The global patent – or lack thereof

Despite appearances to the contrary and all the talk about globalisation and the global economy, there is still no world government, nor even a regional one – and the European Parliament and Commission do not count as one either.

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Consequently, there is no such thing as a global or a world patent: each sovereign country has its own sovereign patent law that does not apply in any other country. This means that no national patent has any effect in any other country.

Any references you may see to ‘world’, ‘international’ or ‘European’ patents are really references to patent applications that are filed at special common patent offices to help reduce initial applications costs, but the end result of the application processes are the same – national patents that are subject to national law and extend only so far as the national law of the country concerned.

Since each sovereign country has its own sovereign patent law, in order to protect an invention in other countries the owner must file for patent protection in those countries where patent protection is required.

Furthermore, all patent applications must have an effective filing date prior to any public disclosure of the invention by anyone (including the inventor or patent owner) anywhere in the world. In the absence of international agreement, this would mean that all patents would have to be filed pretty much at the same time in all required countries before any public disclosure of the invention was made.

However, in order to make life easier, there is an International Treaty (the Paris Convention), which allows a patent applicant to file corresponding applications in foreign countries up to one year after the date of an initial patent application (for example in the United Kingdom), and have all those foreign applications effectively backdated to the date of the initial application.

Taiwan among few countries not included
This means that the invention can be disclosed and commercialised publicly after filing the initial application without prejudicing the foreign applications filed within one year. However, it is important to note that the foreign application must be filed within 12 months (to the day), that the invention must be exactly the same and that a few countries (for example Taiwan) are not party to the treaty (so that if patent protection is required in these countries, patent applications must be filed before any public disclosure of the invention anywhere in the world).

As mentioned above, in order for a patent to be valid, the invention being covered must be new (and inventive) as at the effective filing date of the patent application. Since the novelty and inventiveness is assessed in comparison to everything that has been published everywhere in the world, at any time, no-one (including the Patent Offices examining and granting the patents) can carry out a search for everything ever published in the world in any language, so there is no guarantee that a granted patent is valid.

Nevertheless, most patent offices will carry out a search (limited by their expertise and expense) and will examine the application based on the results of that search. This means, of course, that if a patent is later litigated, the person accused of infringement is likely to try to invalidate the patent by carrying out a (more) extensive search to try to find some other publications that may have been published prior to the filing date of the initial patent application.

The combination of the above points means that, for example, a US patent cannot be used to prevent a competitor making, selling or otherwise exploiting the patented invention in any other country (unless, of course, the owner has an equivalent patent in that other country). Similarly, a UK patent does not extend to any other country and cannot be used to prevent anyone else exploiting the particular invention in any other country, including other countries of the European Union.

Thus, if a company uses in the UK an invention that has been patented in the US, then that invention becomes public knowledge at least from the date that the company makes the invention public – for example, by selling it. From this date it is too late for anyone to get a valid patent on that invention in the UK, unless of course, the patent application has an effective filing date prior to the date that the invention becomes public.

Therefore, if the original owner of the US patent files a UK patent application within 12 months of the filing date of the initial US patent application, then the UK patent application would be effectively backdated to the filing date of the initial US patent application which would be before the date that the Company started to use the invention in the UK.

Such a backdated patent would therefore be valid (at least as far as the use of the invention by the company in the UK was concerned) and the owner of the UK patent could subsequently prevent the company in the UK from continuing to use the invention. On the other hand, if the UK patent application was not able to be effectively backdated to before the date that the Company started to use the invention in the UK, then the UK patent would be invalid because the invention covered would not be novel.

For the same reasons, if an idea that is first patented in the US (but for which a UK patent application has not yet been filed) is openly discussed at conferences, in journals or other articles, it would be too late for anyone to get a valid patent on the invention in the UK, unless the UK patent application gets an effective filing date prior to the date that the invention was publicly discussed.

Get the filing date right and understand the validity
It can be seen from these examples that validity of a patent is, in theory, a relatively simple matter to be determined by comparing the effective filing date of the patent and the date when the invention was first available publicly. If the initial patent application (wherever that may have been filed) was filed more than 12 months previously, then it is too late for the patent owner to now file a patent application in another country after the invention has already become public knowledge since it cannot be backdated.

Only if the patent owner can still file in a particular country an application that can be backdated to before the date that the invention became public knowledge can a valid patent still be gained to preclude others from using the invention in that country.

A final note of caution: even if no national patent application has been filed within a particular 12 month period, it is possible for there to have been a ‘world’ or ‘international’ patent application filed within the 12 month period which international application could still later (within 30 or 31 months from the initial filing date) become a national patent application which is effectively backdated to the filing date of the initial patent application.

This report has been contributed by Christopher Hirsz of HLBBshaw. To reach the author, contact editor@thechilli.com.

Any comments on this article? Email the editor at Editor@TheChilli.com

© Chilli Publishing Ltd 2004

12DEC2005