Without question, patent protection is complicated and expensive. That complexity and expense dramatically increases when patent protection is desired both in the U.S. as well as abroad. Developing the right patent filing strategy at the outset is necessary to achieve the client's goals.
As a patent attorney, we have a number of tools we can use to craft a patent filing strategy for each client's unique situation. If used correctly from the outset, the proper patent filing strategy can reduce client expenses while providing maximum flexibility.
The purpose of this post is to introduce these tools and show various ways these tools can be used to craft an optimum patent filing strategy.
A provisional patent application is an informal patent application. It does not require claims or formal drawings. A provisional patent application only lasts for 1 year. At the end of that year, only one of two events occur:
(1) The provisional patent application expires, or
(2) A non-provisional patent application is filed that claims priority to the provisional.
A provisional patent application is never examined, and it is never published. The informal nature of a provisional patent application generally allows an applicant to get a patent application on file at a reduced cost and in an expedited manner (which has increased importance due to the First-To-File rule). The moment a provisional patent application is filed, the applicant can represent that the subject matter is "Patent Pending."
A non-provisional patent application is a full formal patent application. A non-provisional patent application requires formal drawings and formal claims. Once filed, a non-provisional patent application is distributed to an examiner at the USPTO who conducts a prior art search and determines whether the patent application should be allowed to mature into an issued patent. A non-provisional patent application generally lasts for 20 years from the date it is filed (and up to 21 years from the date a provisional is filed if the non-provisional patent application depends upon a provisional patent application).
The PCT is a treaty signed by 148 countries that have agreed to the same rules for preliminary patent review. By filing one international patent application under the PCT, applicants can preserve the right to file a patent application in all PCT countries. A PCT application must be filed within 1 year of a US patent application (provisional or non-provisional). A PCT application lasts for 18-months (30-months from the provisional patent filling date). During that time, the PCT conducts a preliminary patent review. At the end of that 18-months the applicant must determine what countries they want to seek a patent in. The PCT provides cost savings if a patent application is to be filed in multiple countries. The PCT is also a valuable tool if the applicant is not certain what countries they want patent protection in.
A U.S. patent has no effect in any other country. As such, a patent application must be filed in each country in which patent protection is desired. Foreign patent applications can be filed one of three ways:
(1) Directly and initially in the foreign country,
(2) Within one year of filing a U.S. patent application (either provisional or non-provisional) and claiming priority to the U.S. application, or
(3) Within 18-months of filing a PCT application and claiming priority to the PCT application.
The patent laws are different in each country and every. Once filed, the patent application will be examined according to the unique patent laws of that country.
Using the tools: (1) provisional patent applications, (2) non-provisional patent applications, (3) PCT applications, and (4) foreign patent applications; any number of patent strategies that can be implemented depending on the value of the technology and the client’s objectives.
This option maximizes the life of a patent, because the provisional patent application does not count-against the length of the non-provisional patent application. In addition, this option allows the applicant to include any revisions or improvements in the non-provisional patent application that occurred during the 12-month pendency of the provisional patent application.
This option maximizes the life of a patent by starting with a provisional patent application. At the 1-year deadline then a U.S. non-provisional patent application is filed simultaneously with foreign applications in the desired countries. This option skips the delay, complexity and expense of filing a PCT application. However, each application must be fully prosecuted in each country which could lead to additional costs. This is a good option if there will only be a small number of foreign applications. However, at the expiration of the provisional patent application, no further foreign applications can be filed.
This option maximizes the life of a patent by starting with a provisional patent application. A PCT application is filed 12-months after the provisional is filed. This option preserves the right to go into all PCT countries. At the end of the 30-month PCT deadline, a U.S. non-provisional application is filed along with the desired foreign applications. This is a good option if the client is unsure exactly what countries protection is desired in, or if there are a number of countries that protection is desired in as the PCT may help reduce the prosecution costs in each country.
This is my preferred option. This option maximizes the life of the patent by filing a provisional patent application first. Then, 12-months after the provisional is filed a U.S. non-provisional patent application is filed simultaneously with a PCT application. By filing the U.S. non-provisional patent application at the same time as the PCT application, this gives the U.S. non-provisional patent application a head-start over any foreign applications. This option is useful when the applicant is certain they will pursue U.S. patent protection, and they want to preserve the right to pursue foreign protection. One benefit to this strategy is that often the U.S. patent will issue before the PCT application expires (especially if expedited review is requested in the USPTO). Knowing that the USPTO has allowed the patent, or at least given some guidance as to patentability, often gives the client a level of certainty and comfort when making expensive decisions as to what foreign countries to pursue protection in.
Every client, every technology and every situation is different. Using the tools of provisional patent applications, non-provisional ("utility") patent applications, PCT applications, and foreign patent applications an experienced patent attorney can help craft a comprehensive patent filing strategy that provides the needed coverage while maximizing flexibility and minimizing cost.
Written by Christopher A. Proskey, J.D., M.B.A., Co-Chair of the Intellectual Property Practice Group at the Brown Winick law firm Chris is a registered patent attorney who specializes in patent drafting and prosecution, domestic and abroad.