Once you have filed a UK patent application, you then have a 12
month period in which to decide whether to file corresponding
patent applications in other countries and, if so, which countries
you wish to cover.
In most countries, an invention must have ‘absolute
novelty’ at its filing date in order to be valid so any
non-confidential disclosures, including your own, anywhere in the
world prior to filing can invalidate the patent. However, most
countries are part of an international convention which, in effect,
enables you to back date a foreign application to your initial UK
filing date if the foreign application is filed within 12 months of
your UK filing date. This is a very important deadline (which
cannot be extended) so you need to start thinking about the
countries you want to cover in good time before this and to ensure
there is time to get the applications on file before this
deadline.
Selecting Countries for Patent Protection
It should be remembered that patents provide a ‘negative
right’, i.e. they enable you to prevent others from doing
certain things in relation to the invention, e.g. manufacturing,
importing, exporting or using the invention in the relevant
country. So you need to decide where such rights would be useful to
support your business strategy.
Filing in all possible countries would be extremely costly, so
you need to consider how to optimise your geographical protection
within the budget available. It may be possible to achieve a broad
geographical effect by filing in just a small number of key
countries. You might, for example, only need to file patent
applications to the extent necessary to keep the competition from
competing effectively with you.
In many cases, a good starting point is to look for protection
in your main markets (or prospective markets), i.e. where you
expect the majority of your revenue to be generated, and/or
countries in which your main competitors are based or where they
have manufacturing facilities. If you are considering licensing the
patent rights, you might also look at the main markets for
licensees and where your licensees (or potential licensees) are
located.
Having prepared a ‘wish list’ of countries, you can then
seek an estimate from your patent attorney for the filing costs in
those countries and advice on the most cost-effective way of
covering them using the various international procedures available
(see below).
You may also want to consider the scope of protection you hope
to achieve from the patent and whether it relates to core
technology or just an improvement. If you have any search results,
e.g. from the UKIPO search on your UK patent application, these can
be very helpful in deciding whether foreign applications are likely
to be worth pursuing.
You can then make a commercial decision as to where patent
protection should be sought, based on the cost, the likely strength
of the patent case, the expected value of the business to be
protected and the location of the competition.
For many businesses, the top priority is to seek protection in
Europe, the USA and possibly in Japan. In some cases the BRIC
countries (Brazil, Russia, India and China) may be next on the list
but every case is different so you need to plan your coverage
carefully in line with your business model and business
strategy.
Obtaining Protection Directly in Relevant Countries
At the end of the priority year, you can file applications
directly in each country of interest and these applications will,
as mentioned, claim priority from your original UK filing date
(although any new material you add at this stage may only have
priority from the date it is filed).
Unless you only wish to file in only two or three countries,
such direct filing is rarely used as it also tends to be the most
expensive option (although it can provide the quickest route to
granted patents in many countries).
PCT and EPC
There are two major international agreements that unify, to some
extent, the procedure for applying for patents in a range of
countries. The Patent Cooperation Treaty (PCT) unifies the initial
application procedure and covers most countries in the world.
The European Patent Convention (EPC) is independent of the EU
and unifies the application, examination and grant procedure for
most European countries. In both systems a single application is
filed claiming priority from your original UK application. Filing a
PCT application enables you to defer the decision as to which
countries you wish to cover until 30 months after your original UK
priority date (or 31 months in some countries such as Europe). It
also defers the bulk of the national costs (including translations)
to that stage. The PCT system is thus widely used as it provides
more time for the commercial situation to develop so you are in a
better position to decide which countries you wish to seek
protection. It also defers the costs associated with national
filings for an additional 18 months.
During the international stage of a PCT application it undergoes
an initial search and examination procedure (for UK applicants this
is usually carried out by the EPO on behalf of the PCT) and the
results of this are sent to the national patent offices of the
countries covered. After you enter the ‘national phase’ of
the PCT procedure at the 30 month stage, the national offices will
carry out their own searches and/or examination under their
national procedures. The result of the international search and
examination may assist them with this (although they are not bound
by these).
A European patent application can be filed at the 12 month stage
(claiming priority from your UK application) or it may be included
within a PCT application (so deferred to the 31 month stage). A
European application can designate all countries within the EPC and
the decision (and, where applicable, the translation costs) as to
which countries you wish to cover can be deferred until after the
patent has been granted. The application may then become a bundle
of national patents in those countries in which you choose to
‘validate’ the European patent. Alternatively, the patent
may be validated as a unitary patent (and in some instances a
unitary patent and national validation in states that are not part
of the unitary patent system may be desired). For more information
on the unitary patent please see here. This means that the national costs, in
particular for translations, are deferred, for several years after
entering the European system and not incurred until you know the
patent has been granted and the level of protection it
provides.
The European Patent Office will carry out an examination of the
application but if the application was filed via the PCT system,
this is a continuation of the examination carried out in the
International stage of the PCT application (and often by the same
examiner).
Key Decision Points
- Filing a UK patent application before any non-confidential
disclosure of the invention to third parties - Within 12 months of the UK filing date, decide whether to incur
the costs of foreign applications, e.g. by filing a PCT application
to keep your options open in a wide range of countries. - Within 30 months of your UK filing date, decide which of the
countries covered by the PCT application you wish to pursue
further - When a European patent has been granted, decide in which
European countries you wish to validate
J A Kemp LLP acts for clients in the USA, Europe and
globally, advising on UK and European patent practice and
representing them before the European Patent Office, UKIPO and
Unified Patent Court. We have in-depth expertise in a wide range of
technologies, including
Biotech and Life Sciences,
Pharmaceuticals,
Software and IT,
Chemistry,
Electronics and Engineering and many others. See our
website to find out more.
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.
