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Samson HelfgottKatten Muchin Rosenman LLPNew York, NY

AIPLA Practical Patent Prosecution TrainingAugust 2010

PCT FILINGand

INTERNATIONAL PATENT PROSECUTION

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FOREIGN FILING DESCISIONS

• Why Foreign File?

• When to Foreign File?

• How to Foreign File?

• Strategies for Foreign Filing Cost Reduction

• What and Where to Foreign File?

• Preparing an Application for Foreign Filing

– Consider a “Global” Type Patent Application

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WHY FOREIGN FILE?

• Patents are national in scope and protection- U.S. Patent only covers U.S. borders.

• Expansion of Foreign Commerce- Foreign competition- Foreign Markets- Offshore Manufacturing- Worldwide licensing programs

• Strengthening of Patent Laws in Foreign countries- Pressure from U.S.- TRIPS - part of GATT treaty- Harmonization efforts

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- There are at least 190 countries in the world

- The cost for foreign patents is substantially more than the cost for U.S. coverage.

- About 50% of U.S. applications are filed by foreigners

- High Tech companies may file in 4-5 countries/regions; Biotech and Pharma may file in 120 countries.

FACTS

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HIGH COST OF FOREIGN FILING

• Translation Costs• Claim fees• Agent Fees• Government fees• Examples

– Japan – about $300 per page (typing and translation)– Germany – about $200 per page (translation)– Claim fees

Europe – $300 for every claim above 15 (further increases in the future)Japan – $50 per claim

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– Lifetime costs (not including cost of writing application)

– U.S. approximately - $25,000– Europe (8 countries) approximately - $150,000 (will be less

in the future using the London Protocol)– Japan approximately - $75,000

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1993 Costsfor today’s costs multiply by 1.5 - 2 times

“Patent Filing Costs Around the World,” Samson Helfgott, JPTOS, Vol. 75, No. 7 July, 1993

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FOREIGN FILING(National/Regional Phase)

JapanFiling with translation

$7,000 - $10,000

prosecution

$6,000 1 - 3 yrs

CanadaFiling prosecution

$3,000 2-4 yrs grant

Koreafiling with translation prosecution

$8,000 4 - 6 yrs $8,000

EPCfiling prosecution

$8,000 - $11,000 $8,000 4 - 6 yrs

England$2,500

Spain$4,500

$500 - $2,500

$400 - $2,500

Germany$4,500

$4,000 France

$800 - $3,000

$1,000 - $2,000

Grant Maintenance/yr.

deferral

3 yrs

grant

Maintenance/yr.

$1,000 - $3,000

Maintenance/yr.

$500 - $2,000

Maintenance/yr.

$700 - $2,500

grant

deferral

4 yrs

Translations and filing (less with London Protocol)

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WHEN TO FOREIGN FILE?

• Paris Convention- Provides a right of priority for the date of your first filing- 12 months for utility patents- 6 months for design patents- Substantially every country of the world- Covers only what was originally disclosed

• Example:U.S. filing (Provisional) foreign filing5/28/09 5/28/10 priority granted

5/28/09 5/29/10 no priority granted

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• Benefit of Priority- Prior Art dated only before Priority date can be cited- Thus, activities or publications of applicant or others during

priority year do not constitute prior art- Without benefit of priority date applicant’s own activities can be

used against him

• Term of patent calculated from actual filing date.U.S. filing foreign filing

5/28/09 5/28/10

Prior Art 20 year term

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DIFFERENT LAWS IN FOREIGN COUNTRIES

• First-to-file vs. First-to-invent- U.S. is only country to have first-to-invent standard

- In U.S. an interference is declared where one inventor can provehe was first-to-invent and demonstrated diligence to reduction to practice, even though he filed later.

- In foreign countries “race to patent office”

- Therefore, if interested in foreign filing should file priorityapplication (U.S. filing) ASAP

- However, still need full disclosure

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• Grace Period- U.S. (and Canada) are essentially only countries with a grace

period (1 year before filing). Some have limited 6-month grace period

- In all other countries any publication before actual filing (or priority date if claimed) will be prior art.

