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Obtaining patents in multiple countries
Which countries does my patent cover?
Most patents provide patent protection in only a single country. There are some exceptions where legal frameworks allow for a single patent to cover multiple countries. For example, Switzerland and Liechtenstein have shared a common patent process for quite some time now, and we have recently seen the introduction of the Unitary Patent that covers most European Union member states.
The link between patent protection and territories should also be borne in mind. Patents give us the right to take action against infringers performing certain acts with respect to your patent. A claim to an article, such as a product or manufacturing apparatus, can be infringed by acts like making, importing, keeping, disposing of or using the article. A claim to a method, such as a method of manufacture or a method of operation, can be infringed by using the process or disposing of, importing or using any product obtained directly by means of the method. So, what we mean by the territorial coverage of a patent is the country in which we can stop those infringing acts, for example the making of articles that country or the importing of articles into that country.
Choosing an appropriate set of countries in which to seek patent protection is not straightforward, and it is something for which we regularly provide advice. Often, a complete set of countries cannot be determined when we first file a patent application which is often before the product is put on the market or the method is put into use. Also, costs inevitably scale with the number of patent applications filed, so filing many patent applications before an invention starts generating income can be prohibitively expensive. Fortunately there are ways we can help our clients by deferring the decision-making process along with the costs of filing many patent applications.
What is a priority year?
Fortunately, we need decide only one country in which to file your first patent application. We then usually wait a year before filing corresponding patent applications in other countries.
Ordinarily, we would warn against any delay in filing a patent application because the novelty of the claims is judged with respect to the filing date of the application (i.e. the claims are judged against the prior art which is everything known to the public before the filing date). However, we can wait up to a year because the vast majority of countries will treat any subsequent patent application as having been filed the same day as the first patent application was filed. This possibility is provided by the Paris Convention on intellectual property rights, to which only a few countries are not signatories (Taiwan being perhaps the most significant).
This mechanism is called claiming “priority”. A subsequently filed patent application will be given a filing date (the date it was actually filed) and a priority date (the date the earlier patent application was filed) if we file a claim for priority with the subsequent application. For a valid priority claim, the filing date cannot be more than a year after the priority date, hence we often talk of the priority year or convention year for filing further patent applications. Hence, this provides an additional year for you to decide in which other countries you wish to pursue patent protection.
In addition to claiming priority, there is another way of deferring the time by which you must decide where else to file patent applications, at least for many countries around the world. This is possible using a PCT patent application.
What is a PCT patent application?
PCT stands for Patent Cooperation Treaty, a treaty that allows us to file a single patent application that may designate any member country. However, a PCT patent application will not provide grant of a patent directly – the application eventually has to divided into separate patent applications that will be examined by national patent offices (or regional patent offices). In a sense, the PCT provides a simple way of deferring your decision on which countries to pursue for a further 18 months for a PCT patent application filed at the end of the priority year or 30 months if the PCT patent application was the first filing.
Country coverage
The coverage of a PCT application is extensive as over 170 countries are signed up to the treaty. However, the coverage is not complete. There are pockets of countries not signed up to the PCT:
There are many regions that are well covered, including Europe, North and Central America, and Australia and New Zealand.
Timeline of a PCT patent application
When we file a PCT patent application, it remains as a single entity during its “international phase”. Some central processing is performed during the international phase, including the issuance of a search report and opinion on patentability that is often influential on the subsequent examination by national patent offices. There is also an opportunity for us to file arguments and/or amendments in response to the opinion, which should place the application into a better position to grant quickly once filed with national patent offices. The results of the search report and opinion allows us to gauge the potential scope of patent protection, and hence provide guidance on how widely to continue with the application at the end of the international phase. Other central processing may be performed, for example to file details of inventorship and ownership, which should avoid the need to do this separately in each country once the PCT application is split into separate applications.
Eventually, the PCT patent application must be split into separate patent applications to cover your desired countries. The deadline for entering the “national phase” is around two and a half years after the priority date of the PCT patent application (usually 18 months after the application was filed, assuming it was filed at the end of a priority year). Countries set the national phase entry due date as either 30 or 31 months from the priority deadline. The application may be amended upon entry into the national phase, for example in response to objections raised in the search report and opinion.
Pros and cons of the PCT system
There are a number of benefits to using the PCT system, including:
However, there are some drawbacks to using the PCT, including:
What are regional patents?
Some countries have entered into agreements that see them use a centralised patent process. These include:
These collective patent systems generally fall into one of two types. The first type sees a unified grant process that leads to a single patent issuing that covers all member states. The second type sees a centralised search and examination process, but the grant process results in separate patents in some or all member states.
The European Patent Office is an interesting example that has elements of both systems. The European Patent Office grants a patent, but we must “validate” this patent for it to have any effect. Historically, we validated the patent individually in each country you chose, for example in the UK, Germany and France. Now, we can validate a unitary patent that covers most, but not all, member states of the European Union. States not signed up to the Unitary Patent may still be validated nationally in addition to obtaining the Unitary Patent. Also, there is no obligation to use a Unitary Patent as validations in Unitary Member states may be made nationally instead. So, to cover the UK, France and Germany, we would have the choice of either validating separately in each country or validating in the UK and as a unitary patent (that will cover France, Germany and most other EU states).
