R Bays - Comparative Patent Registration

Comparative Patent Registration Processes in
the US, UK, and EU Markets
MC Law Presentation 2013
Richard Bays JD, MBA, RN, CPHQ
© R Bays 2013

Introduction
While we may not consciously realize it, patented inventions are all around us. We
use cellphones, home appliances, automotive technology and many other things in
our daily lives that at some point an inventor had secured a patent for.
Patents for an invention grants a property right to the inventor by the government.
This is the right to exclude others from making, using, offering for sale, or selling
the invention in the country in which the patent is filed. On a larger scale,
international treaties provide for patents to be recognized and protected in multiple
countries.

Introduction
Apple v. Samsung 2013
Patents are valuable property and subject to heated litigation to protect these rights.
Currently, a patent dispute in federal court in San Jose, California, is ongoing
between Apple and Samsung involving technology used for smartphones.
In the first of two lawsuits, a jury awarded Cupertino, California-based Apple, $1.05
billion in damages (later lowered to $639.4 million) finding Suwon, South Korea-
based Samsung, infringed six of the iPhone
maker’s mobile-device patents.

Introduction
The protections afforded by a patent are only applicable
in the countries that issue the patent.
Therefore when registering a patent it is important to
consider where to file, the scope of protection offered in
that venue, timeframes involved and the costs associated
with the filing.

US Patent Process Overview
USPTO
The United States Patent and Trademark Office

What is a Patent?
A patent is an intellectual property right granted by the Government
to an inventor:
“to exclude others from making, using, offering for sale, or selling
the invention throughout the United States or importing the
invention into the United States”
for a limited time in exchange for public disclosure of the invention
when the patent is granted.

What is a Patent?
The right conferred by the patent grant is, in the language of the
statute and of the grant itself, “the right to exclude others
from making, using, offering for sale, or selling” the
invention in the United States or “importing” the invention
into the United States.
What is granted is not the right to make, use, offer for sale, sell
or import, but the right to exclude others from making, using,
offering for sale, selling or importing the invention. Once a
patent is issued, the patentee must enforce the patent without
aid of the USPTO.

What is a Patent?
A patent for an invention is issued by the United States Patent
and Trademark Office. The term of a new patent is generally
20 years from the date on which the application for the patent
was filed in the United States or, in special cases, from the
date an earlier related application was filed, subject to the
payment of maintenance fees.
U.S. patent grants are effective only within the United States,
U.S. territories, and U.S. possessions. Under certain
circumstances, extensions or adjustments may be available.

There are three types of US patents
1) Utility patents may be granted to anyone who invents or
discovers any new and useful process, machine, article of
manufacture, or composition of matter, or any new and useful
improvement thereof.
2) Design patents may be granted to anyone who invents a new,
original, and ornamental design for an article of manufacture.
3) Plant patents may be granted to anyone who invents or
discovers and asexually reproduces any distinct and new variety
of plant.

Patent Laws
The Constitution of the United States gives Congress the power to
enact laws relating to patents, in Article I, section 8, which reads:
“Congress shall have power . . . to promote the progress of
science and useful arts, by securing for limited times to
authors and inventors the exclusive right to their respective
writings and discoveries.”
Under this power Congress has from time to time enacted various
laws relating to patents. The first patent law was enacted in 1790.
The patent laws underwent a general revision which was enacted
July 19, 1952, and which came into effect January 1, 1953. It is
codified in Title 35, United States Code.

Patent Laws
On November 29, 1999, Congress enacted the American Inventors
Protection Act of 1999 (AIPA), which further revised the patent
laws. See Public Law 106-113, 113 Stat. 1501 (1999).
The patent law specifies the subject matter for which a patent may be
obtained and the conditions for patentability. The law establishes
the United States Patent and Trademark Office to administer the
law relating to the granting of patents and contains various other
provisions relating to patents.

America Invents Act
Leahy-Smith
The America Invents Act (AIA) is a United States federal statute that
was passed by Congress and was signed into law by President
Obama on September 16, 2011. The law represents the most
significant change to the U.S. patent system since 1952, and
closely resembles previously proposed legislation in the Senate in
its previous session (Patent Reform Act of 2009).
The Act switches the U.S. patent system from a "first to invent" to a
"first inventor to file" system, eliminates interference proceedings,
and develops post-grant opposition. Its central provisions went
into effect on March 16, 2013.

America Invents Act
Leahy-Smith
The AIA refers to the new regime as "First-Inventor-to-File (FITF)".
This new regime operates differently than the "First-to-Invent"
(FTI) regime and the various "First-to-File" (FTF) regimes in place
in other locations in the world.
Different outcomes can occur under each of these three different
regimes, depending on whether and how two different inventors
publish or file patent applications.