- If client is interested in any foreign filing, should file in U.S. before any exploitation

- Consider using Confidential Agreements if disclosure is required

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LOSS OF FOREIGN RIGHTS

1 Yr. Grace Period

PublicationNo Foreign Filing

U.S. Filing

OR

No Publication U.S.

Filing1 Yr. Priority

(Paris Convention)

ForeignFiling

orPCT Filing

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• Commericalization vs. Divulgation- In U.S. “publication” essentially includes “commercialization”

- Thus, sales, offer for sales, secret prior use, etc. is prior art

- In foreign countries “publication” essentially includes“divulgation”

- Differences:

a) Experimental use - Object available for public inspection but being testedIn U.S. - no prior artIn other countries prior art

b) Offer for sale of undisclosed objectIn U.S. - prior artIn other countries no prior art

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SUMMARY

• Foreign Filing is economically important

• Must file ASAP because of first-to-file overseas

• Must file before any disclosure since no grace period overseas

• Must decide on foreign filing within 1 year

• Foreign Filing is expensive

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HOW TO FOREIGN FILE?

• Paris Convention Route1 year

U.S. filing

- costly

- within 1 year you rarely have enough information on the importance of invention

- within 1 year you rarely have enough information on the selection of countries

- generally, the deferral of money is important for clients

- often cases are dropped early on

JapanKoreaCanada

England

Germany

AustraliaEPC

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FOREIGN FILING USING THE PCT

1 yr. Priority(Paris Convention)

18 mos.International Search and Optional

International Exam

National &RegionalFiling

National &RegionalFiling

Patent Cooperation Treaty

U.S. Filing

EPJP

CAKR

EPJP

CAKR

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• Patent Cooperation Treaty (PCT)- about 142 member countries

- provides additional 18 months after priority year (30 months)before making foreign filing decisions

- some countries permit 31 months

- While it adds additional International Costs (about $3,000-$5,000)defers costs of national filing ($25,000-$50,000)

- Preserves rights in all member countries

- Gives client more time to assess importance of invention and make better decisions on foreign filing

- Can file in English with US or IB as Receiving Office

- During International Phase will get an International Search

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- Can use U.S., EPO or KR (also AU for limited technologies) for International Search

- If use U.S., USPTO is now outsourcing all searches to private searching firms. However, you may get some additional references which are not prior art under U.S. law but are prior art elsewhere

-Right now Korea is cheapest Searching Authority with timeliness and good quality. U.S. timeliness is improving.

- If use EPO for International Search will get a second search in addition to U.S. EPO costs more but will get reduction if youproceed into EPO after the International Phase

- Can optionally request Examination (Chap II) during PCT to amend claims and get Examiner’s Examination Report on Amended Claims

- Many countries will accept the Search (and Examination) in place of their own Search (and Exam)

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• European Patent Convention (EPC)- A regional patent system covering 40 European Countries

(include ext. countries)- Conducts full search and examination. Upon grant you get a

bundle of patents- Operated by European Patent Organization (essentially Munich)- Can file EPC at end of Convention year or can be designated

under PCT- Can file and prosecute in English language- At grant you then pay for translation, national filing fees, etc. in

as many of the EPC member states as you want your patent to beissued. For example in Germany you will get a German Euro-Patent which will be just as if you went directly to Germany and got a German national patent

- Upon entry into EPO must designate in which of the countriesyou are preserving your rights. However, designating 7 preserves all

- EPO prosecution take 4-5 years

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E PC A dvantages National A dvantages1. Case can be filed and prosecuted in the English

language.1. Possible to get certain national patents rapidly for

licensing and other utilization purposes.

2. Standard of invention is similar to that in the U.S.

2. Less risk than EPC where “all the eggs are in onebasket”.

3. Prosecution arguments and informal interviews similar to U.S.

3. Can tailor the claim language in accordance with national requirements.

4. Deferral of high translation costs. 4. Assured of at least some patents using Registration Countries, utility models patent of importation, etc.

5. Avoids national predilections. 5. Can obtain a strong German patent which can serveas an accepted standard for other countries.

