PatentFilter

October 13, 2007 4:13 PM

PatentFilter: If a company has a patent in its non-US home country, can it sill after some years apply for a US-Patent?

PatentFilter: If a company has a patent in its non-US home country (let's say China) , can it sill after some years apply for a US-Patent?

posted by yoyo_nyc to work & money (5 comments total)

As far as I know the answer is "no". There's a time limit after substantive public disclosure of the invention, which I believe is one year. After that, you've lost your chance forever.
posted by Steven C. Den Beste at 4:16 PM on October 13, 2007

After filing in one country you have precisely one year to file your patents in foreign countries or you lose your priority date. That means if you file the patent in the US at one year and a day the effective filing date is the actual date you filed in the US, but if you had filed within the one year period then the effective filing date would be the date you first filed in the foreign country. These dates are all about which art is actually prior in considering patentability. If there is no disclosure of art which affects the patent at one year and a day then no harm no foul. However, at 18 months from the first filing the first patent application in the foreign country will publish. In the US there is a one year grace period from publication of the invention to file your patent. Other countries lack this grace period. Thus at one year after publication, assuming there were no earlier public disclosures or uses, (or offers for sale) of the invention the ability to file in the US will be lost.
posted by caddis at 4:41 PM on October 13, 2007

However, if this is your patent application that you seek to file in the US you should contact a qualified patent attorney who can look at your individual facts and give you an accurate answer directed to your specific circumstances.
posted by caddis at 4:44 PM on October 13, 2007

The patent system doesn't exist for the purpose of protecting inventors. The patent system exists in order to expand the public domain.

I know that sounds paradoxical, but giving people patents and offering them protection "for a limited time" is the inducement to make them reveal enough about their invention to permit someone "skilled in the art" to reproduce the invention. After the patent expires, then, anyone can produce and sell the invention. So in the long run, a limited duration patent results in a larger and more fertile public domain.

If there was an open-ended window for late filing of patents, it would squelch use of public knowledge in the state of the art. It's viewed as desirable that there be a fairly short cutoff date (one year after substantive public disclosure) so that everyone else knows that it's entered the public domain and can start using it.

If they did use it, and then a few years down the line a patent was issued, they'd all be screwed, which would mean they wouldn't take the risk, and the invention wouldn't go into use. That's exactly the opposite of what the patent system is supposed to achieve. Its purpose is to encourage the advance of technology, not to stifle it.

So if you wait too long, you lose your chance. And no one else can patent it, either, because of your prior art.
posted by Steven C. Den Beste at 5:26 PM on October 13, 2007

It's not just foreign patents that can start the 1 year timer. A technical article in a magazine can do it, too, or a paper delivered at a conference. The timer starts when people outside your company who are "skilled in the art" learn enough from you to be able to reproduce the invention, no matter how they learn of it.
posted by Steven C. Den Beste at 5:30 PM on October 13, 2007