Page 6 - Minnesota Vol 8 No 3

Z. PETER SAWICKI AND JAMES L. YOUNG | Intellectual Property
Stopped at the Border: Patent Rights
The topic of national borders is and always has been a hot- button issue. Re ect on what you know about the border con icts around Israel, between Ireland (in the EU) and Northern Ireland (part of the United Kingdom, soon not to be in the EU), the DMZ between North Korea and South Korea and, of course, the U.S. southern border. Border integrity and related “nationalism” concerns are not going away anytime soon.
Patent protection is available world- wide but is jurisdictional in nature, and the form and scope of protection varies from country to country. For that reason, borders matter in patent law.
For a U.S. company, the typical pro- cess for obtaining international pat- ent protection involves rst ling a U.S. patent application. ere are then three options for obtaining protection outside the U.S. based upon that U.S. patent application: (1) ling direct in other countries, if the country of in- terest has a patent o ce; (2) ling an application in the European Patent O ce (EPO) which can be brought into force in most European coun- tries; or (3) ling an application under the Patent Cooperation Treaty (PCT) which by itself does not convey any
Patent protection is available worldwide but is jurisdictional in nature, and the form and scope of protection varies from country to country.
For that reason, borders matter in patent law.”
rights, but reserves the patent appli- cant’s rights to later le corresponding applications in designated countries. 152 countries are members of the PCT (out of the 195 countries in our
world today).
DIRECT FILING
An application can be led in other countries if that country is equipped to examine patent applications. Most countries have such o ces and will examine patent applications. Some countries are more attentive to detail than others and some countries tend to rely on patentability determina- tions that are made by other countries with more experienced patent o ces.
EUROPEAN PATENT OFFICE APPLICATION
e European Patent O ce is a sin- gle body which examines applications for most European countries. is Of- ce is an alternative for a patent appli- cant even if a desired country has its own patent o ce. With the European Patent O ce, the applicant can have its patent application examined once and, if allowed, can bring the subse- quent patent into force in designated European countries. Generally, ling an EPO application is cost e ective if protection is desired in three or more of the 38-member countries of the EPO.
Once an EPO patent application has been allowed, the applicant is then required to obtain translations (German and French are mandatory) in order to bring the patent into force. Each country also requires that grant fees be paid in order to bring the pat- ent into force in that country.
Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clear- ance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and ef- fective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either [email protected] or [email protected].
Z. PETER SAWICKI
JAMES L. YOUNG
ATTORNEY AT LAW MAGAZINE · MINNESOTA· VOL. 8 NO. 3 6