The following 18 reasons help justify filing a patent application in the U.S. The first five reasons directly justify filing a patent application in the U.S. first. In any case, where a client eventually decides to file a patent application in the U.S., in hindsight at least, that client should have filed in the U.S. first. The following reasons should help make this fact clear.
1. First and most important: To better ensure the client obtains the broadest possible U.S. patent. Filing in the U.S. first, allows the applicant to jump back in time one year to define the prior art against which the client's patent application will be judged. Filing early in the U.S. is necessary in order to take advantage of the grace period of one year from the filing of your client's first U.S. application to exclude the applicant's own as well as a third party's prior art. Here's why: Title 35 U.S.C section 102(b), states the following:
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...
Consequently, although the priority filing date is the date that determines prior art for a European patent, and in fact most national or regional patents, for a U.S. patent, prior art is defined one year before the earliest filing in the U.S.. Yes, although the practice of "swearing behind" using the client's non-U.S. priority filing helps to a limited extent because the client can claim inventorship at least back to his priority filing date (only available for WTO-member countries), this allows them to go back in time only to their priority filing date, not one year earlier to their priority filing date, as he would have been able to do if the client had filed first in the U.S. Consequently, if the client chooses to file anywhere but the U.S. first, he's choosing to put himself at a disadvantage vis-à-vis other patent filers who have a 102(b) filing date in the U.S. which is earlier than their priority filing date. That, in almost all cases, would be a strategic mistake that the rational client, if fully informed, would never expect to make but for his ignorance. The first priority of the client-oriented patent attorney is to ensure that his client does not make mistakes.
One may fairly ask, why does filing in the U.S. first offer this very significant advantage? Because the U.S. is a first to invent country (not a first to file country) and the filing of a U.S. application is the best proof of date of invention. Further, by the provision of a grace period of one year, the client receives the benefit of the assumption that it took a year to develop the invention prior to filing in the U.S. Consequently, if the client files first in the U.S., the U.S. patent examiner can assert less prior art against him, and therefore, the client's U.S. patent claims can be broader than elsewhere in the world. In addition, if a third party competitor wishes to defeat the client's U.S. patent, they must find prior art that is one year older than they would otherwise have to find if the first filing as a non-U.S. filing. Alternatively (the down side), the client must find prior art that is one year older in order to defeat a competitor's earliest U.S. filing date.
2. Fortunately, the European Patent Office and the patent offices of essentially all industrialized nations of the world consider a U.S. patent filing a valid priority filing for their own purposes, thereby serving to reserve rights in that country as of the U.S. priority filing date. Of course, the Paris Convention requirement that the regular filing be made within one year of the first filing still applies. In other words, a Swiss resident filing a U.S. patent application first and later (within one year) a European patent application, can claim priority to the U.S. patent application and thereby fully preserve their rights in Europe, just as if the client has filed in Europe or their home country first. It should be noted, however, that where the applicant is a French resident, France might not consider a first U.S. filing by such an applicant as a valid filing because of French national law requiring that residents of France file first in France for national security purposes (however, this is likely to soon change, so feel free to contact the author to learn of the latest status on this point).
3. U.S. patent applications can be filed in any language. Only six month or perhaps a year or more later (within six months of receiving an official notice to do so) must the application be translated into English. This means that the client applicant can gain the above advantage by filing a U.S. provisional patent application concurrently with an early local filing, for a cost of perhaps less than 500 Euros more than filing in the foreign country only (i.e., essentially, the U.S. provisional can be a straight filing or re-filing of the original non-English language filing).
4. The filing fee for a U.S. provisional application is $210, significantly lower than the filing fee in most other industrialized countries. For individuals or companies having less than 500 employees, the official filing costs and most future official fees are reduced by 50% (so, $105 for a U.S. provisional filing).
