An inventor may wish to obtain patent protection to protect his invention. In a global economy, protection in more than one country may be necessary. We consider the routes available when seeking patent protection.
What Is A Patent?
Patents provide protection for inventions, and enable the patentee to prevent third parties making, using or selling the invention. Most articles which function in a new way, most machines, methods, processes, compounds and compositions are patentable. The invention has to be new and unobvious at the date of application for the patent.
Patents are not granted in respect of the shapes or patterns of articles or their visual appearance. Visual appearances may be protected by design registration. Furthermore, patents are not granted in respect of trade names, marks, or logos, which may be protected by trade mark registration.
Protecting An Invention In More Than One Country
Under various international agreements, a first patent application in a Convention country automatically provides a right to claim priority in most other countries in the world. This means that foreign applications in respect of the invention can effectively have the same date as the initial local application provided that those foreign applications are filed within twelve months of the date on which the first local application was filed.
Choice Of Route
There are three main routes by which patent protection can be obtained overseas but not all three routes are available in each country. The routes are
1. an individual national application in any country required,
2. a regional application, such as a European application, for the relevant countries, and
3. an International (PCT) application under the Patent Cooperation Treaty.
National Patent Application
An individual national patent application can be filed at the local Patent Office of each country in which a patent is required. Each Patent Office then conducts its own processing of the application and, if successful, a national patent is granted. The filing costs vary considerably from country to country, and will be significant if a translation of the specification into another language is required. The cost of prosecuting the application to grant of a patent, and the length of time of prosecution, vary enormously from country to country and from application to application. In countries such as France and South Africa there are virtually no prosecution costs, whereas in the more expensive countries, for example Japan or USA, prosecution costs can be significant. In many countries there are additional fees upon grant.
Advantages
Use of the national route has the advantage that the specification can be tailored to the laws of each country. This enables strong protection in each chosen country to be obtained. The national route is also advantageous where the country concerned does not examine, or examines to a lower standard, than is available by regional choices. In some countries a utility model rather than a patent can also be obtained.
Disadvantages
The cost of using national filings can be significant if the specification has to be translated into a number of languages. It is also disadvantageous that the translation costs occur at the outset of the filing process.
Recommendations
Reserve national filings for those cases where:
- particularly strong, tailored protection is required in a particular country, or
- the chance of obtaining patent protection is substantially higher than by other routes, or
- national processing will give faster protection than by other routes.
European Patent Application
A single patent application covering 34 countries, including all of the member states of the EU, can be filed at the European Patent Office. The European patent application is prosecuted before the European Patent Office and, if successful, results in the grant of a European patent which is subsequently registered in some or all of the originally designated countries. The registration is a mere formality and there is no further examination by the national Patent Offices.
A European application which claims priority from a first filing will include the search fee. A search report is issued and then published, and six months after that examination and designation fees must be paid. Maintenance fees must be paid during the pendency of the application. Clearly there will be prosecution costs for dealing with the examiner's objections. There are costs involved in the actual grant and also in subsequently registering the patent in chosen countries. The applicant is not required to register in all those countries initially designated; a selection can be made at the end of the prosecution. National renewal fees will be payable in each country selected in order to maintain the national patent in force.
There is likely to be a cost saving in following the European route rather than the national route if protection is required in three or more countries of the European Patent Convention.
Advantages
The translation costs and the registration costs in the national Patent Offices do not have to be incurred until after the applicant has succeeded in obtaining grant of the European patent application. There are also significant cost savings during prosecution in that only a single application in a single language has to be prosecuted at the European Patent Office.
Disadvantages
There is post grant opposition at the European Patent Office. In addition, the European Patent Office can be particularly slow in dealing with the prosecution of the application. In addition, the European Patent Office have recently suggested that they will raise the test for obviousness such that it may be more difficult in the future to obtain grant of a patent.
Recommendations
The European patent system is a great success, but its disadvantages are significant. If speedy grant is required, or there is a real prospect that third parties will wish to oppose a European patent as granted, thought should be given to avoiding the European route.
International (PCT) Patent Application
The PCT system can be used in conjunction with either national patent applications or a European or other regional patent application. A single international application under the PCT designates as many countries and regional systems are required. Traditionally, all countries are included such that the PCT application as filed covers 139 countries and 4 regional systems. The PCT application continues through search and examination. It is then necessary to file a national or regional application at each national or regional Patent Office where protection is required. The continuing national or regional applications have the same priority date and filing dates as the PCT application and the specification and drawings filed with the PCT application become the specification and drawings for the ongoing national and regional applications.
The PCT application is provided with a search report, and an opinion on patentability, during the international phase. This aids in the decision as to whether to continue with the application by taking action at the chosen national or regional Patent Offices. Such action normally has to be taken within thirty months from the priority date.
Advantages
There are two major advantages of the PCT. First, the result of the search and the written opinion are available before a decision has to be made to continue with the application in national or regional Patent Offices. If an unfavourable search report is received then the cost of the national filings can be avoided.
The second advantage is that there is a delay of eighteen months in incurring the costs involved in making national or regional filings. This means that it is relatively inexpensive to keep open the option of filing the application in countries for which no final decision has yet been made as to whether to seek patent protection.
Disadvantages
The PCT adds a level of cost to the patenting process which would not be incurred if applications are filed directly by the national or regional routes.
Recommendations
Whilst a foreign filing programme using the PCT will be slightly more expensive overall than the same programme carried out by filing directly individual national and regional applications, there is advantage to having the international search results before final decisions have to be made.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