America Invents Act
Leahy-Smith
The law also expands the definition of prior art used in determining patentability.
Actions and prior art that bar patentability will include:
 public use,
 sales,
 publications, and
 other disclosures available
to the public anywhere in the world as of the filing date, other than publications by
the inventor within one year of filing (inventor's "publication-conditioned grace
period"), whether or not a third party also files a patent application.
The law also notably expands prior art to include:
 foreign offers for sale and
 public uses.

America Invents Act
Leahy-Smith
Applicants that do not publish their inventions prior to filing will receive no grace
period. The proceedings at the USPTO for resolving priority contests among
near-simultaneous inventors who both file applications for the same invention
(“Interference proceedings") are repealed, because priority will be determined
based on filing date.
An administrative proceeding called a “derivation” proceeding is provided to ensure
that the first person to file the application is actually an original inventor and that
the application was not derived from another inventor.

America Invents Act
Leahy-Smith
The America Invents Act included the following changes:
 Tax strategy inventions- Provides that any strategy for reducing, avoiding, or
deferring tax liability, whether known or unknown at the time of the invention or
application for patent, shall be deemed insufficient to differentiate a claimed
invention from the prior art.
 False marking- Eliminates false marking lawsuits except for ones filed by the
U.S. government or filed by a competitor who can prove competitive injury. In
addition, marking a product with a patent that formerly covered the product, but
has since expired, is no longer a violation.
In 2011 the United States Court of Appeals for the Federal Circuit clarified the standards for pleading False Patent
Marketing Claims, which had become a source of prolific litigation, by providing a standard that a false patent marking
complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent
expired.

America Invents Act
Leahy-Smith
 Filing by other than inventor- An entity can file an application on behalf of an
inventor who assigned or is under an obligation to assign the invention rights to
the entity (or if the entity otherwise has financial interest in the invention),
without seeking the inventor's execution of the application. Any patent that
issues belongs to the inventor absent a written assignment from the inventor or
inventor's estate to the entity.
 Best mode- While an inventor is still required to “set forth” the best mode for
accomplishing the invention, failure to disclose a best mode is not a basis for
invalidating or rendering unenforceable an issued patent. While the law formally
retains the best mode requirement, by making insufficient disclosure no longer
an allowable defense against patent infringement, the law renders best mode
unenforceable. (This has left many patent lawyers wondering why the
requirement was kept at all.)

America Invents Act
Leahy-Smith
 Prior user rights defense- If an individual/entity begins using an invention more
than a year before a subsequent inventor files for a patent on the same invention,
then the user will have the right to continue using the invention in the same way
after the subsequent inventor is granted a patent as long as the user did not
derive the invention from the subsequent inventor.
 These prior user rights are limited in scope and transferability, and they also
have limited applicability to patents held by universities.

America Invents Act
Leahy-Smith
 Micro-entity- The AIA added a micro-entity status. A micro-entity includes an
independent inventor with a previous calendar year gross income of less than 3
times the national median household income who has previously filed no more
than four non-provisional patent applications, not including those the inventor
was obligated to assign to an employer. A micro-entity also includes a university
or an inventor under an obligation to assign the invention to a university. A
micro-entity is entitled to a 75% reduction in many of the patent fees payable to
the US Patent Office during prosecution of a US patent application. The patent
office is expected to develop regulations to identify which fees will be eligible
for the reduction and how joint inventors may qualify as a micro-entity.
 Confidential Sale- Provides that confidential sales of products containing the
patented technology will no longer mark the beginning of the 1 year period to
file the patent.

What Can Be Patented
The patent law specifies the general field of subject matter that
can be patented and the conditions under which a patent may
be obtained.
In the language of the statute, any person who:
“invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent,” subject to the
conditions and requirements of the law.

 The word “process” is defined by law as a process, act or method,
and primarily includes industrial or technical processes.
 The term “machine” used in the statute needs no explanation.
 The term “manufacture” refers to articles that are made, and
includes all manufactured articles.
 The term “composition of matter” relates to chemical
compositions and may include mixtures of ingredients as well as
new chemical compounds.
 These classes of subject matter taken together include practically
everything that is made by man and the processes for making the
products.

The patent law specifies that the subject matter must be “useful.”
The term “useful” in this connection refers to the condition that the
subject matter has a useful purpose and also includes operativeness,
that is, a machine which will not operate to perform the intended
purpose would not be called useful, and therefore would not be
granted a patent.
Interpretations of the statute by the courts have defined the limits of the
field of subject matter that can be patented, thus it has been held that:
 the laws of nature,
 physical phenomena, and
 abstract ideas are not patentable subject matter.

 A patent cannot be obtained upon a mere idea or suggestion.
 The patent is granted upon the new machine, manufacture,
etc., and not upon the idea or suggestion of the new machine.
 A complete description of the actual machine or other subject
matter for which a patent is sought is required.

Novelty And Non-Obviousness,
Conditions For Obtaining A Patent
In order for an invention to be patentable it must be new as defined
in the patent law, which provides that an invention cannot be
patented if:
“(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for
patent,” or
“(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on sale
in this country more than one year prior to the application for
patent in the United States . . .”

