Foreign Patents: Opportunities and Dangers for the General Practitioner

Abstract

N THE current age of increasing legal specialization, a paper on patenting abroad aimed at the ordinary practitioner of law may seem to be at least a mild form of heresy. Most American lawyers have a time-tested method of dealing with clients who wish to consult on patent problems: Please see a patent attorney. The worth of that advice will not be disputed here; quite the contrary. What this paper does suggest, however, is that the lawyer who wants to serve his clients well must develop and retain a breadth of understanding of his clients' affairs. Particularly if he represents clients interested in any type of manufacture, then such a broad understanding necessarily includes at least a basic knowledge of both the dangers and the opportunities which lurk in the relation between domestic and foreign patents. Two examples will clarify this thesis. First, suppose that A, a manufacturer, conceives and develops an invention in his small factory. A consults his attorney, L, who refers him to a patent lawyer, P. A assures P that all of his products are marketed domestically, that he does not have the capital to expand into broader fields, and that he has no interest in foreign patenting. P proceeds to file for a United States patent. Suppose, however, that L is alert and informed. He knows that A's chief competitor is a large concern, B, which does both a domestic and foreign business. L recognizes at once that one of the principal economic values of the invention may consist in a license of the patent to B, and that the value of such a license to B may depend, to a large extent, on protection under foreign as well as under domestic patents. But unless A acts swiftly, the issue of a foreign patent may be barred by time limitations, and a substantial portion of the market value of the license may thereby be lost. As a second example, suppose that an American firm has developed