5. Monetizing a patent is much easier in the U.S. than in other countries because the legal system allows clients with valuable patent rights to negotiate a contingent fee agreement with even the largest law firms. Depending on the perceived value of the patent, these firms will not charge for their time or expenses, unless and until they win the case and damage award is granted. In Europe, most countries (with the possible exception of the United Kingdom) do not allow lawyers to accept contingent fees, and so the client must pay their lawyers by the hour in Europe. Large companies know this and so tend to ignore the European patent rights of others until a suit is actually filed. Large European research institutions and universities know this and very often file for patent protection only in the U.S. for certain technologies.
6. Because the United States represents the largest domestic market for a broad range of products and services, this sheer market size means that it is likely that, on a per capita basis, the United States will be the least expensive jurisdiction in which to obtain patent protection5. A U.S. patent typically costs one half that of a European patent, for example. Further, renewal fees are only due every 3.5 years, not yearly as in Europe.
7. English is the language of Computer Science, Information Technology, Business and Law, and the native language of many industrialized nations around the world, such as the United Kingdom, Ireland, Australia, Canada, New Zealand, and Singapore. Further, Japan permits filing in English, provided that a translation into Japanese is filed within two months. Therefore, a patent application drafted in English first is likely to not suffer from losses in meaning due to translation in these important countries.
8. Extraterritorial effects may be put into action: a significant advantage of filing in the U.S. first, is that, if no further filings are made, a U.S. patent can provide protection for the inventor or licensee in ways which extend beyond the borders of the United States.
9. The filing of a U.S. provisional patent application permits a claim of priority without reduction of the term of the U.S. patent that claims priority to it (i.e., the term of the U.S. patent begins on the filing of the subsequent regular U.S. application) and the preservation of patent rights at minimal cost (the lack of formal requirements of a U.S. provisional application means that the application can be prepared for less money than a regular U.S. application-an important advantage for start-ups who are strapped for cash).
10. An early U.S. filing date means that our client's application won't be rejected by the U.S. patent office under §102(e) of the U.S. Patent Law, when another party's U.S. patent application has published during the prosecution of the client's application, even though their non-U.S. priority filing date is earlier than our client's U.S. filing date. Conversely, if the client's priority filing is a U.S. filing, then the publication of the client's application creates §102(e) prior art against competitors.
11. It is clear that patent protection is available for computer software in the U.S., and for business methods as well (subject to certain conditions). The long history of accepting software patent applications in the U.S. has made the U.S. patent office the office of choice for software patent examination, in part because the thoroughness of prior art searching is considered to be superior there. Therefore, filing a regular U.S. application early, and ordering accelerated examination is often the quickest way to determine whether a patent will ultimately issue on any application filed.
12. Where the invention has already been publicly disclosed, the United States is among the very few countries in which one has a one year grace period in which to file.
13. Because the United States is a first-to-invent country, one may file a patent application which is essentially identical with an earlier application filed by a competitor, within one year of the publication of the competitor's U.S. application, and, provided that the client can prove he was the first to invent in an interference procedure and that there were no novelty-destroying publications one year prior to the filing of the application, he may be able to recover the rights to the patent from the competitor (this applies to countries, such as Switzerland, Germany, and Austria that are members of the World Trade Organization).
14. Provided the client does not file any foreign applications and requests non-publication of the application at the time of filing, his U.S. application is kept secret and never published by the U.S. patent office, until it is granted. Therefore, the client need not relinquish trade secret protection until he is convinced that the patent protection obtained will protect him more effectively than merely keeping the technology secret. This is simply not possible if a European, Japanese, Chinese or Korean patent is filed.
15. Patent pending status can be maintained almost indefinitely (subject to the 20 year patent term, payment of fees and ongoing good faith prosecution of the application) and thus offer the ongoing threat of amendment to "cover" a competing device, thus providing a deterrent effect against competition, particularly where large investments in tooling would be required of competitors/potential infringers.
16. Unity of invention requirements are less stringent in the U.S. than in Europe, enabling the possibility of one U.S. patent covering two or more inventions as defined under the European Standard of unity.
17. A filing date of yesterday is possible, through taking advantage of the significant time difference between Europe and the East Coast or Hawaii for example. In fact, clients that come to our firm in Europe and ask us for a priority filing benefit from an additional 6 hours to prepare and file such priority filing. This is because the date of filing at the U.S. Patent Office counts as the official filing date and so, we have until 6 AM in the morning (midnight Washington DC time) to file an application in order to get the filing date of the previous day in Europe.