If the invention has been described in a printed publication anywhere in the
world, or if it was known or used by others in this country before the date
that the applicant made his/her invention, a patent cannot be obtained.
If the invention has been described in a printed publication anywhere, or has
been in public use or on sale in this country more than one year before the
date on which an application for patent is filed in this country, a patent
cannot be obtained. In this connection it is immaterial when the invention
was made, or whether the printed publication or public use was by the
inventor himself/herself or by someone else.
If the inventor describes the invention in a printed publication or uses the
invention publicly, or places it on sale, he/she must apply for a patent
before one year has gone by, otherwise any right to a patent will be lost.
The inventor must file on the date of public use or disclosure in order to
preserve patent rights in many foreign countries.

Even if the subject matter sought to be patented is not exactly shown by the
prior art, and involves one or more differences over the most nearly
similar thing already known, a patent may still be refused if the
differences would be obvious.
The subject matter sought to be patented must be sufficiently different from
what has been used or described before that it may be said to be
nonobvious to a person having ordinary skill in the area of technology
related to the invention. For example, the substitution of one color for
another, or changes in size, are ordinarily not patentable.

Step by Step Guidelines

Step 1
Applicant - Has your invention already been patented?
• Search the Patent Full-Text and Full-Page Image Databases
• If already patented, end of process
• If not already patented, continue to Step 2

Step 2
Applicant - What type of Application are you filing?
• Design Patent (Ornamental characteristics)
• Plant Patent (New variety of asexually reproduced plant)
• Utility Patent (Most common) (Useful process, machine,
article of manufacture, composition of matter)

Step 3
Applicant - Determine Filing Strategy
• File Globally?
• Need international protection?
• File in U.S.? - continue to Step 4

Step 4
Applicant - Which type of Utility Patent Application to file?
• Provisional (Means to establish an early effective filing date in a
later filed non-provisional patent application )
or
• Non-provisional (Application is examined by a patent examiner,
and may be issued as a patent if all the requirements for
patentability are met)

Step 5
Applicant - Consider expedited examination
• Prioritized Examination
• Accelerated Examination Program
• First Action Interview
• Patent Prosecution Highway

Step 6
Applicant - Who Should File?
• File yourself (Pro Se)
• Use a Registered Attorney or Agent (Recommended)

Step 7
Applicant - Prepare for electronic filing
• Determine Application processing fees
• Apply for a Customer Number and Digital Certificate

Step 8
Applicant - Apply for Patent using Electronic Filing System as a
Registered e-Filer (Recommended)
• EFS Web
EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) Web-based patent application
and document submission solution. Using EFS-Web, anyone with a Web-enabled computer can file
patent applications and documents without downloading special software or changing document
preparation tools and processes.

Step 9
Applicant - USPTO examines application
• Check Application Status
• Allowed?
• Yes, go to Step 12
• No, continue to Step 10

Step 10
Applicant - Applicant files replies requests for reconsideration,
and appeals as necessary

Step 11
Applicant - If objections and rejection of the examiner are
overcome, USPTO sends Notice of Allowance and Fee(s) due

Step 12
Applicant - Applicant pays the issue fee and the publication fee
• USPTO Grants Patent

Step 13
Applicant - Maintenance fees due
 3 ½,
 7 ½, and
 11 ½ years after patent grant

UK Intellectual Property Office
IPO
United Kingdom

Patent Requirements
A patent protects new inventions and covers how things work, what
they do, how they do it, what they are made of and how they are
made.
If a patent application is granted, it gives the owner the ability to take
a legal action under civil law to try to stop others from making,
using, importing or selling the invention without permission. This
may involve suing the alleged infringer through the courts, which is
costly and time consuming because it involves expert legal advice.
The patent owner needs to be able to pay for this civil legal action and
advice themselves, although they may get some costs back if they
win their case.
If you have a granted patent, you must pay a renewal fee to renew it
every year after the 5th year for up to 20 years protection.

Patent Requirements
Your invention must:
 be new
 have an inventive step that is not obvious to someone with knowledge and
experience in the subject
 be capable of being made or used in some kind of industry
Not be:
 a scientific or mathematical discovery, theory or method
 a literary, dramatic, musical or artistic work
 a way of performing a mental act, playing a game or doing business
 the presentation of information, or some computer programs
 an animal or plant variety
 a method of medical treatment or diagnosis
 against public policy or morality.

