Patent law?


Can anyone here direct me to information regarding patents? Does a patent applied for in one country have standing in all countries, or does it need to registered in individual countries? For example, if a product has a US patent, does it need to be registered in Taiwan to be covered in Taiwan? Does anyone know of a good information source online I could read? Thank you.

Isn’t this Mother Theresa’s specialty?

Has to be applied for in individual countries.

You can also try applying under the Patent Cooperation Treaty (PCT), which lets you apply once initially, and then specify countries in which you’d like to file. Eventually you will most likely have to handle patent prosecution in each country individually, but the beginning steps should be easier. That said, I am not an expert on PCT, so I can’t answer too many of your questions on that. I mainly deal with US patents.

Thanks, josefus. I’m not a patent expert (I help negotiate and draft patent licensing agreements – ie giving others the right to use a patent – and don’t actually file patent applications or prosecute patent litigation, which require different skills and knowledge). Nonetheless, I know a little about the subject.

In general, a patent is the right to forbid others from making, using, offering for sale or selling an invention in a particular country, and that right can only be obtained individually, by filing separate applications in every country in which protection is desired.

Not surprisingly, patent laws in different countries vary and obtaining international protection one country at a time is an extremely time consuming and expensive process, so most of the world’s nations have been negotiating and ratifying a series of treaties over the past 100 years to harmonize the world’s patent laws and create a global system of patent protection. While much progress has been made, we are still not there yet.

In most countries, the most basic requirements in order to patent an invention are novelty (the invention must be new and has not been published, sold or made available to the public), utility (the invention must be useful) and non-obviousness, though it is often debatable how strictly the second and third requirements have been adhered to. The first requirement, however, seems to be especially important. Consequently, if you obtain a patent in country A, how then can you obtain a patent in country B – the invention is no longer novel, unpublished, noncommercialized?

This first dilemna of global patent protection was addressed through a treaty known as the Paris Convention (PC), over 100 years ago, which gives an inventor a one-year grace period to file a patent application in a second country that has ratified the PC after filing a first patent application in a PC member country. Additionally, under the PC, the second country will grant to the inventor a “priority filing date” the same as the first country filing date, so long as it was no more than one year prior. That’s a good thing, because you want protection from the earliest date possible.

Other relevant treaties have been signed over the years, including the European Patent Convention, etc., but as scomargo mentioned, the most important patent treaty in many years has been the Patent Cooperation Treaty (PCT), which has been signed by over 100 nations. Under the PCT, one can file an International Patent Application (IPA), which effectively buys time in which to proceed with a program of national or regional patent applications, it simplifies matters and reduces costs if one is seriously intent on seeking global protection. BUT, there still is no such thing as in international patent. The IPA allows one to conduct an international search for patentability of ones invention and gives added time to consider strategy before incurring the greatest costs, but one still must file applications for patents from each of the individual countries.

Consequently, before deciding to seek protection in various foreign countries, the inventor should consider how expensive will it be to seek such protection, how strong are the patent rights in such countries, how hard would it be to detect infringement in each of those countries and to enforce ones rights there, and how big is the market for the invention?

A US patent will not provide any protection to an invention in Taiwan or any other country. Separate protection must be obtained in each country. Moreover, because Taiwan is not part of the major international community, it is not a signatory to most of the major international IP treaties and conventions including the PC and the PCT. However, since Taiwan joined the WTO it amended its Patent Law so that one who files a patent application in Taiwan can get a priority filing date up to one year prior based on a patent application filed in another WTO member nation.

As for your other question, I recommend you google some of the following search terms in various combinations:

patent global (or international) protection introduction (or basics)

Or, if you want to buy a really basic book on the subject, maybe you might like the “Nutshell” book on the subject. This series of books are well-known in lawschool for providing a very basic general introduction to a wide variety of subjects: … ce&s=books

Yeah, what he said. :slight_smile:

You are definitely much more thorough than I am, MT, and much kinder to strangers, I might add. :notworthy:

[quote=“scomargo”]Yeah, what he said. :slight_smile:

You are definitely much more thorough than I am, MT, and much kinder to strangers, I might add. :notworthy:[/quote]

Yeah, but you apparently take your job more seriously, while I’m goofing off on forumosa.

Mother Theresa and Scomargo,

Thanks to both of you for your help. Yes, MT, you are very kind to strangers.

I will do some more reading!