Pitfalls of Filing Non-English International Patent Applications

"When English is Best—Pitfalls of Filing Non-English International Patent Applications" by Gladys H. Monroy and Barry E. Bretschneider (June 2005) is a good resource for clients considering parent patent applications in foreign countries. One recommended strategy if a non-English application is being filed is to also file it as a provisional non-English application in the US, and later claim priority to it in an international PCT application. This can maintain the earliest possible 102(e) date. Here is the specific recommended strategy:

(1) On the same day that the foreign application is filed in the foreign patent office (January 1, 2001), file that foreign application in the foreign language as a provisional application in the USPTO under 35 USC 111(b).

(2) File an IA under the PCT in the English language in the foreign patent office within twelve months of the filing date of the provisional application claiming benefit of the provisional application (January 1, 2002). The IA must designate the United States, and be published in the English language by WIPO (under PCT Article 21(2)).

(3) File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier).

(4) File a U.S. national stage application under 35 USC 371 in the U.S. within thirty months of the filing date of the provisional application (July 1, 2003).