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[JimIvey]

So, again whats the point of international patents if things are already protected in other countries?

Well, the point of all patents is to encourage people to publicize inventions that they'd otherwise keep secret with the following deal: if you can add something non-trivial to the whole of publicly available technical knowledge, we'll let you prevent others from exploiting your contribution for a limited period of time.

So, if you can't contribute to (give something beyond) the whole of publicly available technical knowledge, no patent for you.  Taking a patent published in one country and offering it to another country is not adding to the entirety of technical knowledge.

From what I understand you need file with WIPO, et al to get "international protection".

There is no such thing as an international patent, except for regional patents like in Europe.  The PCT really doesn't give you any protection beyond what you'd have filing in one country and using the Paris Convention to populate other countries with patent applications.  And, the only "protection" there is from future events jeopardizing your patent rights; you have no "protection" from competition in the marketplace until your patent(s) issue(s).

And, no, you don't need WIPO for protection in multiple jurisdictions.  It's just one way to do that -- presumably the most convenient.

Regards.

[Dazed-n-confused]

...if its already patented here in the US (only), then I cant re-patent it in Australia: understood.

So then, whats the purpose of getting a costly "international patent" - if any patent filed here in the US is "automatically" patented in other countries (in this case, Australia)?

Hi LesPaul.

Okay, to clarify because I can see we've gone off track a bit. 

It's not that it's automatically patented in the other countries.  What we mean is, if you already have a granted patent in the U.S., you've missed your chance and can not at this point attempt to patent it anywhere else.

That's the way the patent laws work.  To get a patent, the invention must be new - unknown to the world - at the time you file your application.  But if you've already got your U.S. patent granted, it is published, right?  So if you tried to file an application now in Australia, you can't say the invention is "unknown to the world" because it was published at least as of when your U.S. patent granted.


Now, let's move ahead to the future.  If you have another invention you want to patent in the U.S. and in Australia, you can do so, but you have to adhere to certain timelines.  The way the international agreements work, you are permitted to file your patent application in the US, and as long as you act within 1 year, you can file applications in most other countries.  An application filed another country will need to state a claim of "priority" back to the original U.S. application. 

Generally speaking, any time I only want to file in the U.S. and 1 other country, I will do it as described just above.  File US then instead of using the PCT, just file directly in the other country's patent office within the 1 year mark, telling that patent office that the application claims priority to my US filing.

[NJ Patent1]

LesPaul:  You asked what's the point of an international (PCT) patent application?  As has been pointed out, there is no such thing a an "international patent" per se (JimIvey did note so-called regional patents), so the term may be misleading to non-pratitioners.  One way I explain PCT applications to clients is that they are in the nature of option contracts.  You pay for the "option" to use the PCT application - and its priority date  - as a basis for obtaining, or at least trying to obtain, a national or regional patent in participating jurisdictions (most of the developed world).  If you don't "exercise" the option w/in prescribed time limits, it expires like any "option".  This is no small thing.  A priority date (aka effective filing date) is dispositive of many issues that arise in prosecuting a patent application.   

[lespaul]

Hi everyone, thanks so much for all your input and for not bashing me for my silly question. I wasnt aware that this is how the patent system worked.

So this brings up another issue then - I promise this is the last 

Say Im applying for a patent here in US and do a patent search via the USPTO website - I find that the patent here in the US has not been "invented" - how do I know it has been invented in somewhere else (ie. country)?

[Of course, my assumption is that the USPTO search is only on patents within the US, as searching every countries patent database in multiple languages, would seem impossible]

Again, my apologies for being so naive in this

The information everyone has volunteered has been a tremendous help so far!!

[Dazed-n-confused]

Say Im applying for a patent here in US and do a patent search via the USPTO website - I find that the patent here in the US has not been "invented" - how do I know it has been invented in somewhere else (ie. country)?

[Of course, my assumption is that the USPTO search is only on patents within the US, as searching every countries patent database in multiple languages, would seem impossible]

This is a good question and a frequent topic among patent geeks.  Some people advocate doing a fairly exhaustive search, such as searching US, EPO, Japan, China, Korea and PCT/WIPO, but that can consume a lot of time, energy, and money.  I also know people who (because they've been working in a given field for a long time) will make a judgment on personal knowledge and just a quick update on publications at the USPTO's patent and publications database.  There's also a bit of US-centric thinking there, that "most of the important inventions" will be filed in the US.

When I order searches from a search firm, I take a middle ground and have them just check US, EPO and PCT/WIPO.

But if I was writing a patent on one of my own inventions, out of my own pocket?  For myself, I'd only search the US data.

[JimIvey]

Say Im applying for a patent here in US and do a patent search via the USPTO website - I find that the patent here in the US has not been "invented" - how do I know it has been invented in somewhere else (ie. country)?

The short answer is that you don't.  As a practical matter, you just can't prove (or know) a negative. 

Consider this example:  prove to me that there's no buffalo-head nickel in your house or on your property.  You come to me and say you've looked everywhere.  I ask, did you pull up all the carpet?  Did you pull out all bathtubs in case a contractor dropped one underneath?  Did you check between the 2x4s in your walls?  Did you make sure a buffalo-head nickel wasn't dropped in the cement of your foundation?  I can go on and on.  Only complete destruction of your home and excavating your entire property will prove there's no buffalo-head nickel on your property.  Similarly, you can never be sure that a given invention hasn't been previously invented.

To go beyond DnC's point (which is a good one), ANY technical publications can show prior invention by another.  So, you'd have to search non-patent publications as well.  Depending on the invention, you might search academic papers, trade association publications, the web, etc.

Searching follows a curve of diminishing returns.  A little bit of searching reduces uncertainty substantially.  Each additional increment of searching reduces uncertainty by smaller and smaller amounts.  Eventually, the cost of additional searching does not reduce uncertainty enough to justify further searching.  That's when you stop.  If you're comfortable with the level of uncertainty at that point, file your application.  Otherwise, don't.

Regards.

[NJ Patent1]

LesPaul:  I tend to take Dazed's middle-of-road approach.  If you don't find a patent or published application that "anticipates" your claims (i.e sets-out all the elements of your calims arranged as you arrange them - destroying novelty), you still have to deal with possible "obviousness" (lack of inventive step in Eurospeak).  One has no idea of what art an Examiner will find and cobble together to make-out an obviousness rejection.  US Examiners are very "creative" in this regard.  Do check for "deal killers".  But the cost of a really exhaustive search can overwhelm the cost of filing an application.  A matter of $s and cents.