Patent Requirements
Applying for a patent:
A granted patent will give you exclusive rights over an invention and you will be able
to try to stop anyone who uses it without your permission. However, patent
infringement is not a criminal offence, and therefore you will have to enforce the
patent rights yourself by taking a legal action under civil law - this can be costly
and time consuming.
To get patent protection your invention must be:
 new, not known anywhere in the world prior to filing
 have an inventive step, not obvious or a simple adaptation or combination of
existing products
 be capable of industrial application, having a technical effect

Patent Protection
Benefits of patent protection:
A patent gives you the ability to take legal action to try to stop others
from copying, manufacturing, selling, and importing your invention
without your permission. The existence of your patent may be
enough on its own to stop others from trying to exploit your
invention. If it does not, the patent gives you the right to take a legal
action under civil law to try to stop them exploiting your invention.
This may involve suing the alleged infringer through the courts,
which is costly and time consuming because it involves expert legal
advice. The patent owner needs to be able to pay for this civil legal
action and advice themselves, although they may get some costs
back if they win their case.

Patent Protection
The patent also allows you to:
 sell the invention and all the intellectual property (IP) rights
 license the invention to someone else but retain all the IP rights
 discuss the invention with others in order to set up a business based
around the invention.
The public also benefit from your patent because it is published after 18
months. Others can then gain advance knowledge of technological
developments which they will eventually be able to use freely once
the patent ceases.

Patent Protection
What if no application is made?
If no application is made to protect your invention, it will allow anyone
to use it and you will not be able to try to stop them. You may be
able to protect your invention by keeping it a secret but this will only
be possible if it would be difficult to copy the process, construction
or formulation from your product itself.

Prior to Application
Have you considered other forms of protection?
 There maybe other forms of protection, that are more suitable for
your invention, instead of or in addition to patent protection.
Does your product meet the requirements for protection?
 To be eligible for patent protection, your invention must be new,
inventive and must not be of an excluded type.
Is your invention new?
 We cannot grant a patent, if your invention is public, you should try
to find it elsewhere before applying for a patent.

Prior to Application
Are you the legal owner of your invention?
 A patent applicant may be an individual or a corporate body, and
persons can make joint applications.
Have you received enough advice?
 You can get confidential advice regarding your proposed application
from a number of different sources, such as patent attorneys,
solicitors, or our staff.
Have you considered patent protection abroad?
 A United Kingdom patent is a territorial right that only gives
protection in the UK. Consider alternatives if you are thinking of
protection abroad.
*Permission to file a patent application abroad may be required in some cases.

Patent Filing Costs
The normal amount we charge to process a UK patent application is
GBP £230 - £280.
If you decide to seek professional IP advice (from a Patent Attorney or
other representative) you will need to factor in the cost of this as
well. If the patent is granted, you must pay a renewal fee to renew it
every year after the 5th year for up to 20 years protection. Renewal
fees start at £70 for the 5th year and rise to £600 for the 20th year.

Patent Filing Costs
Paper filing
 GBP £30 (application fee) for a preliminary examination
 GBP £150 for a search
 GBP £100 for a substantive examination
Electronic filing/web-filing service
 GBP £20 (application fee) for a preliminary examination
 GBP £130 for a search
 GBP £80 for a substantive examination

UK Intellectual Property Office

UK Patent Process Overview
Step 1
Preparing a UK patent application
 Forms and fees
 Description of Invention
 Allowing others to see how it works and could be made.
 Drawings
 To illustrate the description.

Step 1
Preparing a UK patent application
 Claims
 Precise legal statements in the form of single sentences that
define the invention by setting out its distinctive technical
features.
 Abstract
 A summary that includes all the important technical aspects of
your invention.

Step 2
Request for grant of a patent
 File form 1
 Request for grant of a patent
 Office response and your options

Step 3
Request for a search
 File form 9A
 Office response and your options
 Application number assigned and confirms the ‘filing date’ of
the application.

Step 3
Request for a search
 If your application includes a declaration of priority, the
deadline for filing form 9A is 2 months from your filing date
or 12 months from your priority date, whichever is later.
 After a search has been requested an examiner will search
through published patents and other documents for material
against which assessment whether or not the invention you
have claimed is new and inventive. The aim is to issue the
search report within six months of receiving the form 9A.

Step 4
Publication
 Publishing your application and your options
 Withdrawing your application before or after publication

Step 4
Publication
 The office will publish the patent application shortly after 18 months
from the filing date (or priority date if there is one), as long as the formal
requirements are met and filed with form 9A together and the appropriate
fees and no request to withdraw the application.
 “Your application details, including your name and address, will appear
on our records. They will appear in the publication of your application,
once all formal requirements are met. Both our records and the Patents
Journal are open to the public on our website, which can be permanently
searched using most standard search engines. All correspondence
between us will be open to public inspection, including on our website,
once your application is published.”

Step 5
Request for a substantive examination
 File form 10
 No later than six months after publication to avoid your
application being terminated.
 Our response and your options

Step 6
Next steps
 Successful applications
 If the application meets all the
requirements of the Patents Act
1977, a grant of the patent occurs,
publish the application in its final
form and send the applicant a
certificate.