18. Prior art that would otherwise qualify as prior art in Europe and most industrialized countries of the world, is not considered prior art in the U.S. when there is a common inventor or if such technology was developed under a joint-development agreement.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...
Consequently, although the priority filing date is the date that determines prior art for a European patent, and in fact most national or regional patents, for a U.S. patent, prior art is defined one year before the earliest filing in the U.S.. Yes, although the practice of "swearing behind" using the client's non-U.S. priority filing helps to a limited extent because the client can claim inventorship at least back to his priority filing date (only available for WTO-member countries), this allows them to go back in time only to their priority filing date, not one year earlier to their priority filing date, as he would have been able to do if the client had filed first in the U.S. Consequently, if the client chooses to file anywhere but the U.S. first, he's choosing to put himself at a disadvantage vis-à-vis other patent filers who have a 102(b) filing date in the U.S. which is earlier than their priority filing date. That, in almost all cases, would be a strategic mistake that the rational client, if fully informed, would never expect to make but for his ignorance. The first priority of the client-oriented patent attorney is to ensure that his client does not make mistakes.
One may fairly ask, why does filing in the U.S. first offer this very significant advantage? Because the U.S. is a first to invent country (not a first to file country) and the filing of a U.S. application is the best proof of date of invention. Further, by the provision of a grace period of one year, the client receives the benefit of the assumption that it took a year to develop the invention prior to filing in the U.S. Consequently, if the client files first in the U.S., the U.S. patent examiner can assert less prior art against him, and therefore, the client's U.S. patent claims can be broader than elsewhere in the world. In addition, if a third party competitor wishes to defeat the client's U.S. patent, they must find prior art that is one year older than they would otherwise have to find if the first filing as a non-U.S. filing. Alternatively (the down side), the client must find prior art that is one year older in order to defeat a competitor's earliest U.S. filing date.
2. Fortunately, the European Patent Office and the patent offices of essentially all industrialized nations of the world consider a U.S. patent filing a valid priority filing for their own purposes, thereby serving to reserve rights in that country as of the U.S. priority filing date. Of course, the Paris Convention requirement that the regular filing be made within one year of the first filing still applies. In other words, a Swiss resident filing a U.S. patent application first and later (within one year) a European patent application, can claim priority to the U.S. patent application and thereby fully preserve their rights in Europe, just as if the client has filed in Europe or their home country first. It should be noted, however, that where the applicant is a French resident, France might not consider a first U.S. filing by such an applicant as a valid filing because of French national law requiring that residents of France file first in France for national security purposes (however, this is likely to soon change, so feel free to contact the author to learn of the latest status on this point).
3. U.S. patent applications can be filed in any language. Only six month or perhaps a year or more later (within six months of receiving an official notice to do so) must the application be translated into English. This means that the client applicant can gain the above advantage by filing a U.S. provisional patent application concurrently with an early local filing, for a cost of perhaps less than 500 Euros more than filing in the foreign country only (i.e., essentially, the U.S. provisional can be a straight filing or re-filing of the original non-English language filing).
4. The filing fee for a U.S. provisional application is $210, significantly lower than the filing fee in most other industrialized countries. For individuals or companies having less than 500 employees, the official filing costs and most future official fees are reduced by 50% (so, $105 for a U.S. provisional filing).
5. Monetizing a patent is much easier in the U.S. than in other countries because the legal system allows clients with valuable patent rights to negotiate a contingent fee agreement with even the largest law firms. Depending on the perceived value of the patent, these firms will not charge for their time or expenses, unless and until they win the case and damage award is granted. In Europe, most countries (with the possible exception of the United Kingdom) do not allow lawyers to accept contingent fees, and so the client must pay their lawyers by the hour in Europe. Large companies know this and so tend to ignore the European patent rights of others until a suit is actually filed. Large European research institutions and universities know this and very often file for patent protection only in the U.S. for certain technologies.
