Can Other Files The same Patent In A Different Country

October 27, 2022

Let’s start the day with an interesting question to explore: Can other files a same patent in a different country? The straightforward answer to this is No.

Introduction

Patent rights are confined to the jurisdiction where it has been granted, but to check the patentability, its prior art is searched globally. In other words, if a patent is granted in the USA, then the patent owner can stop others from making, using, selling or advertising the patented product or process in the United States. But for issuing this patent, the patent Examiner does not confine the prior art search only to the USA, but also to foreign countries.
The prior art does, however, have a global blocking effect on pending patent applications. Therefore, a prior patent in one jurisdiction should constitute an impediment to any subsequent applications that are filed in all other countries.

However, the truth is more nuanced. It’s not always the case that what takes place in the real world of patents follows what ought to. There are a few conditions or scenarios where a patented product or process in one country can be overlooked by another country. A few are listed below:

Do we have utility patents?
How in-depth of an examination will the foreign patent examiners conduct?
Amending claims in later stages
Patent Submarine

Do you have utility patents?

An intellectual property right similar to a patent called a utility model is used to safeguard inventions. Despite being available in many nations, this kind of right is conspicuously absent from the United States, the United Kingdom, and Canada. Despite being comparable to a patent, a utility model is typically less expensive to obtain and maintain, has a shorter term, a quicker grant time, and less onerous patentability conditions.

Some foreign patent offices such as China, Taiwan, and Japan, give applicants the choice of a utility model, which grants patent rights automatically and without review. An applicant can get immediate patent rights using the utility model system without first conducting a prior art search. A substantive review would thereafter take place in the event that the utility model was subsequently challenged. This review might result in the utility model being canceled. You can think of a utility model as a temporary patent.

How in-depth of an examination will the foreign patent examiners conduct?

Sometimes, the patent examiner does not perform a global prior art search. For instance, US patent examiners frequently concentrate on US patents and patent publications. The English abstract of a foreign patent reference may occasionally be found by a US examiner. Due to the restrictions of the search tools that USPTO utilizes to search prior art, USPTO has tried a number of different approaches to address this problem, but they have been largely ineffective. The search tools do not have full access to non-patent literature and international references, which are crucial components of the prior art. Insufficiently thorough or lack of in-depth prior art searches by the examiners leads to potential prior art being overlooked, which ultimately leads to the grant of a patent for a subject matter that has already been issued in another nation.

Amending claims at later stages

Why do others seem to get away with patenting an identical invention in a different country if prior art knows no geographical boundaries? The claims of the latter patent application may have been altered, which is one reason that is conceivable. Later applicants may argue that their patent application does not cover the same invention as the prior art patent by modifying the claims.

For instance, you have a US patent on an invention but a foreign firm wants to patent it in their country. So, the foreign firm will apply for a patent with the same subject matter as you and when objected to later in the prosecution stage then amend the claims and the patent in the modified subject matter.

Patent Submarine

The term “submarine patent” refers to a patent whose issue and publication have been purposefully postponed by the applicant for a lengthy period, which may be several years or even a decade. This tactic needs a patent system in which, first, patent applications are not made public and, second, the grant date, not the priority or filing date, is used to determine the length of the patent. Prior to November 2000, patent applications submitted in the US were kept confidential until they were granted. Submarine patents, like a submarine, might remain “under water” for extended periods of time before they “surface,” startling the relevant market. It is common to refer to individuals or businesses using submarine patents as “patent pirates.”

There is a chance that you will be granted a patent if the invention’s subject matter matches an unpublished submarine patent. This is because the submarine patents’ subject matter cannot be compared with during the examination of your patent application because they have not yet been published. However, there is a drawback to this strategy: once the submarine patent surfaces, or is published, it will be considered as prior art with your invention and there is a likelihood that your claim would be rendered invalid.

Conclusion

The existence of prior arts restricts the approaches, even though there are circumstances under which the same patents can be filed in two different Countries with two different applicants. It is always advisable to conduct an extensive in-depth prior art search before filing a patent application, either on your own or outsourced to a professional firm.
Organizations can get highly accurate and reliable patentability searches from TT Consultants. By employing specially designed artificial intelligence interfaces to do patent searches, our highly qualified analysts can help firms save their costs by over 33%. With the help of any of the databases, paid and unpaid, as well as our own tool, Xlscout, we may conduct a patent search on your behalf. Organizations can get highly accurate and reliable patentability searches from TT Consultants.
By employing specially designed artificial intelligence interfaces to do patent searches, our highly qualified analysts can help firms save their costs by over 33%. With the help of any of the databases, paid and unpaid, as well as our own tool, Xlscout, we may conduct a patent search on your behalf.

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