EU Patent Process Overview
EPO
The European Patent Office

Patent Information in the EU
Patent documents offer a whole host of information on new, and also older technologies, and the state of
the art in all fields imaginable, plus an insight into the current market situation. The information
contained in patent documents enables one to find out, for example, which companies are operating
on which new markets. Information of this kind cannot be drawn in as much detail from other
sources, if at all.
 In the European Patent Office’s databases there are more than 60 million published patent documents
from all over the world.
 Three patent applications are filed every minute.
 A large proportion of all the technical information published is contained in patent documents.
 Patent classification and the largely uniform structure of the documents in all countries make it
possible even for the non-specialist to search documents.
 These documents can be viewed in the European Patent Office’s databases, many are free of charge.

Patent Information in the EU
 The European Patent Convention (EPC) sets the legal framework of the European patent
system.
 The EPC has established a single European procedure for the grant of patents on the basis
of a single application and created a uniform body of substantive patent law in order to
provide protection for inventions in the contracting states.
 In each contracting state for which it is granted, a European patent gives its proprietor the
same rights as those conferred by a national patent granted in that state.
 Currently there are 38 contracting states utilizing the one application / one procedure
system.
 The current term granted for a patent is 20 years.

Step 1
Preparing a EU patent application
 First, it is important to know what inventions and patents are.
 An invention can be a product, a process or an apparatus. To be
patentable, it must be new, industrially applicable and involve an
inventive step.
 Patents are valid in individual countries for specified periods.
They are generally granted by a national patent office, or a
regional one like the EPO. Patents confer the right to prevent third
parties from making, using or selling the invention without their
owners' consent.

Step 1
 Patents should not be confused with the other kinds of intellectual
property rights available:
 Utility models can be registered in some countries, to protect
technical innovations which might not qualify for a patent.
 Copyright protects creative and artistic works such as literary
texts, musical compositions and broadcasts against unauthorized
copying and certain other uses.

Step 1
 Patents should not be confused with the other kinds of intellectual
property rights available:
 Trade marks are distinctive signs identifying brands of products
or services; they may be made up of 2 or 3 dimensional
components such as letters, numbers, words, shapes, logos or
pictures, or even sounds
 Designs and models protect a product's visual appearance, i.e. its
shape, contours or color.
 Before applying for a patent, a patent search should be performed.

Step 2
Application
 There are different routes to patent protection and the best
route will depend on the invention and the markets a company
operates in.
 The European Patent Office accepts applications under the
European Patent Convention (EPC) and the Patent Cooperation
Treaty (PCT).
 If protection is sought in only a few countries, it may be best to
apply direct for a national patent to each of the national offices.

Step 2
Application
 A European patent application consists of:
1. A request for grant
2. A description of the invention
3. Claims
4. Drawings (if any)
5. An abstract.

Step 2
Application
 Applications can be filed at the EPO in any language. However,
the official languages of the EPO are:
 English,
 French and
 German
 If the application is not filed in one of these languages, a
translation has to be submitted. Although the services of a
professional representative are mandatory only for applicants
residing outside Europe, the EPO advises all applicants to seek
legal advice.

Step 3
Filing and Formalities Examination
 One of the first steps in the European patent granting procedure
is the examination on filing.
 This involves checking whether all the necessary information
and documentation has been provided, so that the application
can be accorded a filing date.

Step 3
 The following are required:
1. An indication that a European patent is sought
2. Particulars identifying the applicant
3. A description of the invention or
4. A reference to a previously filed application.

Step 3
 If no claims are filed, they need to be submitted within two
months.
 This is followed by a formalities examination relating to
certain formal aspects of the application, including:
 The form and content of the request for grant,
 Drawings and abstract,
 The designation of the inventor,
 The appointment of a professional representative,
 The necessary translations and the fees due.

Step 4
Search
 While the formalities examination is being carried out, a
European search report is drawn up, listing all the documents
available to the Office that may be relevant to assessing novelty
and inventive step.
 The search report is based on the patent claims but also takes
into account the description and any drawings. Immediately after
it has been drawn up, the search report is sent to the applicant
together with a copy of any cited documents and an initial
opinion as to whether the claimed invention and the application
meet the requirements of the European Patent Convention.

Step 5
Publication of The application
 The application is published, normally together with the search
report, 18 months after the date of filing or, if priority was
claimed, the priority date.
 Applicants then have six months to decide whether or not to
pursue their application by requesting substantive examination.
 Alternatively, an applicant who has requested examination
already will be invited to confirm whether the application should
proceed. Within the same time limit the applicant must pay the
appropriate designation fee and, if applicable, the extension fees.

Step 5
Publication of The application
 From the date of publication, a European patent application
confers provisional protection on the invention in the states
designated in the application.
 However, depending on the relevant national law, it may be
necessary to file a translation of the claims with the patent office
in question and have this translation published.

Step 6
Substantive examination
 After the request for examination has been made, the European
Patent Office examines whether the European patent application
and the invention meet the requirements of the European Patent
Convention and whether a patent can be granted.
 An examining division normally consists of three examiners, one
of whom maintains contact with the applicant or representative.
 The decision on the application is taken by the examining
division as a whole in order to ensure maximum objectivity.

