A DOZEN OR MORE ADVANTAGES OF FILING A PATENT APPLICATION IN THE UNITED STATES FIRST

--by John Moetteli, U.S, Patent Attorney © 1999-2006

Especially for IT and Computer Software, here are some reasons to consider filing from patent application in the US first.

1. The United States represents the largest domestic market for a broad range of products and services. Therefore, protection in the U.S. alone is often enough to enable a reasonable return in the form of royalties or to penetrate a market.
2. The sheer size of the US market means that it is likely that, on a per capita basis, a United States Patent will be the least expensive to obtain.
3. 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 States, 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. Here is what a US Patent Examiner has to say about translated applications (PDF excerpt from US Patent Office Official Action).
4. Provisional patent applications are permitted, thus permitting a claim of priority without reduction of the term of the patent (the term of the US patent begins on the filing of the subsequent regular US application) and the preservation of your patent rights at minimal cost (the lack of formal requirements means that the application can be prepared for less money than a regular US application-an important advantage for start-ups who are strapped for cash).
5. If necessary, a US provisional patent application can be filed in any language, allowing the applicant up to a year's time to prepare a translation (a translation of the application won't be necessary until the provisional application is claimed as a priority filing in a subsequent regular US patent application).
6. An early US filing date means that your application won’t be rejected by the patent office under §102(e) of the US Patent Law, when another party’s US patent application has published during the prosecution of your patent, even their non-US priority filing date is earlier than your US filing date. Conversely, if your priority filing is a US filing, then the publication of your application creates §102(e) prior art against competitors.
7. 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).
8. Provisional patent applications are permitted, thus permitting a the filing of an inexpensive application to which priority can be claimed without reduction of the term of the patent.
9. Where the invention has already been publicly disclosed, the United States is among the very few countries in which you have a one year grace period in which to file (Canada is the other country in which a grace period provided).
10. Because the United States is a first to invent country, you can file a patent application having a claim which is essentially identical with that in a competitor's application, after the date that the competitor files his application, and, provided that you can prove you were the first to invent, you can recover the rights to the patent from the competitor (this applies to countries, such as Switzerland, that are members of the World Trade Organization).
11. Provided you do not file any foreign applications and request non-publication at filing, your U.S. application is kept secret and never published by the U.S. patent office, until it is granted and you pay the issue fee. Therefore, you do not have to relinquish trade secret protection until you are convinced that the patent protection obtained will protect you more effectively than merely keeping the technology secret.
12. The U.S. patent office is service oriented. Applicants are treated like customers. Telephonic and personal interviews with Examiners are possible. Appeals are possible. Therefore, it is more likely that patent protection of some sort will be obtained.
13. Patent pending status can be maintained indefinitely (subject to the payment of fees), thus providing a deterrent effect against competition, particularly where large investments in tooling would be required of competitors/potential infringers.
14. Filing requirements and requirements for a detailed disclosure are more stringent in the U.S. than in other countries. Therefore, if you plan to file internationally, it is best to prepare the patent application to the filing requirements of the most demanding country, i.e., the US. Once you have prepared the application in U.S. form, then it is a simple matter to file in the U.S. and in most other countries.
15. Unity of invention requirements are less stringent than in Europe, enabling the possibility of one U.S. patent covering two or more inventions than would be defined under the European standard of unity.
16. Extraterritorial Effects: A significant advantage of filing in the U.S. first, is, 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. These effects are addressed in detail in the "Extraterritorial Effects of U.S. Patents" section of the article on Business Methods (click on the hypertext to go to the article).
17. Peace of Mind: Local practitioners sometimes suggest that filing a PCT application without paying the filing fee is as good as filing a provisional US patent application, insofar as making a Paris Convention claim of priority is concerned. This practice is questionable. Although by doing this, you can meet the minimum requirements of the Paris Convention for a priority document, this may have little to do with whether or not you will fully obtain the cooperation of the receiving office, should you need it, to confirm the filing date, or to provide a special service in the event of the need to urgently file. The practice of filing such applications and intentionally not paying the filing fee, using this convention to obtain a priority date only, is considered “morally questionable” and thus unanimously frowned upon among those we’ve questioned at WIPO. This means that, at least to be an ethical perspective, there is an obligation to file and pay the appropriate fees. It is therefore better practice to file the first application in a manner that meets the minimum filing requirements for the country in which you file.. The US provisional filing provides such a mechanism.
18. A filing date of yesterday is possible, through taking advantage of the significant time difference between Europe and Hawaii for example.

Despite the obvious advantages of filing in the United States first, some countries do not permit their residents or citizens to file in foreign countries first. Switzerland does not have such a requirement. France, however, does. So too does Italy. Further, when publication is imminent, and the inventor speaks French and not English, preparing an application in French and filing in the most convenient location to obtain a filing date may mean that filing first in the United States may not be the best choice (although, as already mentioned, filing in a foreign langauge is possible). Please feel free to contact us via e-mail (moetteli@patentinfo.net) so that we can discuss whether filing in the U.S. first is an option for you. Even if it is not, we are capable of preparing patent applications which meet the stringent requirements of the US Patent Office. So if you think that you'll file in the U.S. at a later date, it is wise to prepare the first application to meet these most stringent requirements. This will better insure validity of the patent in the U.S.

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