6. Because the United States represents the largest domestic market for a broad range of products and services, this sheer market size means that it is likely that, on a per capita basis, the United States will be the least expensive jurisdiction in which to obtain patent protection5. A U.S. patent typically costs one half that of a European patent, for example. Further, renewal fees are only due every 3.5 years, not yearly as in Europe.
7. English is the language of Computer Science, Information Technology, Business and Law, and the native language of many industrialized nations around the world, such as the United Kingdom, Ireland, Australia, Canada, New Zealand, and Singapore. Further, Japan permits filing in English, provided that a translation into Japanese is filed within two months. Therefore, a patent application drafted in English first is likely to not suffer from losses in meaning due to translation in these important countries.
8. Extraterritorial effects may be put into action: a significant advantage of filing in the U.S. first, is that, if no further filings are made, a U.S. patent can provide protection for the inventor or licensee in ways which extend beyond the borders of the United States.
9. The filing of a U.S. provisional patent application permits a claim of priority without reduction of the term of the U.S. patent that claims priority to it (i.e., the term of the U.S. patent begins on the filing of the subsequent regular U.S. application) and the preservation of patent rights at minimal cost (the lack of formal requirements of a U.S. provisional application means that the application can be prepared for less money than a regular U.S. application-an important advantage for start-ups who are strapped for cash).
10. An early U.S. filing date means that our client's application won't be rejected by the U.S. patent office under §102(e) of the U.S. Patent Law, when another party's U.S. patent application has published during the prosecution of the client's application, even though their non-U.S. priority filing date is earlier than our client's U.S. filing date. Conversely, if the client's priority filing is a U.S. filing, then the publication of the client's application creates §102(e) prior art against competitors.
11. It is clear that patent protection is available for computer software in the U.S., and for business methods as well (subject to certain conditions). The long history of accepting software patent applications in the U.S. has made the U.S. patent office the office of choice for software patent examination, in part because the thoroughness of prior art searching is considered to be superior there. Therefore, filing a regular U.S. application early, and ordering accelerated examination is often the quickest way to determine whether a patent will ultimately issue on any application filed.
12. Where the invention has already been publicly disclosed, the United States is among the very few countries in which one has a one year grace period in which to file.
13. Because the United States is a first-to-invent country, one may file a patent application which is essentially identical with an earlier application filed by a competitor, within one year of the publication of the competitor's U.S. application, and, provided that the client can prove he was the first to invent in an interference procedure and that there were no novelty-destroying publications one year prior to the filing of the application, he may be able to recover the rights to the patent from the competitor (this applies to countries, such as Switzerland, Germany, and Austria that are members of the World Trade Organization).
14. Provided the client does not file any foreign applications and requests non-publication of the application at the time of filing, his U.S. application is kept secret and never published by the U.S. patent office, until it is granted. Therefore, the client need not relinquish trade secret protection until he is convinced that the patent protection obtained will protect him more effectively than merely keeping the technology secret. This is simply not possible if a European, Japanese, Chinese or Korean patent is filed.
15. Patent pending status can be maintained almost indefinitely (subject to the 20 year patent term, payment of fees and ongoing good faith prosecution of the application) and thus offer the ongoing threat of amendment to "cover" a competing device, thus providing a deterrent effect against competition, particularly where large investments in tooling would be required of competitors/potential infringers.
16. Unity of invention requirements are less stringent in the U.S. than in Europe, enabling the possibility of one U.S. patent covering two or more inventions as defined under the European Standard of unity.
17. A filing date of yesterday is possible, through taking advantage of the significant time difference between Europe and the East Coast or Hawaii for example. In fact, clients that come to our firm in Europe and ask us for a priority filing benefit from an additional 6 hours to prepare and file such priority filing. This is because the date of filing at the U.S. Patent Office counts as the official filing date and so, we have until 6 AM in the morning (midnight Washington DC time) to file an application in order to get the filing date of the previous day in Europe.
18. Prior art that would otherwise qualify as prior art in Europe and most industrialized countries of the world, is not considered prior art in the U.S. when there is a common inventor or if such technology was developed under a joint-development agreement.
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