Patent It Yourself - PDF Archive

ChaPter 12 | Going ABROAD | 333
The easiest way is to use an Internet search engine, for
example, by entering “patent agent [name of country].”
Another way is to look in the telephone directory of the
city where the patent office of the foreign country is located.
Most large libraries have foreign telephone directories.
Another simple way is to inquire at the consulate of the
country; most foreign countries have consulates in major
U.S. cities and these should have a list of patent agents.
A fourth possibility is to look in the Martindale-Hubbell
Law Directory (in any law library or at www.martindale.com),
which lists some foreign patent agents in each country.
A fifth possibility is to hire a local patent attorney to do
the work for you, although this involves an intermediary’s
costs. Because of the complicated nature of foreign filing,
many patent attorneys even use their own intermediaries,
namely, specialized patent-law firms in New York, Chicago,
or Los Angeles, which handle foreign filing exclusively.
A sixth possibility is to hire a British firm of patent
agents to do all your foreign filing. The reason for this is
that they speak fairly good English and they’re familiar with
foreign filing. This would be especially appropriate if you’re
filing with the EPO, but most German agents in Munich,
although not as fluent in English, have the compensating
advantage of their physical proximity to the EPO.
Whichever way you find your foreign patent agent, be
careful, since many foreign agents are bound by a minimum
fee schedule, which is sometimes exorbitant. Also, keep
in mind that some foreign patent agents—like their U.S.
counterparts—are incompetent or inclined to overcharge.
4. Written Materials
As you’ve gathered by now, filing abroad can become very
complicated. If you want to learn more, and get the latest
information (if the print date of this book is old), including
the laws of each country, see Patents Throughout the World,
by Anne Marie Greene (Clark Boardman Callaghan). This
book is revised annually, so be sure you have the most recent
version. Also, you can call the consulate of any country
to get information on their patent laws. For more information
on how to utilize the PCT, “The PCT Applicant’s
Guide,” “Basic Facts,” and other instructive materials and
forms are available online at http://www.wipo.int and from
the PCT Department of the USPTO. The World Intellectual
Property Organization (Post Office Box 18, 1211 Geneva 20,
Switzerland) administers the PCT. (For more information
on the EPO, see Section D, above.)
Bonne chance et au revoir!
N. Summary
A U.S. patent only provides a monopoly in the United States,
so it is necessary to file for corresponding foreign patents
in any other countries in which you want offensive rights.
Foreign filing is very expensive and few inventors who
foreign file ever recoup their investment, so an inventor
should foreign file the application in a country only if the
invention has extremely strong commercial potential there.
Various conventions govern foreign filing. The Paris
Convention grants anyone who files a basic application in
any member country the benefit of the basic filing date in
any other country where a corresponding application is
filed within one year.
The European Patent Office enables one to file a single
patent application and get a European patent that is valid in
any European country, provided the Europatent is registered
in and translated for each country.
The Patent Cooperation Treaty (PCT) enables a U.S.-
resident inventor who has filed a patent application in the
PTO to file a PCT application in the USPTO within one
year and have it searched and examined to determine
patentability and delay filing of national stage applications in
foreign jurisdictions for 30 months from the U.S. filing date.
Other countries, such as the Republic of China and
Thailand, have individual treaties with the U.S. that work
similarly to the Paris Convention.
An inventor who files a U.S. application must wait six
months before foreign filing, unless the PTO grants a
foreign filing license, which it usually grants on the filing
receipt. The laws of other countries are different from the
U.S. in certain respects—for example, some countries have
no interferences, no one-year grace period, and no patents
on drugs. Some countries have maintenance fees during
pendency, hold opposition proceedings, and companies
can apply for patents in the name of the company or an
assignee.
There are several routes for filing abroad, but most
inventors file in the U.S. first, then file a PCT application
within a year, then file national-stage applications within 30
months of the U.S. filing date. An inventor can file a PCT
application in the USPTO by completing the PCT forms and
filing an A4 copy of the application with the appropriate fees.
You can file a PCT application on paper or via EFS-Web.
If an inventor files a U.S. application with a Nonpublication
Request, the inventor must revoke this within 45 days of
any foreign filing. It is necessary to hire a foreign patent
agent in any jurisdiction where a national-stage application
(in an individual country or in a regional office like the
EPO) is to be filed.
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