|
Foreign Filings
Once a patent application is filed in the first country, it can be filed in most other countries within the next twelve months and, by international treaty (the Paris Convention), enjoy in those countries an effective filing date that is deemed to be the date of filing in the first country. This benefit is lost if filings in other countries are delayed more than twelve months after the first filing. In most countries, it is possible to file a patent application after the expiry of the aforementioned twelve-month period if a patent for the same invention has not yet been granted elsewhere and there has been no intervening publication, prior public use or sale of the invention.
Where patent protection beyond the U.S. and Canada is required, it is usually less costly, more convenient, and more suited to an applicant's needs to file first a Canadian or U.S. patent application and then to follow that initial filing with a Patent Cooperation Treaty (PCT) international application that is filed within 12 months of the initial filing and derives the Paris Convention benefit of the filing date of the original application filed. This possibility is discussed further below, and we also print and publish on our website more detailed PCT-related information.
After filing the first application in Canada or the U.S., if it is decided not to file a PCT application, subsequent filings in other English-speaking countries are usually much less costly, and are typically of the order of $5,000, sometimes less. So if it cost, say, $20,000 to file the first application in the U.S., the cost of filing a counterpart Canadian application might be perhaps $3,000. In foreign-language hard-currency countries, costs are higher - often $10,000 or more. The cost of technical translation alone can run into several thousands of dollars.
For patent applications filed in a country other than Canada, we retain associates (lawyers or patent agents who reside and practise in the foreign country in which the patent application is to be filed) to assist in ensuring that the application conforms to local requirements, and in helping us to overcome any obstacles that the patent application may encounter in the foreign country. Because foreign patent laws and practice requirements undergo frequent change, it is impossible for us to be confident that we are fully aware of all current requirements in foreign countries. Practitioners in our firm are registered to practise in the United States Patent Office, and we try to stay abreast of significant developments in U.S. law and practice, but patent rights are sufficiently important that it is sometimes absolutely necessary and nearly always desirable that US or other foreign associates be available to assist us in prosecuting patent applications in foreign countries.
|
|
