We can assist in evaluating whether to proceed with a patent application by way of a patentability search. That search can be done in the Patent Office but more than likely involves a computer search of databases that encompass domestic and foreign patents and applications, periodicals, journals and textbooks.
The results of the search may demonstrate a likelihood of patentability, however, generally, a search at this stage is unlikely to be exhaustive enough to conclude absolute novelty and/or non infringement. The search can help us focus the invention and hence, the application, to ensure the disclosure is as broad as the art allows and which your work or the disclosure enables.
Should you decide to file a U.S. patent application, the application must be filed preferably before, if you desire foreign rights, and certainly within one year of, the first public use or disclosure, sale or offer for sale of an item or service embodying the invention in the U.S. More than likely, such a disclosure could entail presenting at a meeting, publishing an abstract, presenting a poster at a conference, publishing a manuscript (which may be on-line, and which is considered a publication or public disclosure), having a grant accepted and under certain circumstances, giving a seminar, with audiovisual materials.
As mentioned, if you have designs of foreign rights, your application must be the first disclosure of your invention. Moreover, in the case of biotech applications, any unique and particular biological material this might be difficult to duplicate, such as a cell, virus, vector, polypeptide sequence or polynucleotide sequence (for example, in GenBank) may need to be deposited, and that deposit must precede the first application filing if foreign rights are desired. As discussed in more detail below, you should recognize that potential licensees may have a global business, however, foreign filing costs are formidable.
If an application is filed in the U.S. before any publication, demonstration or sale, and any necessary deposit is already made, most foreign countries will acknowledge that U.S. filing date as the filing date for applications filed abroad within one year of the U.S. filing. Thus, a Patent Cooperation Treaty (PCT) application or a foreign application must be filed within one year of your first-filed U.S. non-provisional or provisional application. If the first-filed application is a provisional, then you will need to file a non-provisional or a PCT application before the one-year expiration of the provisional.
The first application you file can be a U.S. application, whether a provisional or a non-provisional, an application filed in a foreign country or a PCT application. Not all countries are party to the PCT, and not all countries are party to the Paris Convention which provides for the one-year period within which to file an application in a country subsequent to a first filing in another country. Thus, if you seek patent protection, for example, for some countries in South America, in the Mideast and in Southeast Asia, those applications will have to be filed directly in the patent offices of those non-PCT countries of interest within one year of the first-filed application. You need to advise us of your global interests and your business plan and/or model as soon as possible so that we can make appropriate inquiries of our network of foreign associates to ensure rights are not forfeited.
A word about provisional applications, oft viewed as a cost effective and rapid means of securing patent rights. Remember, though, the invention you ultimately can claim in light of effective prior art will be constrained by the extent and thoroughness of your disclosure. Global ideas with few details may be found inadequate to practice the invention in general. That position will not allow you to obtain claims to those broad embodiments, and certainly, will not allow you to claim particular species or elements not explicitly disclosed in the application.
Finally, as mentioned, foreign filing is not an inexpensive undertaking. At the end of the PCT process, or one year after filing your U.S. application when foreign applications must be filed, many of those foreign applications will need to be translated into the native language for filing. In many countries, the translation must be available for the initial filing, and if not at the initial filing, then generally, within about ninety (90) days of filing. Translations should be made by professionals familiar with science and law. Translation charges generally are by the word. Also, in many foreign patent offices, such as those of Canada, the Gulf Cooperation Council and the Europe Patent Office, annual fees must be paid simply to maintain the application pending in the respective patent office before and during examination. In some countries, those annual fees continue after a patent is granted. In other countries, such as the U.S., Korea and China, maintenance fees ensue once a patent is granted.
We will prepare and prosecute your application on your behalf seeking your guidance and assistance on technical issues to obtain commercializable claims to protect your products and methods, and manage your IP portfolio. We have a network of patent attorney and agent colleagues throughout the world to assist you in executing your global patent interests.