Worldwide Patent & Design Protection
Where do I start?
Worldwide Patent Protection
For the option to seek patent protection in several countries around the world, the best route is likely to be:
- an International patent application under the Patent Corporation Treaty. Most but not all countries are members of the PCT. To see a list of member countries click here. Importantly, both a US utility patent, Chinese regular patent or utility patent (but not both) and a European patent can be obtained via an International patent application. For a quick file guide, click here.
- If protection is required in a very limited number of countries or a PCTon-member country, the alternative route may be a separate national patent application filed directly before the national office of each country of interest (see national routes).
If you are unsure at this stage whether worldwide protection is required, an international patent application may still be the best route to:
- lock in right to file worldwide for 30 months
- delay costs by up to 30 months (see What is an International patent application)
- help with negotiating venture capital, investment. licensing etc.
Worldwide Design Protection
Your designs can be protected in different countries by applying in each country and/or via international design systems:
- For Europe, design protection can also be obtained across the EU by applying for a European Community Design (see European Community Design). Note that the UK is not covered by a European Community Design.
- An International Design Filing System is also available for seeking design protection in many countries/regions around the world via a Hague International Design Application. The system, known as the Hague System / Agreement now covers the US, China and the EU. Please contact us at firstname.lastname@example.org for further details and help with you design filings worldwide.
What is an International Patent Application?
A single international patent application filed under the Patent Corporation Treaty (PCT) does not allow you to obtain an international patent (there is no such thing) but it will allow you to lock in the right to apply for protection for your invention across the world. Over 140 member countries are members. For a list of PCT member states, click here. Importantly, both a US patent and a European patent can be obtained via an international patent application.
The Patent Corporation Treaty is an international agreement administered by the World Intellectual Property Organisation (WIPO) and covers most but not all countries of the world. It preserves the right, in most member states, for 30 months from the filing or priority date of the application to convert the application into a national patent application in each PCT member state/region (including US and Europe).
The very expensive step of filing national applications in many different countries/regions can therefore be delayed by up-to 30 months by filing of an international patent application.
Anyone who is a national or resident of US, Europe or another member country/region of the PCT may file an international patent application. It may generally be filed with the receiving office of the country/region of which the Applicant is a national or resident , or optionally at the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. US national or residents file international applications via the USPTO. UK nationals or residents file international applications via UKIPO or EPO.
International Patent Application Procedure
There are two distinct phases:
- international phase
- national/regional phase
International phase procedure
In the International phase, the PCT application takes the place of the many separate national patent applications (including US and European patent applications) which would otherwise have to be filed in countries throughout the world.
The following is an outline of the procedure:
Chapter I Phase
- PCT application filed
- International Search Report (ISR) including documents which may be relevant to novelty and inventive step of invention
- Written Opinion issued by International Search Authority (ISA)
- Amended claims optionally filed in response to ISR
- Informal comments optionally filed in response to Written Opinion
- Publication of application after 18 months of filing or priority date – can enable provisional protection in some countries
- Optional Demand filed within 22 months of filing or priority date
- International Preliminary Report on Patentability issues (IPRP) – gives provisional non-binding opinion on patentability to help assess chances of success in obtaining patents worldwide
Optional Chapter II Phase (Only if Applicant decides to file a Demand)
- Examination is conducted in conjunction with Applicant
- Useful for trying to provide more positive Written Opinion
- Can help centralize prosecution before patent offices in national phase, particularly European Patent Office
- Amendments/arguments usually filed with Demand
- Examiner re-considers application documents and issues International Preliminary Report on Patentability (IPRP)
National/regional phase procedure
The National/Regional Phase is a period following the international phase, in which the PCT application is brought before each national office in each country/region where patent protection is sought. This entering into the national /regional phases, requires fulfilling filing requirements of the patent office of each particular country/region in which you wish to seek protection. This can involve retaining foreign attorneys/agents, paying fees, preparing and filing translations and formal documents etc. I can enter and prosecute the application in US and Europe myself.
Deadlines for entering the national/regional phase vary but generally are 30 or 31 months from priority.
Each of the resulting applications must then be prosecuted before the respective patent offices in order to obtain patent protection in each particular country/region. To this end, countries/regions such as USA and EPO can perform additional searches of relevant documents before examining the application.
Whilst the EPO generally follows the opinion of the International Preliminary Report on Patenability (IPRP) obtained in the international phase, this may not be the case for other countries including USA.
Advantages of International Patent Applications
- Delay Costs and Allows You to Reflect
- Builds Confidence
- Preliminary Patentability Evaluation
- Streamline Worldwide prosecution
Delay Costs and Allows You to Reflect
You can delay by up to 30 months the very expensive step of applying for protection in each country and reflect on desirability of seeking protection in each country.
Some venture capitalist and investors like to see that an international patent application has been filed on your invention rather than just a domestic patent application. It shows other businesses that you are serious about patent protection worldwide.
You can evaluate with some probability the chances of your invention being patented without having to file a separate application in each country. An international search report and written opinion and, where applicable, international examination report, serve as a non-binding provisional opinion on patentabilty.
Streamlined Worldwide Prosecution
You have the option to amend the application to improve chances of invention being patented in countries/regions of interest.
Patent or Design protection can alternatively be obtained in a particular country/region by filing a regular national application before the national patent office. Click here for USA. Click here for Europe including UK.
I have experience working with established associates and patent systems around the world. Most of these associates I am familiar with and I have met in person.
For a free consultation, click here.