6. Cost savings, especially where countries may be dropped.

6. Cheaper where only 1 or 2 countries are required.

7. Additional countries initially included at minimal additional cost.

8. Permits easier addressing of “parallel import” problem.

9. Will provide uniform claims in all countriesavoiding different scopes to enforce.

10. Now considered well accepted by all.

USE OF EPC

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Other Conventions

• Eurasian Patent - East Europe

• ARIPO Patent - Africa(African Regional Industrial Property Organization)

• OAPI Patent - Africa(African Union Territories)

• GCC - Gulf States(Gulf Cooperation Council)

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OTHER CONVENTION COUNTRIES

AP ARIPO Patent

BW BotswanaGH GhanaGM GambiaKE KenyaLS LesothoLR LiberiaMW MalawiMZ MozambiqueNA NamibiaSD SudanSL Sierra LeoneSO SomaliaSZ SwazilandTZ United Republic

of TanzaniaUG UgandaZM ZambiaZW Zimbabwe

EA Eurasian Patent

AM ArmeniaAZ AzerbaijanBY BelarusKG KyrgyzstanKZ KazakhstanMD MoldovaRU Russian

FederationTJ TajikistanTM Turkmenistan

EP European Patent

AL AlbaniaAT AustriaBE BelgiumBG BulgariaHR CroatiaCY CyprusCZ Czech Rep.DK DenmarkEE EstoniaFI FinlandFR FranceDE GermanyGR GreeceHU HungaryIE IrelandIS IcelandIT ItalyLV LatviaLI LiechtensteinLT LithuaniaLU LuxembourgMC MonacoMK Former Yugoslav

Republic of Macedonia

MT MaltaNL NetherlandsNO NorwayPL PolandPT PortugalRO RomaniaSM San MarinoSK SlovakiaSI SloveniaES SpainSE Sweden

EP Extension Countries

BA Bosnia and Herzegovina

ME MontenegroRS Serbia

OA OAPI Patent

BF Burkina FasoBJ BeninCF Central African

RepublicCG CongoCI Côte d’IvoireCM CameroonGA GabonGN GuineaGQ Equatorial GuineaGW Guinea-BissauML MaliMR MauritaniaNE NigerSN SenegalTD ChadTG Togo

GC GCC Patent

BL BahrainKW KuwaitOM OmanQA QatarSA Saudi ArabiaAE United States of

Emirates

EP European Patent (cont’d)

CH SwitzerlandTR TurkeyGB United Kingdom

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STRATEGIES FOR FOREIGN FILINGCOST REDUCTIONS

• Different available routes for foreign filing

• Combining available “tools”- Provisional Application- PCT- EPC- Paris Convention

• Deferral is generally to the client’s benefit- More knowledge on Invention, Competition, Markets, etc.- Cases are dropped- Use PCT wherever possible

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Benefits Concerns

Classical Route• File US as Non-provisional• File PCT within year & Paris for non PCT countries• Use PCT for foreign countries and continue with US non-provisional

• PCT search may get earlier search results that U.S. case

• Can get PCT search from another Patent Office

• Can still use PCT into US for a second U.S. case

• Significant upfront costs for complete U.S. preparation and prosecution

• Term of US patent one year less than foreign

X

X

US non-provisional

Direct for non PCT countries

EP

JP

KR

PCT 18 mos

12 mos X

X

X

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Benefits Concerns

• File US as Provisional but do not file the US non-provisional at 12 months• File PCT within year and Paris for non PCT countries • Use PCT for US and foreign filing

• Lower up front costs• Can choose when to prosecute in U.S.• May get search results before big

investment• Get benefit of extra year of term of U.S.

Patent. All patents will expire at same time

• May delay prosecution in US

Provisional and PCT

X

X

US Provisional

Direct for non PCT countries

JP

US

PCT 18 mos

EP

X

X

X

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Benefits Concerns

• File US as provisional and within year file both US non-provisional and PCT, and Paris for non PCT countries

• Limited front end costs• PCT search may get earlier result than U.S.

case• If use EPO for PCT search can get U.S. &

EPO search before foreign filing• Can still get a second US case from the PCT• All patents will expire at the same time

• Must invest in U.S. filing without benefit of search

• More expenses come sooner

Provisional, then Non-provisional and PCT

XXUS Provisional

Direct for non PCT countries

EP

JP

KR

PCT 18 mos

12 mos US non-provisional

X

X

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Benefits Concerns

PCT First

• File PCT first

• Cheap way to start the process • Can get search before any real

investment• Longest time for amending claims• Can file US case during International

