You’ve filed for patent protection in the U.S. and are now considering filing internationally. You decide that you only need protection in one or, perhaps, a few specific countries and therefore, rather than filing a Patent Cooperation Treaty (PCT) or European Patent Convention (EPC) application, you want to file direct “national” applications. There are quite a few things that we can do in advance to prepare for the national filings in order to avoid unnecessary delays and additional expense.
Different countries have different requirements, which can be quite different indeed. So, because I have recently faced the challenge of filing national patent applications in Latin America and the Middle East, I decided it was perfect fodder for a blog article.
In most countries, you have one year from the date that you filed your U.S. application to file internationally. It is important to begin the process several months in advance of our deadline to file. In addition to the costs involved in national filings, we need to determine what documents are required and the deadlines for submission of documents in each country in which you wish to file.
Once you let us know which countries you want to file in, our first step is to contact a local patent attorney in each country to act as our agent and to obtain some basic information in order to move forward. Some of the questions we ask are:
1. What are the estimated costs of filing our national application including government fees, local attorney’s fees, costs for translations, and any other costs involved?
2. What documents are required for filing our national application including any notarization and/or legalization required thereon?
3. What are the deadlines for submission of documents?
4. Are original documents required or will electronic copies be sufficient?
We also request that they provide us with form documents so that we can begin the process of obtaining the necessary signatures and legalization, which can take some time, depending on the type of legalization required. If the country in which you wish to file is a member of the Hague Convention, documents will only need legalization by Apostille through the Secretary of State for the state in which the document was executed. If the country in which you wish to file is not a party to the Hague Convention, it may require document legalization up to that country’s consulate, which involves certification by the County Clerk and/or Secretary of State in which the document was executed, then the U.S. Department of State, and then the consulate. You may also be required to obtain certification from the U.S.-Arab Chamber of Commerce prior to the consulate for some countries in the Middle East. If at any point in this process our document does not meet the requirements of a particular office for certification, we will have to start the process again by amending our document to meet the requirement, obtaining original signatures thereon, and restarting the process of obtaining legalization. Researching each office’s requirements before we begin saves substantial time and headaches later on.
In order to begin the process of filing our national application, we will need to provide our local agent with the following:
1. Our national application and drawings;
2. Either a copy of the Application Data Sheet (ADS) as filed in the U.S. application to which our national application claims priority or the names, addresses and nationality of each inventor and/or applicant;
3. The Application Serial Number and Filing Date for each application to which our national application claims priority;
4. A certified copy of the priority documents to which our national application claims priority, which we need to request from the U.S. Patent and Trademark Office several weeks prior to the deadline for submitting priority documents;
5. A list of known prior art references and/or Information Disclosure Statement (IDS) as filed in the U.S. application to which our national application claims priority;
6. The U.S. Examiner’s search report, if the application to which our national application claims priority has undergone examination;
7. The documents (typically, a Power of Attorney, Declaration, and/or Assignment) our local agent has advised are required to complete the filing requirements in the country in which you wish to file.
If we have not been able to obtain the necessary documents and/or legalization prior to our deadline to file our national application, we can send the basic documents (i.e. application, drawings, applicant/inventor information, etc.) in order to file prior to the deadline and submit the remaining required documents later on as required by the patent office of the country in question. Our local agent will advise regarding the deadlines for submission of documents. It should be noted that additional government fees may be required for late submission of documents in addition to our local agent’s fees for attending to same.
It is important to bear in mind all of the steps that must be undertaken to file national applications and to allow as much time as possible in advance of your international filing deadline. Delays in making decisions regarding countries in which you wish to file are sometimes unavoidable, but waiting until the last minute can be costly.
Once our national application has been filed, all required documents have been submitted, and all formalities have been attended to, it may be some time before our application undergoes examination, depending on the back log in that particular country. It should also be noted that some countries, Canada and Indonesia for instance, require that you request examination and pay the fees associated with same before your application will be taken up for examination. There is typically a deadline for requesting examination and failure to request examination in the countries that have that requirement will result in abandonment of our application.
In most countries, the patent application process is similar to the U.S. in that your application will undergo examination, the Examiner will issue one or more official actions, and you will have an opportunity to respond to the Examiner’s objections to your application.
Unlike the U.S., which requires payment of maintenance fees in the 3 ½, 7 ½, and 11 ½ years after your patent has been granted, other countries require payments of maintenance fees (or “annuities”) either annually from the time you file your application, or annually after your patent is issued. For example, in Russia, annuities are due from the third year of the patent duration (i.e. three years from date of filing) and are payable only after the patent is granted. Our local associate attorneys advise us regarding the requirements for payment of maintenance fees.
Filing a national patent application is a challenging undertaking. Being prepared as far in advance as possible and knowing what to expect will save considerable expense and frustration during the process.