Patents

5. Protection in Foreign Countries

Patents are, as a rule, obtained on a country by country basis. There are in place, however, several international treaties that are intended to simplify the procedure of obtaining patents in the countries which are parties to these treaties. After the first patent application has been prepared and filed, it is necessary to decide whether further corresponding applications are to be filed in other countries. Fortunately, as a result of the Paris Convention (see the section on Novelty), to which most significant countries are signatories, an applicant normally has up to one year to file these subsequent applications. If these applications are filed within this time period, the foreign applications will be entitled to claim Convention priority based on the application that was filed first. In other words, the foreign applications will obtain the same effective filing date as the first application. As discussed in the section on Novelty dealing with novelty, this can be very important, as most countries require absolute novelty for the invention before valid patents can be obtained in those countries. A delay beyond the one year period in filing foreign applications may, therefore, forever bar patent protection in some countries.

There are additionally two main international treaties which Canadian residents can currently take advantage of for obtaining multi-national patent protection are the European Patent Office (EPO) Treaty and the Patent Cooperation Treaty (PCT). This is accomplished by allowing the initial filing of a single patent application requesting protection in one or more of the member countries. However, any "patent" obtained under such a treaty must still be registered in each member country to be recognized therein, and, in almost all cases, further national formalities and procedures must be fulfilled in each country before the patent will have legal effect in the respective country. Thus, the use of international treaties does not necessarily result in an overall cost-saving to the patent owner, but, is useful as a way of deferring the large costs associated with obtaining multi-national patent protection until a later date when the commercial value of the invention and the likelihood of obtaining commercially meaningful patent protection will have been better ascertained.

A full discussion of the filing of PCT and/or EPO patent applications is beyond the scope of this article. We would, however, be pleased to discuss filing a PCT patent application in more detail at an initial office consultation. The PCT became available to Canadian resident inventors on January 2, 1990 and has become increasing popular. The EPO is typically accessed by Canadians through the PCT, although direct access thereto by Canadian inventors is possible.

Your patent agent should be able to provide you with a rough estimate of the cost of filing foreign applications, but you should appreciate the cost of filing in one foreign country can differ considerably from the cost of filing in another, and that such estimates are based upon fluctuating currency exchange rates and ever increasing tariffs charged by patent agents and attorneys in foreign countries. Accordingly, you should advise your agent of those countries where you are seriously interested in filing patent applications when you are requesting an estimate from him or her. Generally speaking, those countries where English is an official language tend to be less expensive than those countries where the application must be translated into another language.