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