
Ashley: and I've even, I mean even with PPH though, patent Prosecution Highway, things that we've done recently, you know, in theory that's like a quick win, right? Like you get an allowance because like it's already been looked at, but more often than not lately, it maybe has, maybe it expedited your review, like it gets picked up quicker.
But we've had still office actions being issued, so you know, which clearly shows a dissidence between. What was was said in the search report versus what the US Patent Office thinks. [00:51:00]
Marie: I think, um, one thing that I've kind of, at times battled, I wanna say is when you, um, you do a PCT, you get your international search report, and over the years there's this article 19 amendments, article 34 Amendments, and what you can do, and then what do you do when you go national stage in.
I because of all of these comments that were just made. Yes, we file, particularly in the US you cite all the art. But when you go into other jurisdictions, the claims can be looked at differently. So I've always very much hesitated. I mean, I have, I worked at one firm where they would just blindly align the claims in the foreign jurisdictions with what they had in the US before they ever, I just didn't understand that.
You can't make the assumption. Mm-hmm. And I think we've, I mean, I've been in the position where I, my case in the US may have been allowed and then Japan. Because of the delay 30 month [00:52:00] deadline and prosecution delays from when the US case was originally filed, we'll come up with a really good piece of art that was in the far East.
It was either from Japan or from Korea, which the mm-hmm. Us. Examiner, no offense as a former examiner sitting in the room here, but the US examiner never saw. And you look at this and you go, you know, you kind of go, uh oh. Right. So I think we've all been in that position. So, you know, one of the things I think in this whole discussion.
Brings to light is you really need to take each jurisdiction independently and you can't assume that one thing allowed and one is gonna be allowed or another. Mm-hmm. I look at PPH H as a way to cut the line. So if you can align the claims and it's not a terrible thing, like you're not making huge changes, but you can maybe advance or.
Quicken the prosecution in that jurisdiction for basically no money. It's the cost of the legal fees, right? Yeah. If that's important, then you know, [00:53:00] otherwise you don't know. You may do that and they may blast you or you know, I think this is a long time ago experience was Canada and Australia tended to file the US.
If you follow
Marie: PPH thereafter, US allowance, high probability Europe, I felt like quite honestly, they'd like give you the finger. You think we don't care?
Ashley: Yeah. I mean Europe, we've been advised with our European Council to not do, I mean do the PACE program. It's like $150 for them to file a form that basically says, Hey, patent office, can you pick this up sooner than you otherwise would.
But to your point too, Marie, one thing that I've kind of seen, and I totally agree with you, that whole like just carte blanc, let's just align everything can be dangerous because certain countries are not. As willing to allow you to remove language from claims as they are in the us. Like if in China for like we, we inherited a portfolio, you know, in the last half year or so, and some of the claims are just more restrictive [00:54:00] than I would like them to be.
Much more wordy. But you know, at this point in prosecution we're hand tied. Like I went through and marked up like, this would be my dream claim if we could get rid of all of this. And the foreign associate was like, yeah. No, don't. Let's, we're not gonna try that. Not happen. A lot of it was just minor stuff, right?
But it was more like, let's just wait for the divisional to do that. They're not gonna let us do that at this point. So you do have to be like very incremental and strategic about what you're putting into those claims is your ability to pull them back out is limited.
Marie: And also with the. Article 19, article 34.
Mm-hmm. Amending of claims. When you do go national stage and you have to do translations, it's a real burden because I, I think you need to translate the original application as well with the original claims, and you have to translate the Article 19 amendment. It becomes,
yeah,
Marie: it's costly in many jurisdictions to do those translations, and I just found it cumbersome.
I felt like I [00:55:00] had all this. Junk I had to bring with me just to enter the national stage where it would've been easier to either just leave the claims as file and see what your first action was. Mm-hmm. Or amend at national stage if you wanna clean 'em up, or multiple dependencies or whatever. So.
Ashley: Yeah. I think the best strategy that we've seen, and probably we've implemented, sometimes if you get like a really good reference in the search report, like they call like an X reference, right?
Where it's, and then, and you review it too and you're like, Hmm, that's a really good reference. Then maybe when you enter national stage, maybe you tweak the claims to overcome that reference, right? You say, okay, I wanna request exam or whatever. So I'm, I'm gonna tweak it a little bit because I already know this thing is out there and, and even if that office doesn't assert that reference, that reference exists and, you know it's close.
Yeah. Yeah. So it behooves you to, you know. But there's
Marie: logic behind it.
Ashley: Yep. Yeah, exactly.
Marie: Exactly. There's some thought behind it. So, which
Ashley: actually is, um, [00:56:00] one other point that I guess I didn't mention, which I should have for like the benefit of the, the audience is that exam isn't always requested either at the time of filing, right?
So the US and Europe, generally speaking, you're requesting exam at the time of filing in a lot of other places, you can delay that exam request up to like, I think China is technically six months or three years total or something like that. And then Japan and you know, other places, it can be upwards of three or four years from your national phase entry date.
So I think that surprises people sometimes too, like how long these timelines are, but you can also move that up and request exam sooner. Um, I. But yeah. Cool. This was, this was a nice, lively discussion. Thank you everybody. I had to laugh a little bit, Al, when you said, when Kristen put you on the spot, you're, you're responsive.
I cannot recall. He's on the stand. I recall, I shoulda
Kristen: been a politician on November 5th. You can plead the fifth.[00:57:00]
No, I, I apologize, but I figured it would be something you could. Speak to, so you did well. It was great.
Ashley: No worries. Quiz and homework from A PSM today. I mean, it is
Al: like, it's just like Europe, right? We, we don't care about what other people are doing, really.
Marie: I mean, that's fair enough. I've always felt about Europe. So I do these things and go, they're, they're just gonna say. Great. Exactly.
Ashley: So true. Well, awesome. Have a great day everybody. Thanks for coming on. You too. Thank you. Thank you. Thanks, Ashley. Bye. Bye. Bye.
Josh: All right. That's all for today, folks. Thanks for listening, and remember to check us [email protected] for more great podcasts, blogs and videos covering all things patents, strategy.
And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed. Email us at [00:58:00] [email protected]. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.