Phase, do not need to wait 30 months

• Will lose one year on term for all patents • Delay in getting U.S. patent

PCT

Direct for non PCT countries

12 mos JP

US

EP

18 mos X

X

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WHAT and WHERE TO FOREIGN FILE

• Evaluate the invention

• Evaluate Countries for foreign filing- General Evaluation- Patent Evaluation

• Many companies prepare matrix of product/country forforeign filing

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EVALUATING THE INVENTION

• Provide an analysis of the invention:- Problem to be solved

- Previously suggested solutions

- How the invention works

- Distinguishing features of the invention

• Identify the type of invention that is being evaluated- Is it a basic invention?

- Is it an improvement invention?

- Is it an alternate embodiment to an existing invention?

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• Determine the relationship between the invention andthe client’s business- Is it directly, peripherally or unrelated to a core business?- Is the invention more significant to a competitor’s business?- What is the amount of time and money to be invested into the

invention?- What is the anticipated life span of the invention?

• What is the purpose of obtaining the patent?- To protect technology from being used by keeping competitors

away?- To improve marketing positions?- To protect customer use of the product or the technology?- Is it being filed for defensive purposes to block others fromobtaining patents in certain areas?

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- Is it for recognition to establish a reputation or credentials?- Is it for potential use in other business relationships such as:joint venture with other companies?Licensing (one way or cross licensing?)

- Is it being used to support existing licensing activities

• Bottom line question; If we don’t get a patent, so what?

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EVALUATING POTENTIAL COUNTRIES FOR FILING

• General evaluation of countries- Population- Market potential- Emerging of industrialized country- Industry size and growth rate- Client’s activity within country

• Patent Evaluation of country- The standards of patentability in the country- The type of patents available in the country- The patenting costs- Enforeability of patents in the country- Strength of the legal system- Any bias against foreign plaintiffs?

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COUNTRY/INVENTION SELECTION

• Guidance Tools- Formulas, charts, guidelines - Must be updated regularly- Must be tailored for each product

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PRIORITIZING COUNTRIES

1. Protect local manufacture2. Cover competitor’s home countries or major investment

manufacturing countries3. Cover major markets4. Cover export sales

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A SUGGESTED SET OF RECOMMENDATIONS

Type of Invention/Product RecommendationSystem, assembly, complex machine Limited filing in industrialized countriesComponents and materials Broad filing in all major countriesHigh technology product Limited filing in industrialized countries

and sourcing countriesWorld-wide consumer product Broad filing in major market countriesIndustrial product Limited fling in industrialized countriesPharmaceutical/chemical products Broad filing especially where product is

easily producibleLabor-intensive product Low-cost manufacturing countries

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• The purpose of PPH is to facilitate an applicant’s acquisition of apatent at an early stage worldwide and to enhance the utilization ofsearch and examination results among the world's major ΙΡ Officesso as to reduce the burden of examination and to enhance thequality of examination worldwide.

• ΡΡΗ enables an application with claims determined to bepatentable in the Office of First Filing (OFF) to undergo anaccelerated examination in the Office of Second Filing (OSF) withα simple procedure upon request for ΡΡΗ by an applicant.

• It is bilateral, i.e. can use your allowed US claims to expediteforeign prosecution, or use allowed foreign claims to expedite USprosecution.

PATENT PROSECUTION HIGHWAY (PPH)

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First Office (OFF)

OUTLINE of PPH

Second Office (OSF)

Application A

OfficeAction

WrittenAmend-

ment

Request forPPH

Copies ofoffice

actions

Corresponding Application

A

Provide prosecution history documents of the first office (if not

available via network)

AllowedClaims

A’ A

Claims Claims X must sufficiently

correspond to Allowed Claims X’

Accelerated ExamAdditional

Search andExamination

AllowedClaims

A’

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PPH - Requirements

a. The application in the OSF validly claims priority from an application in the OFF.

b. The application in the OFF has at least one claim already determined to be patentable.

c. All claims in the OSF application sufficiently correspond to the claims already determined to be patentable in the OFF.

d. The application in the OSF has not yet been examined.

