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Worldwide Patents

Many people have heard of the term Worldwide Patent Protection, and assume that the patent process permits, although undoubtedly at great cost, a single patent which covers the whole world. Unfortunately, this is false. There is no such thing as a worldwide patent.

It is of course possible to obtain patent protection in almost every country in the world. However, the process for getting such patents involves, in almost every case, obtaining a patent in each country of interest. There are two main routes to obtaining patent protection in foreign countries. These routes are direct national filings, and filings under the Patent Cooperation Treaty or PCT.

Direct National Filing

Under an international convention, a patent application first filed in Canada can form the basis for applications filed in other countries, provided such other applications are filed within one year of the filing date of the application in Canada. This twelve-month period runs from the first application filed anywhere in the world for the invention. Under direct national filing procedure, if a Canadian inventor wishes to obtain protection in Canada and Britain, he would, within twelve months of his Canadian patent application filing date, file a patent application in Britain. This means physically sending a copy of the patent application to a British patent agent and requesting him to file the papers in the British Patent Office. Usually, the Canadian patent agent who has prepared the Canadian patent application will arrange the filing of the application with a British associate. The direct national filing route is the preferred route where there are only a few countries where patent applications are going to be filed.

Patent Cooperation Treaty (PCT)

If patent applications are to be filed in a broad range of countries, then it is common to use an international filing convention called the Patent Cooperation Treaty. This allows an international patent application, which designates up to about 60 countries, to be filed in the Canadian Patent Office as an international application. Under the rules governing international patent applications, the application will then be transferred to Europe and the invention searched by a European examiner at the European Patent Office. Then, if the applicant wishes to undergo international preliminary examination, the search results will be passed to a European patent examiner who will then issue an office action expressing an opinion on the patentability of the invention in light of the search results.

Once through international preliminary examination, however, the applicant must then instruct the application be filed, as a national phase entry in each country in which patent protection is sought. In other words, there is an international patent application, but there are only national patents which issue.

Costs

International patent applications through the direct filing route can be expensive, costing from about $2,000 to $5,000 per country on average. However, the cost can be even greater in some countries, where expensive translations are required. Many large companies prefer to file a PCT application, which costs between about $6,000 to $10,000. This defers the national filing costs and translations while preserving the ability to get rights in a large number of countries. The maximum duration of the deferral is 30 months from the filing of the initial application, and so many companies would abandon uncommercial applications at this 30-month point.

Filing applications is only the beginning of the expenses however. Most jurisdictions also include annual maintenance fees, which must be paid to preserve the rights. Thus, it is only the most successful inventions which justify such expense.

Where to File

Patents give to their owners the exclusive right to make, use and sell inventions. Therefore, in considering filing foreign applications, one needs to determine if there is a market for the invention, if the invention can be used, or, if the country has the technology to make the invention. Patents do prevent goods made in other countries from being imported into the country where patent rights have been obtained.

For a majority of inventions, protection in Canada and the U.S., our largest trading partner and closest foreign market, will be adequate. However, each invention needs to be considered on its own merits having regard to the circumstances at the time the decision is made.

If you are considering filing patent applications in international jurisdictions, you should be seeking the advice of a Canadian patent agent who has experience in handling international patent filings.

James Nenniger is a founding partner of the firm of Piasetzki Nenniger Kvas LLP, Barristers & Solicitors, Patent and Trademark Agents, a firm that restricts its practice to patents, copyrights, trademarks, industrial designs and related causes. Piasetzki Nenniger Kvas LLP is located in Toronto, Canada.