Step 7
The grant of a Patent
 If the examining division decides that a patent can be granted, it
issues a decision to that effect.
 A mention of the grant is published in the European Patent
Bulletin once the translations of the claims have been filed and
the fee for grant and publication have been paid.
 The decision to grant takes effect on the date of publication. The
granted European patent is a "bundle" of individual national
patents.

Step 8
Validation
 Once the mention of the grant is published, the patent has to be
validated in each of the designated states within a specific time
limit to retain its protective effect and be enforceable against
infringers.
 In a number of contracting states, the patent owner may have to
file a translation of the specification in an official language of the
national patent office. Depending on the relevant national law,
the applicant may also have to pay fees by a certain date.

Step 9
Opposition
 After the European patent has been granted, it may be opposed
by third parties, usually the applicant’s competitors, if they
believe that it should not have been granted.
 This could be on the grounds, for example, that the invention
lacks novelty or does not involve an inventive step.
 Notice of opposition can only be filed within nine months of the
grant being mentioned in the European Patent Bulletin.
 Oppositions are dealt with by opposition divisions, which are
normally made up of three examiners.

Step 10
Limitation / Revocation
 This stage may also consist of revocation or limitation
proceedings initiated by the patent proprietor himself.
 At any time after the grant of the patent, the patent proprietor
may request the revocation or limitation of his patent.
 The decision to limit or to revoke the European patent takes
effect on the date on which it is published in the European
Patent Bulletin and applies ab initio to all contracting states in
respect of which the patent was granted.

Step 11
Appeal
 Decisions of the European Patent Office, refusing an application
or in opposition cases for example, are open to appeal.
 Decisions on appeals are taken by the independent boards of
appeal.
 In certain cases it may be possible to file a petition for review by
the Enlarged Board of Appeal.

The International Patent Process Overview
PCT
The Patent Cooperation Treaty

The Patent Cooperation Treaty
(PCT)
 A United Nations Treaty
 Signed in June of 1970 at the Washington Diplomatic
Conference
 Became operational in June of 1978
 Administered by the International Bureau (IB) of the World
Intellectual Property Organization (WIPO) in Geneva,
Switzerland

Purposes of the PCT
 A PCT application does not itself result in the grant of a patent,
since there is no such thing as an "international patent", and the
grant of patent is a prerogative of each national or regional
authority.
 A PCT application, which establishes a filing date in all contracting
states, must be followed up with the step of entering into National
or Regional phases in order to proceed towards grant of one or
more patents.
 The PCT procedure essentially leads to a standard National or
Regional patent application, which may be granted or rejected
according to applicable law, in each jurisdiction in which a patent is
desired.

Purposes of the PCT
 To simplify the process of filing foreign patent applications
 To give every Regional or National Patent Office designated by the
applicant the benefit of:
 A search by a major patent Office
 An optional examination by a major patent Office

PCT Contracting States
 A country which is a signatory to the PCT
 Eighteen (18) Contracting States in 1978
 Currently 148 Contracting States
 Patent protection is available in each PCT Contracting
State through either
 A national patent Office
 A regional patent Office
 Or both

PCT Contracting States
The PCT currently has 148 Contracting States

2010 PCT Statistics
0
20000
40000
60000
80000
100000
120000
140000
160000
180000
78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10
Overall +5.7% in 2010
All-time record of 164,300 applications

0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
40,000
45,000
US JP DE CN KR FR GB NL CH SE CA IT FI AU ES
International Applications Received
in 2010 by Country of Origin
US: -1.6%
JP: +8%
DE: +4.5%
KR: +20.3%
CN: +55.6%
IN: +36.6%
2010: East Asia overtook North
America and Western Europe to
become the sub-region
accounting for most PCT filings

PCT Applications by Field of Technology
(2010)
Electrical
Instruments
Chemistry
Mechanical
Other

Digital comms
Med. tech.
Computer tech.
Electrical mach.
Pharma.Measurement
Telecomms
Semiconductors
Organic chem
Transport
Biotech
Basic materials
chem
Civil eng.
Highest Filing Technical Areas (2010)

6%
76%
15%
1%2%
Member States
PCT System
Madrid Sytem
Hague System
Other
Budget 2010-2011: CHF 618 million
(decrease of 1.6% (9.8m) on 08-09)
WIPO: Primary Sources of Revenue

National patent systems
Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC)
Patent Cooperation Treaty (PCT) system
Filing patent applications abroad
(Multiple) national Patent Offices
(Several) regional Patent Offices
National Offices
Regional Offices
(Single) receiving Office [National phase]
Patents
[International phase]
- File application
- International publication
- International search
- International preliminary
examination

