Foreign Patents for University of Colorado Technology Transfer Office

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

20. Lee Osman Marc MusylPaul Prendergast, PhD. Dorsey & Whitney LLPSuite 4700370 Seventeenth StreetDenver, Colorado(303) 629-3400 osman.lee@dorsey.com