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Legal Updates
7/23/2007
You Have Invented The Next Great Medical Device . . . Now Protect It
Obtaining And Protecting Patents Abroad
INTRODUCTION. You have just invented the greatest medical device the world will ever see. Of course, your very next thought is to call your attorney and tell him or her to file a completed patent application with the United States Patent and Trademark Office (“PTO”) … right? Calling your attorney is a good idea, but depending on your global business needs, instructing him or her to file the patent application in the United States may not be the best course of action. If you have no intentions of commercializing your new medical device outside of the United States and do not mind someone else copying the invention and profiting from your idea abroad, then proceed to file. If, however, you intend to commercialize your device abroad, then additional considerations must be factored in prior to applying for a United States patent.
While filing your patent application with the United States Patent and Trademark Office (“PTO”) is critical to protecting your investment, it is equally important to consider the consequences of such an application for your global business strategy. The Patent Act, 35 U.S.C.A. § 154 (a), gives a patent holder the right to “exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” Notably absent from this language is the ability to enforce your patent outside of the United States. Patents issued by the United States do not give patent holders rights or protections in foreign jurisdictions. As a result, if you want to preserve your ability to commercialize your next medical device abroad, it is necessary to file the appropriate application in each country you intend on commercializing in.
FORFEITING PATENT RIGHTS ABROAD. From the outset, it is important to note that every country and region has different rules and procedures for obtaining a valid patent and the protections afforded to a patent holder. Generally, obtaining a valid patent for your medical device abroad requires filing the proper application in each foreign jurisdiction pursuant to each country’s respective laws and procedures. From a legal and business perspective, it is important to consider, prior to disclosing your invention, in which markets you intend to commercialize your next great medical device.
Consider this hypothetical. You invent your medical device, which will improve people’s lives around the world. You file your patent application in the United States with the PTO and begin to market your device. After a little over a year goes by, you learn that a company in Country X has copied your idea and is profiting from the sales of its version of your device. Unfortunately, at this point there is little you can do to prohibit the foreign company from commercializing your invention. Although the Country X company cannot market its version of your device in the United States, your United States patent carries no weight in Country X and your idea is no longer novel, barring you from now obtaining a patent in Country X (or any other country for that matter). Ultimately, failure to properly file patent applications in foreign jurisdictions prior to commercializing your idea in the United States can limit your ability to protect your investment abroad. Just a little planning, patience and research prior to disclosing the secrets to your medical device can offer you a plethora of additional protections abroad.
OBTAINING PATENT PROTECTION ABROAD. Fortunately, various international treaties and agreements have aided in bringing harmony and ease to the global patent world. Although these international treaties do not relieve your company of the requirement to ultimately file patent applications in each individual country, they do provide you numerous cost-saving options.
The Patent Cooperation Treaty (“PCT”), administered by the World Intellectual Property Organization (“WIPO”) [1], allows an applicant to file a single international patent application in any receiving office listed in the PCT. This single international application will be recognized as a regular national patent application in any PCT member country designated in the international application by the applicant. The applicant then has 20 or 30 months (depending on the country) from the date of the first application filing to obtain a patent in those countries designated in the international application. The PCT establishes one uniform application that can be filed in all member countries and gives your business 20 or 30 months to determine in which countries you will ultimately choose to obtain valid patents.
The Paris Convention, also administered by WIPO, gives your company additional time to file patent applications in foreign jurisdictions that are signatories to the Convention. The Paris Convention gives your company 12 months from the time you file your patent application in the United States – or any other member country - to file additional applications in other member countries. In other words, you can file your patent application in the United States and commercialize your medical device without forfeiting your ability to obtain a patent in another member country for up to 12 months. Hence, in the hypothetical above, if Country X were a signatory to the Paris Convention, your company could still obtain a patent in Country X for up to 12 months after you filed your application in the United States.
CONCLUSION. This brief summary in no way covers the vast sea of global patent law. The purpose of this summary, rather, is to alert you to the fact that there can be negative consequences to your global business plans when you fail to file the proper patent applications in those countries where you may seek to commercialize your next medical device. Additionally, there are other various international treaties and agreements, not discussed, which can alleviate some of the difficulties in obtaining patents abroad. What is important is to recognize that these issues exist and to do the necessary research and strategizing prior to disclosing the secrets to your next great medical invention.
NOTE
1. WIPO is an agency of the United Nations, which administers and oversees numerous international treaties and agreements affecting intellectual property.
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