Using the Traditional Patent System to
seek Multinational Patent Protection
Local patent application followed within 12 months by multiple foreign
applications claiming priority under Paris Convention:
- multiple formality requirements
- multiple searches
- multiple publications
- multiple examinations and prosecutions of applications
- translations and national fees required at 12 months
Some rationalization because of regional arrangements:
ARIPO, EAPO, EPO, OAPI
0 12
File
application
locally
File
applications
abroad
(months)

Traditional patent system
vs.
PCT systemFees for:
--translations
--Office fees
--local agents
0 12
File local
application
File
applications
abroad
(months)
Traditional
(months)
File PCT
application
12 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
International
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
PCT 0
Fees for:
--translations
--Office fees
--local agents

Top PCT Applicants 2010
1. Panasonic—JP (2154)
2. ZTE Corporation—CN (1868)
3. Qualcomm—US (1677)
4. Huawei—CN (1528)
5. Philips—NL (1435)
6. Bosch—DE (1301)
7. LG Electronics—KR (1298)
8. Sharp—JP (1286)
9. Ericsson—SE (1149)
10. NEC—JP (1106)
11. Toyota—JP (1095)
12. Siemens—DE (833)
13. BASF—DE (818)
14. Mitsubishi Electric—JP (726)
15. Nokia—FI (632)
16. 3M—US (586)
17. Samsung Electronics—KR (578)
18. HP—US (564)
19. Fujitsu—JP (476)
20. Microsoft—US (469)

1. Postpones the major costs associated with internationalizing a
patent application
2. Provides a strong basis for patenting decisions
3. Harmonizes formal requirements
4. Protects applicant from certain inadvertent errors
5. Evolves to meet user needs
6. Is used by the world’s major corporations, universities and
research institutions when they seek international patent
protection
The PCT, as the cornerstone of the international patent system,
provides a worldwide system for simplified filing and processing
of patent applications, which:
Certain PCT Advantages

Costs in Traditional and PCT Filing Routes
(months)
File PCT
application
120 30
International
search report
& written
opinion
16 18
International
publication
(optional)
File demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
International
preliminary
report on
patentability
(months)
120
File local
application
Costs for:
– translations (≈ 18–36% of total)
– Patent Office fees (≈33%)
– local agents (≈ 25-50%)
File
applications
abroad
Traditional
route
PCT
route
18 months

0 12
30
National phase
(months)
International phase
Priority period
Should I file
applications abroad?
Should I file a
PCT application?
Should I file a
national patent
application?
Should I withdraw the
application to prevent
publication? Should I
withdraw the priority claim
to delay publication?
Should I enter the
national phase in view of:
(1) assessment of the prospects
of commercial success?
(2) likelihood of patent grant?
In which countries should I
enter the national phase?
18
Publication
Do I want international
preliminary examination to
enable amendment of the
application before the national
phase?
Should I manufacture
or assign or license
the invention?
Can I find a partner
or buyer or licensee?
PCT Decision Points
$
$$
$$$$$$
(translations, official
fees, foreign agents)
($$)
More information about patentability
More information about commercial prospects

The International Patent Process Overview

The PCT System – Typical Use (1)
(months)
File PCT
application
120 30
International
search report
& written
opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Typically a national
patent application in
the home country of
the applicant
19
Suplementary
International
Search (optional)

Typical Use (2)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentabilityTypically also filed with
local Patent Office.
One set of fees, one
language, one set of
formality requirements.
Legal effect in all PCT
States.
19
Suplementary
International
Search (optional)

Typical Use (3)
(months)
File PCT
application
120 30
International
search report
& written
opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Report on state of the
art (prior art documents
and their relevance) +
initial opinion on
patentability
19
Suplementary
International
Search (optional)

Typical Use (4)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Public disclosure to
the world of content
of application in
standardized way
19
Suplementary
International
Search (optional)

Typical Use (5)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Request an additional
patentability analysis
on basis of amended
application
19
Suplementary
International
Search (optional)

Typical Use (6)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Additional patentability
analysis, designed to
assist in national phase
decision-making
19
Suplementary
International
Search (optional)

Typical Use (7)
(months)
File PCT
application
120 30
International
search report &
written opinion
16 18
International
publication
(optional)
File
demand for
international
preliminary
examination
File local
application
Enter
national
phase
22 28
(optional)
International
preliminary
report on
patentability
Express intention
and take steps to
pursue to grant in
various States
19
Suplementary
International
Search (optional)

PCT Patent Process Overview
Chapter I Proceedings
1. International application filed
2. International search performed by the International Searching
Authority (ISA)
3. International Search Report and Written Opinion of the
International Searching Authority prepared
4. Optional amendment to the claims only

Chapter I Proceedings
5. File with the International Bureau (IB) of WIPO under Article
19 after Search Report mailed
6. International application, International Search Report and
Article 19 amendment published by IB
7. Published pamphlet sent to designated States by IB
8. Written Opinion of the International Searching Authority not
published with pamphlet

