Foreign Patents for University of Colorado Technology Transfer Office

2. 2 Foreign Patentsfor University of Colorado Technology Transfer Office byLee R. Osman, Partner Dorsey & Whitney LLP Boulder, Colorado March 31, 2004

3. Introduction General overlay of US and foreign patent practices Foreign patent rights are fragile How to obtain foreign patent rights generally Foreign filing forum Patent Cooperation Treaty (PCT) European Patent Office Country filing (non-PCT) EPO patent system Questions?

4. General Overlay of US and Foreign Patent Practices United States Rights based on “First to Invent” Conception plus Reduction to Practice Types: Provisional, Utility, Plant, Design Must be in name of inventor, not assignee Commercial activity begins 1 year timeline for filing Offer for sale Public disclosure Must file in U.S. first if: Invention made in US 1.5 to 3 years to issue, presumption of validity

5. General Overlay of US and Foreign Patent Practices, Cont’d Must disclose known prior art Applications published after 18 months Can request non-publication (but not if filing foreign)

6. General Overlay of US and Foreign Patent Practices, Cont’d Foreign Patents Rights based on “First to File” A race to the patent office Encouraged US to adapt provisional filing system and publication of applications to level playing field with foreign patent systems Can be in name of applicant or inventor Similar types Provisionals, utility models, designs Registrations (no examination)

7. General Overlay of US and Foreign Patent Practices, Cont’d No need to cite prior art (some exceptions) Applications publish Each country or region has its own rules!

8. Foreign Patent Rights are Fragile Pre-filing public disclosure eliminates foreign patent rights Few exceptions (UK, Canada, Australia) Some form-over-substance issues US and sophisticated foreign systems are blending together

9. How to Obtain Foreign Patent Rights Based on a “Priority Filing” U.S. patent application Can file directly outside US with a Foreign Filing License Select forum (PCT, Regional, Country) File foreign within a year of “Priority Filing” 6 months for design patents Prosecution stage Similar to U.S. procedures, but some require annuities Allowance/Opposition/Issuance Annuity fee payments ($$$)

10. Filing Forum Patent Cooperation Treaty (PCT) 123 countries, 4 regions Umbrella structure to obtain patent protection in individual foreign countries Regional filing Can file directly into a region European Patent Convention Most popular ARIPO (Harare Protocol), related to Africa OAPI, related to Africa

11. Filing Forum, Cont’d Individual country filings Governed by bilateral treaties Taiwan is most influential country not member of PCT Generally quickest route to a foreign patent Can file concurrently in PCT, regionally and nationally Expensive, but advantages may be worth it

12. Patent Cooperation Treaty PCT Procedure File application based on “Priority Application” All countries and regions automatically selected Receive ISR and Written Opinion Amendment Publication of application (provisional protection) Demand for International Preliminary Examination Why? Can be by US or European Examiner National/Regional entry to prosecute/issue patent locally Can re-enter US !! Delays national/regional stage entry for 30/31 months Not too expensive (about $4,000)

13. European Patent Office 26 countries in Europe Can file concurrently with national filings Pick broadest coverage in the end Software inventions have special issues Procedure File From priority document or PCT filing Publish Application File translated claims for provisional protection

14. European Patent Office, Cont’d Prosecute Can take a while Generally very good examination Not amenable to manipulations allowed in US Grant Opposition Period Anyone can oppose based on prior art 3 year procedure Holds up validation of patent in all countries No similar procedure in US Validate in Designated Countries

15. Individual Country Filings Unique rules by country Fastest route typically Allows independent enforcement Avoids opposition in a regional setting Forces competitor to litigate in several forums May obtain broader scope in particular countries

16. Financial Expenditures Some Examples (out of pocket costs) PCT $4k for entire process through national stage 30/31 month delay may cost client infringement earnings if commercially active technology EPO $11k for entire process through grant Validation after grant is about $3k per country

17. Financial Expenditures, Cont’d Germany $26k for the entire process $4k for prosecution $22k for annuities UK $13k for entire process $3k for prosecution $10k for annuities

18. Financial Expenditures, Cont’d Japan $44k for entire process $10k for prosecution $34k for annuities

19. Summary Foreign patent protection can be worthwhile Consider expenses, be strategic Know the rules of disclosure to avoid mistakes