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U.S. advantage should not be underestimated

VI. The U.S. advantage, particular in the Software field, should not be underestimated:

With respect to patent strategy, attorneys best advise their clients by suggesting that they start their patent filing in the jurisdiction of the most commercial importance to them. For local companies, that may mean advising the client to file a patent application locally. For globally-minded clients, this usually means that they should be advised to file in the United States first. After all, the United States remains the dominant force in international commerce and if a client is forced (because of budget constraints for example) to choose one single national patent to have in their portfolio, most clients choose a U.S. patent. In addition, the United States has a developed patent system which reduces the risks of unknown factors coming into play. There are other reasons that clients should be advised to consider filing their patent application in the United States first. Here are some of them:

1. 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 protection.

2. 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.

3. Provisional patent applications are permitted, thus permitting a claim of priority without reduction of the term of the patent (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).

4. If necessary, a U.S. 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 U.S. patent application).

5. An early U.S. filing date means that a 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.

6. 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).

7. 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.

8. Because the United States is a first-to-invent country, one can 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 application, and, provided that the client can prove he was the first to invent, he can 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).

9. 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.

10. 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.

11. Filing requirements and requirements for a detailed disclosure are more stringent in the U.S. than in other countries. Therefore, if the client plans to file internationally, it is best to prepare the patent application to meet the disclosure requirements of the most demanding country, i.e., the U.S.43 Once the client has prepared the application in U.S. form, then it is a simple matter to file in the U.S. and in most other countries.

12. 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.

13. 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.

14. 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.

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