Countries outside the United States account for about two-thirds of the total world market, especially in high technology areas. A company which wants to commercialize university technology will want to sell that technology in as many national markets as it can in order to maximize profit. Even when the only market being considered is the US market, lack of foreign patent protection invites 'pirates' to set up business in other countries and illegally import these goods into the United States. Most companies prefer that foreign patent rights be as prosecutable as United States patent rights. Generally, most foreign countries have the following patent regulations which are different from the analogous US patent regulations:
- Any prior publication nullifies the right to a patent;
- The patented article must be manufactured in the country after a certain period;
- Fees are charged annually.
While, the United States grants a grace period of one year between first public disclosure of an invention and filing of a patent application, virtually no other foreign governments does so. Most countries follow a requirement of "Absolute Novelty". This means that if an invention is publicly disclosed without a patent application having already been filed, then all foreign patent rights are lost. Some countries have an exception to this rule under a treaty signed with the United States (The Paris Convention for the Protection of Industrial Property). Under these treaties, publication does not cause loss of foreign patent rights if a United States application is filed prior to publication. If a patent application is filed in the United States before publication, and if a patent application is then filed in the foreign country within the following year, then foreign patents may still be granted.
Given the differences between US patent law and foreign patent law with regard to loss of patent rights after public disclosure, it is critical that researchers contact the OTT prior to making a public disclosure of any invention. Contact the Director of Technology Transfer, Ralph Albano, at (202) 319-5218. OTT is located in McMahon Hall, room 213. The fax number is (202) 319-5449.
Foreign Patent Information Cooperation Treaty
The Patent Cooperation Treaty (PCT) is a treaty that provides a streamlined procedure for preserving the rights to file patent applications in most industrialized countries. The procedure entails filing a copy of a patent application with the PCT office and paying a PCT filing fee. This preserves the right to later file directly in countries (or regions in the case of Europe) designated in the PCT application form. The main reason for filing a PCT is to preserve future foreign patent rights until the need arises to pursue them further. The filing of a PCT delays the time for filing foreign applications, which allows time to assess the advantages or disadvantages of proceeding with full patent applications in foreign countries.