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22 PATENTLAWall EPC member countries. Only one application needs to
be filed and prosecuted to obtain coverage for any or all
of the member countries. The application can be filed and
prosecuted in English up to the point of issuance. A sepa-
rate national patent issues for each selected country, and
each patent is subject to the patent laws of the country in
which it issues. A separate European Community Patent
may become available in the next few years, wherein an
application filed under this regime would issue as a single
community-wide patent, subject ot a single jurisdiction
with regard to various legal claims.
Yet another alternative is to file an application accord-
ing to the Patent Cooperation Treaty (PCT; see http://
http://www.wipo.int/pct/en). A PCT application serves as an ap-
plication in each country designated in the application.
The process begins when an applicant from a member
country files a PCT application in a designated receiv-
ing office (such as the U.S. Patent and Trademark Office).
This begins the “international stage.” The application is
published 18 months after the priority date. A search is
performed and the search results are returned to the ap-
plicant. At the request of the applicant, a preliminary ex-
amination may be performed. This is similar to patent
prosecution in the United States, although the applicant
typically has just one chance to respond to a Written Opin-
ion and to amend the claims. Thirty months (31 months
for some countries) from the priority date, or 20 months
in some countries if the preliminary examination has not
been requested, the application must enter thenational
stagein those countries or regions in which protection
is sought. Prosecution of the application then continues
independently in each country or region until grant.
Filing patent applications in multiple jurisdictions can
be expensive. To keep costs down, applicants typically file
only in those jurisdictions where the invention is likely to
be used most frequently and where meaningful enforce-
ment can be achieved. A PCT application enables an appli-
cant, for a relatively low cost, to delay for up to 30 months
(31 months in some cases) both the designation of parti-
cular countries or regional jurisdictions and the costs of
entering in those countries and regions.
Although beyond the scope of this chapter, there are
foreign filing licensing requirements that must be con-
sidered before filing foreign or international (i.e., PCT)
applications.Differences Between the United States
and Other Countries
Although many of the procedures and rights are similar,
some differences between the United States and other na-
tions exist. For one, in the United States (and Canada and
Australia), an application may be filed up to 1 year after
a publication that describes the invention. In most, if not
all, other countries, such a disclosure prior to the filing
of an application is an absolute bar to obtaining a patent.
Another difference is that in the United States, when two
inventors claim to have independently invented the inven-
tion, the patent is awarded to the first to invent (with some
caveats). Of course, the precise instance of invention may
be difficult to discern and to prove, leading to a compli-
cated procedure known as interference proceedings. Therest of the world follows a “first-to-file” policy, in which a
patent for an invention is awarded to the first applicant to
file, regardless of who invented first.
Another difference is the term of a patent. Although
patents issuing on U.S. applications filed after June 8,
1995, have a term of up to 20 years from the priority date,
which is the same as foreign patents, as mentioned pre-
viously, earlier patents have a term of 17 years from is-
suance, and there are still many patents with this term in
force.
Computer programs are also handled differently. In
the United States, a computer program is patentable if
it produces a “useful, concrete, and tangible result” (State
Street,1998).In many foreign countries, however, software
per se is explicitly barred from being patentable.
Another notable difference is that in the United States,
the applicants must be the inventors (although they can
assign their rights), whereas in other countries, the appli-
cant may be either the inventor or the assignee. Also, in
the United States, examination of a patent application by
an examiner is automatic. In many other countries (e.g.,
Japan and South Korea), examination must be requested
within some time period from the filing date. For exam-
ple, in Japan, the examination must be requested within
3 years for a patent application filed on or after October 1,- For applications filed prior to that date, the request
must be within 7 years.
CONCLUSION
A patent does not give the owner the right to practice
the invention, that is, the right to make, use, sell or of-
fer for sale the invention in the United States, to import
the invention into the United States, or to import into the
United States something made by a patented process, but
rather gives the inventor the right to exclude others from
doing these things. That is, in return for disclosing the in-
vention, the patentee is granted a limited term (typically
20 years from filing) in which the competition cannot use
the patented device or method. The competition therefore
must research and develop noninfringing alternatives, a
process that could be costly, timely, and, in some cases,
futile, giving the patentee a substantial advantage over
the competition. Alternatively, the patentee may choose
to license the patented technology and collect a royalty.
For these and other reaons discussed above, patents are
valuable assets for any business, large or small.GLOSSARY
Claim The part of a patent which distinctly calls out the
inventive subject matter that is protected by the patent.
Dependent claim A patent claim that incorporates by
reference the limitations of another patent claim. Such
a claim typically begins with language such as “The
device of Claim X, further comprising” in which the
limitations of Claim X are incorporated by reference.
Doctrine of claim differentiation A doctrine under
which two claims of a patent are presumptively of dif-
ferent scope, so that if a dependent claim includes a
narrowing definition of some limitation of a base claim,
then the base claim is presumed to not only encompass
the narrow definition, but other embodiments as well.