Chapter II Proceedings
1. Demand electing at least one eligible State is filed with a
competent International Preliminary Examining Authority
(IPEA)
 May include amendments to description, claims and drawings
under Article 34
2. Written Opinion of the International Searching Authority is
considered the Written Opinion of the IPEA

Chapter II Proceedings
3. A second Written Opinion will be prepared only in very rare
circumstances
4. International Preliminary Report On Patentability or “IPRP”
(form PCT/IPEA/409) is:
 Prepared by IPEA and sent to applicant and IB
 Sent to elected States by IB

Steps for national stage entry
1. Prepare translations of the international application into
languages required by the desired patent offices as applicable
 Translations should be “accurate”
 Amendments, even those considered to be minor in nature,
should not be made to the translation
 Applicant may file amendments to the application in each
DO/EO
2. Transmit translation and necessary fees to each desired
national or regional patent office previously designated/elected
3. Once national phase entry requirements have been met, each
designated/elected Office decides whether to grant a patent or
reject the claims

Comparative Patent Process Overview
US, EU, UK, PCT Markets

117
The Decision Whether/Where To File
• Always conduct Prior Art search
 Guidance as to scope of patent potentially available (broad or narrow patent)
 Helps to draft application properly (not to read on prior art)
• Strong recommendation to retain patent counsel to do search

118
• Can search databases on Internet but very difficult to properly search
 USPTO i.e. www.uspto.gov
 CIPO i.e. www.cipo.ic.gc.ca
 WIPO i.e. www.wipo.int
 EPO i.e. www.epo.org
• Cost is approximately $3,000 for search and opinion on patentability
• Search has limitations
• 18 month window until publication in most countries

119
• Costs associated with patent protection and enforcement
are very significant and patents are territorial (by country)
• Very general estimate: $10K to $15K for one country
• Over $100K+ for multi-national filing

120
• Scope of likely patent protection
 Can you get a broad patent, or only a narrow one?
• What is the commercial life of the invention?
 Will commercial life be less than time to get patent (e.g.
computers)? It may be 3 to 5 years until you get a patent.

121
• Consider if it is better As Trade Secret?
 Example - The formula of COKE
 Must disclose invention in order to get patent

122
• Will competitors be able to easily design around?
 Often takes years to get patent
 Often market lead time is significant
• Do you have money to enforce patent?
 Litigation is prohibitively expensive
 Often $1M for very simple patent in Canada; more in U.S.

123
Filing Strategies
Picking where to file:
• Your market
• Your competitor’s market
• Your competitor’s manufacturing facilities
• Enforcement potential
• Prosecution charges (budget)
Deciding how to first file:
• Desire for speedy issuance
• Indication of patentability
• Getting filing date to reserve place in line or due to impending public
disclosure

124
Filing with the PCT
 The Patent Cooperation Treaty (PCT)
 PCT often called the International Application
 Administered by the International Bureau at WIPO
 Deemed filing in almost every country in the world
 BUT: Each filing is not crystallized until national phase entry (i.e. filing
in individual country) and is requested within 30 months
 In effect only a 30 month delay in exchange for ~ $6,000
 National phase filings very expensive -Translation may be required, etc.
 In certain countries you can delay entry into national phase
by up to 42 months from first filing
 Why delay? Evaluate market and patentability, raise
money, license invention, keep options open, etc.

Certain PCT Advantages:
Postpones the Major Costs associated with “Internationalizing” a Patent Application
Typical Costs:
 Translations of the patent application (a highly technical document)
into various national languages
 Official fees for payment to national/regional Patent Offices (for
example, filing fees, claims fees, etc.)
 Fees for the services of local patent agents/attorneys in the
designated states

Cost Issues
 For a single invention
 PCT not cheaper than direct applications in 15 countries
 PCT international phase costs are 5% of total patenting costs
 For a portfolio of applications at 30 months
 20% of applications are abandoned by not entering national
phase
 30% of designated countries in original plan are dropped
 National phase entry decisions are critical

Other PCT Advantages
Time:
 18 months more time
Information:
 Patentability information
 International search report and written opinion
 International preliminary report on patentability (optional)

Other PCT Advantages
Decisions:
 Prospects of commercial success
 Production costs, market appeal, profitability
 Potential partners, licensees, buyers
 Competitors
 Results:
 Better decisions
 Better spent money

Comparative Patent Process
The decision of which country to file a patent is contingent on numerous factors
and the objectives of the applicant. Since protections afforded by a patent are
only applicable in the countries that issue the patent, timing must be considered
in addition to the location(s) selected.
Whether registering a patent in the US, UK, EU markets, or through the PCT, it
is important to also consider the scope of protection offered in that venue and
the costs associated with the filing.
All of these considerations, along with sound business judgment, will comprise
the ultimate decision on when and where to file a patent.

Comparative Patent Registration
Processes in the US, UK, and EU Markets
MC Law Presentation 2013
Richard Bays JD, MBA, RN, CPHQ
RBaysConsulting@Gmail.com

R Bays - Comparative Patent Registration

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