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PPH – Notes

• The allowance must come from a National Search/Examination, not from a PCT Search/Examination

• The foreign application can be one derived from the basic application, i.e., a divisional

• Allowed foreign claims must be translated (for US)• Must submit a translated claim correspondence table (for US)• Copies of all O/A’s and translations (for US)• IDS with references (except US patents/applications) (for US)• Request for acceleration under PPH Program• Any claims submitted thereafter must correspond to allowed

claims from OFF• Request for PPH does not carry over to any continuing

application

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PPH – Concerns and Strategies

• Must complete prosecution in OFF before OSF begins prosecution, therefore:– Delays in all patent offices make use of this procedure

difficult– Must accelerate prosecution in OFF and delay

prosecution in OSF– When EP & JP are OFF relatively easy to accelerate.

When US is OFF requesting accelerated examination is difficult and risky re: inequitable conduct

– However, in JP & KR can defer examination for 3 years

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• Some US Applicants are filing in UK (or elsewhere) as OFF (with foreign filing license), accelerating examination, and using foreign allowance for expediting US prosecution (OSF).

• Can also file PCT first, then enter national phase in a foreign country (e.g. England or Australia), get an early allowance in that country, then use that for PPH accelerated examination when entering national phase in U.S

• Can file PCT first, enter national phase at the end of the 30 (or 31) months, and see which national patent office grants first allowance, and use that as OFF for other national offices that have not started exam yet.

PPH – Concerns and Strategies (cont’d)

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PATENT PROSECUTION HIGHWAY (PPH) US AGREEMENTS

• USPTO currently has agreements in place with:– JPO (Japan)– UK IPO (United Kingdom)– CIPO (Canada)– KIPO (Korea)– IPAU (Australia)– EPO (Europe)– DKPTO (Denmark)– IPOS (Singapore)– DPMA (Germany)– NBPR (Finland)

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STATISTICS ON USE

• Not used very much – about 1500 cases into US since first started in mid 2006. But use is increasing.

• About 95% of PPH cases using USPTO as OSF are allowed, compared to about 44% through regular filing.

• About 3 months to first office action.• About 30% first action allowances.• About 75% of PPH cases using JPO as OSF are

allowed, compared to about 50% through regular filing.

• JPO is pushing hard for more countries to get involved and encouraging a “plurilateral treaty” of all PPH countries.

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PPH NOW EXTENED to PCT

• Can user International Search and Written Opinion or IPER, from EPO, JPO, US or KIPO

• Requires at least one claim that has novelty, inventive step and industrial applicability.

• Must conform claims to these claims (all 3 “yes”).• Can still file separate a continuation or by-pass for

the other claims.• Can also use for domestic priority applications.• Must be before prosecution started in national

application.

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• Revives value of Chapter II Preliminary Examination for EP, JP, and US national stage entries: first action allowance possible

• Details at http://www.uspto.gov/patents/init_events/pph/index.jsp

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• Examples:

PCTRO/--

ISA/US, EP,KR

IPEA/USEP, KR

WOIPER

PriorityClaim

DO

DO

DO/US PPH

Can use PCT Results for PPH in JP or EP, KR

OK

Can use PCT Results in domestic JP Priority Application

US Application

PCTRO/--

WOIPER

PriorityClaim

OKPPH

ISA/US, EP,KR

IPEA/USEP, KR

US Application

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THE NEED FOR A “GLOBAL” PATENT APPLICATION

• INCREASE IN FOREIGN FILING- Global Markets- More foreign manufacture- More foreign competition

• HIGH COST OF FOREIGN FILING- Translation costs- Claim fees- Agent fees

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THE NEED FOR A “GLOBAL” PATENT APPLICATION (cont.)

• U.S. APPLICATIONS ARE VERY LENGTHY- Satisfying 35 U.S.C. 112- Both enablement, best mode, and written description- Satisfying CAFC Requirements- Standing up in litigation- Claim invention many ways - especially after Festo- Length to impress client- Try to do a “selling job” of obviousness in view of KSR

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THE NEED FOR A “GLOBAL” PATENT APPLICATION (cont.)

