Strategies for the International Patent Protection of an

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STRATEGIES FOR THE INTERNATIONAL PATENT PROTECTION OF AN INVENTION
Isabelle Girard*
LEGER ROBIC RICHARD, L.L.P.
Lawyers, Patent and Trademark Agents
Centre CDP Capital
1001 Square-Victoria – Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 – Fax (514) 845 7874
www.robic.ca – [email protected]
With the globalisation of markets, even small and medium size companies
now have the opportunity to commercialize their products to clients all over
the world. Large scale patent protection of innovations, however, involves
significant fees, which often force companies to abandon their property rights
in promising markets. This can be avoided by taking full advantage of the
possibilities offered by the patent system and international treaties on
intellectual property.
A patent confers to its holder the exclusive right to make, sell and use the
protected invention. With a limited budget, it is essential to carefully choose
the territories where patent protection is to be sought. In practice, the most
crucial factor to consider is the importance of the market for the sale of the
product that is to be patented in a given country. It may also prove
advantageous to consider territories where strategic partners operate, who
could be implicated in the commercialization and distribution of the product.
As a patent is essentially a defensive tool, one strategy to be considered is
protection in territories where competitors have installations for manufacturing
similar products; in this manner, a patent in a single country could prevent, at
the source, the commercialization of the patented innovation by these
competitors.
Choosing the territories in which to protect by patent is an undertaking that is
important yet difficult to make early in the process of marketing a product. It
is however at this particular moment, before public disclosure and sale of the
product even occurs, that patent applications must be filed in each relevant
territory so as to reserve rights to the invention. How does one reconcile these
seemingly contradictory requirements? Two international treaties can be
© CIPS, 2005.
* Of LEGER ROBIC RICHARD, L.L.P., a multidisciplinary firm of lawyers, and patent and
trademark agents. Published in the Winter 2005 issue (Vol. 9, No. 1) issue of our Newsletter.
Publication 068.065E.
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judiciously used to this end: the Paris Convention, and the Patent
Cooperation Treaty (PCT).
According to the Paris Convention, to which 169 countries currently adhere,
filing a patent application in one of the member countries gives the Applicant
a “priority right”, under which patent applications for the same invention can
be filed in any other member country within twelve months, without loss of
rights. In other words, subsequent applications filed under priority will benefit
from the same advantages as if they had been filed at the same time as the
first application. Capitalizing on this year of priority can be particularly
advantageous where the first filed application is a United States provisional
application, or a Canadian informal application; in both cases, such an
application can be prepared at a lesser cost, as long as it describes all the
elements of the invention to be protected and it is replaced within twelve
months by complete applications.
The PCT, to which more than one hundred countries are signatories, enables
a single patent application to be filed while reserving the rights to the
invention in all the member countries. Individual applications must
nevertheless eventually be filed in all the territories where protection is sought,
but the deadline for these filings is extended to thirty months from the priority
date; thus the Applicant benefits from a two and a half year period after the
first filing to evaluate the market and establish an appropriate international
protection strategy. Moreover, the international phase of the PCT includes a
prior art search and an examination of the application by a patent Examiner,
which can give an indication as to the chances of obtaining patents for the
invention and as to the potential scope of the eventual protection.
An advantageous strategy for keeping all possible doors open for a maximum
time period while minimizing initial costs is the initial filing of a provisional or
informal patent application, followed within twelve months by the filing of a
PCT patent application. Taking the path of the PCT international phase
nevertheless has the disadvantage of delaying the issuance of corresponding
patents by many months. An attractive alternative could be to file patent
applications, in parallel with the PCT path, directly in the countries for which
one is certain to want to obtain quick protection. This is often the case with
the United States, for example. It is equally important, before expiry of the
priority year, to make sure that other countries considered for protection are
indeed members of the PCT; if not, patent applications must be filed there
directly within twelve months following the first filing.
In conclusion, despite significant fees associated with obtaining patents
internationally, informed entrepreneurs can take advantage of the delays
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provided by international patent treaties and establish a profitable protection
strategy leading to a maximum return on their investment.
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