• REVISION OF APPLICATION IS NOT AN ADEQUATE SOLUTION- Time required for revision- Different attorneys for revision requires relearning- Hesitancy to make changes, especially in claims- Many countries still require translation of priority

documents- Need priority application for “telex filing”- For PCT need translation of original application

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GENERAL RECOMMENDATIONS FOR A “GLOBAL” APPLICATION

• DESCRIBE THE INVENTION ONLY ONCE- Typical U.S. Applications describe it 4-5 times- Summary of Invention - Brief Description of Drawings- General Description of Invention- Best Mode of Invention- Concluding Summary

• DON’T TEACH THE TECHNOLOGY- Application addressed to one skilled in art- Prior art should be in IDS not applications- don’t discuss prior history of technology or prior reference

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GENERAL RECOMMENDATIONS FOR A “GLOBAL” APPLICATION (cont.)

• AVOID OBJECTS

• AVOID PUFFING

• AVOID RECITATION OF NUMEROUS BENEFITS

• LIMIT NUMBER OF PAGES IN SPECIFICATION

- Be Concise- Insist on Limits

• USE “GLOBAL” LANGUAGE

- Short non-confusing sentences- Don’t use ambiguous words- Avoid indefinite language- Avoid generalizations unless part of invention- Avoid critical language unless part of invention

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GENERAL RECOMMENDATIONS FOR A “GLOBAL” APPLICATION (cont.)

• NO CROSS-REFERENCING

• NO INCORPORATION BY REFERENCE

• USE STANDARDIZED PCT FORMAT

• KEEP COPY ON PHYSICAL MEDIUM

• KEEP PARTS LIST

• USE SI UNITS

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PREPARING A “GLOBAL” APPLICATION

• ABSTRACT- Use reference numerals- Can be removed for U.S. if desired- Keep short

• BACKGROUND OF INVENTION- Use only one (1) reference - closest reference- Describe reference only briefly- Enclose copy of closest reference in all countries

- Use problem/solution approach- Problem- Prior art solution from reference

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PREPARING A “GLOBAL” APPLICATION (cont.)• SUMMARY OF INVENTION

- Problem with prior art - try not to make it a simple problem inview of KSR

- Solution provided by invention- Unobvious nature of invention - in view of KSR - Advantage of invention - general- Consistory statement - copy claim 1- No objects

• BRIEF DESCRIPTION OF DRAWINGS- Just itemize - don’t describe- Keep Concise

• DESCRIPTION OF THE INVENTION- Describe only once- Describe as part of best mode

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PREPARING A “GLOBAL” APPLICATION (cont.)

- Each time you mention an item, give alternatives at that time- Limit description of peripheral environment- Be consistent in describing elements- Use of examples is important- Use generic type of examples and then list specifics covered by

generic type- Where range is recited, use example at low end, high end and

mid-range- Where values are critical, must show comparisons of in range and

out of range• CLAIMS

- Must limit foreign claims, preferably 10-15 claims- Write U.S. claims so first 10-15 useful for foreign filing

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PREPARING A “GLOBAL” APPLICATION (cont.)

- Foreign countries have broader unity of invention than U.S., thusmore than one type of claim is permitted

- One independent claim for each type- Limit dependent claims to novel features- Use multiple dependencies when possible- Foreign countries like functional language, but not all like

“means”, therefore use descriptive terms plus function- Insert reference numerals when preparing claims, can eliminate

for U.S.• DRAWINGS

- Use A-4 paper and PCT margins- Prepare one set without English words- Use computerized drawings to facilitate drawing changes

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INTERNATIONAL ACTIVITIES

• Industrial Trilateral (AIPLA, IPO, UNICE, JIPA) have formulated a proposal for “Global Application” covering formalities

• Trilateral Patent Offices have accepted “Common Format” “Single Application” (CAF) covering formalities

• Substantive harmonization talks continuing by Group B+ Countries

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CONCLUSION

• APPLICATIONS CAN BE PREPARED FOR “GLOBAL” FILING

• CAN REDUCE INITIAL COST AS WELL AS FOREIGN FILING COST

• CAN PRODUCE A BETTER APPLICATION EVEN FOR U.S. FILING

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Contact Information forSamson Helfgott

Director of PatentsKatten Muchin Rosenman LLP

575 Madison Ave.New York, N.Y., 10022

(212) 940-8683Samson.Helfgott@kattenlaw.com

Disclaimer: This presentation does not constitute any specific legal or business advice.