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 more recently, the introduction of the Unitary Patent allows most European Union states to be covered with a single patent

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:

• South America
  • eg. Argentina, Bolivia, Guyana, Paraguay, Suriname, Venezuela.
• Central Africa/Middle East
  • eg. DRC, South Sudan, Ethiopia, South Sudan, Eritrea, Somalia, Yemen.
• Central Asia
  • eg. Pakistan, Afghanistan, Nepal, Bhutan, Bangladesh, Myanmar, Taiwan.

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:

• delayed filing and translation costs for individual countries, which are deferred until 30 months from the priority (or filing) date – the additional time can be helpful to determine which commercial markets are most important, which often will not be known immediately after an invention is conceived;
• centralised search and examination, which can lead to easier grant in some jurisdictions; and
• reduced duplication of work in relation to certain administrative matters, such as assignments.

However, there are some drawbacks to using the PCT, including:

• relatively high filing fees for a PCT application;
• the fact that entering the national phases incurs similar costs to filing a national patent application, so the overall cost is higher than for direct national filings;
• the process delays the grant of patents; and
• some countries are not available via the PCT, such as Taiwan and Argentina.

What are regional patents?

Some countries have entered into agreements that see them use a centralised patent process. These include:

• EPO – European Patent Organisation, and includes some non-European countries
• ARIPO – the African Regional Intellectual Property Organization
• OAPI – African Intellectual Property Organization
• Eurasian – a collection of ex-Soviet states
• PCT – see previous section

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. Specifically, the patent application is examined centrally by a patent office. Once allowed, the patent application will grant as a unitary patent that covers all the member states. Generally, this unitary patent is enforceable across all member states in one court action: however, should a revocation action be successful, the patent will be revoked for all member states too.
• The second type sees a centralised search and examination process, but the grant process results in separate patents in some or all member states. Namely, upon grant, the patent application will divide into a bundle of national patents, one of each country selected by the patentee. Generally, each national patent has to be enforced separately and revocation actions have to be made individually against each national patent.

EPO patents
The European Patent Office (EPO) has elements of both systems. The EPO provides a centralised service that examines and grants patents. However, upon grant, a European patent must be “validated” for the patent to have any effect. This requires a local agent to be appointed and sometimes for translations to be filed. Hence, further fees are incurred in each country chosen for validation. Furthermore, subsequent renewal fees are paid annually in each validated country, so the total cost scales with the number of countries chosen. However, not all validated patents have to renewed – some countries can be dropped while others are maintained to reduce costs.

Each validated patent is a patent in its own right. As such, it can be assigned and enforced in each country individually and any revocation action in one country will not affect the other validated patents (or, at least, not directly).

Historically, we validated the patent individually in each country you chose, for example in the UK, Germany and France.  In this sense, the EPO acts like the second type of regional patent discussed above. However, we now have a further option to validate a Unitary Patent that covers most, but not all, member states of the European Union (see section below). States not signed up to the Unitary Patent may still be validated nationally in addition to obtaining the Unitary Patent. 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).

The EPO has different categories of member states. The largest group comprise the designated states, all of which may be covered with a single designation fee when filing a European patent application (or within six months of publication). The member states are (as of January 2025):

Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Türkiye and the United Kingdom

There are also “extension” and “validation” states, not all of which are in Europe. A European patent may be extended to these states once granted. Individual fees are required for each extension of validation state when filing a European patent application (or within six months of publication). The validation and extension states are (as of January 2025):

Bosnia and Herzegovina, Morocco, Republic of Moldova, Tunisia, Cambodia and Georgia

In addition, the Lao People’s Democratic Republic and Costa Rica have signed agreements to become validation states, although the agreements have yet to come into force.

European Unitary Patents
The European unitary patent is a single, unitary patent right which covers multiple, but not all, European Union (EU) countries. A Unitary Patent is obtainable from a patent granted by the EPO by filing a request for unitary effect within one month of grant of the patent. The decision is usually taken as part of the usual post-grant validation process when all countries to be covered are considered. Any EU country can participate in the Unitary Patent regime and, so far, all EU countries except Spain and Croatia have joined. The 18 EU countries to have joined so far are:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden.

Non-EU countries like the UK and Switzerland cannot be covered with a Unitary Patent.

As a unitary right, a Unitary Patent is enforced centrally (via the Unitary Patent Court). The Unitary Patent must remain as a single right. This means a successful revocation action sees the patent revoked for all countries. It also means that the unitary patent can only be assigned or renewed as a whole and so a patentee cannot assign the patent for only some countries, nor can they stop paying renewal fees in respect of specific EU countries if the patent turns out to be less valuable in those jurisdictions. In terms of cost, the single renewal fee paid annually for a Unitary Patent is roughly equivalent to the combined cost of the individual renewal fees required in the four most popular participating EU countries.

These issues should be considered when deciding in which countries to validate a patent granted by the EPO. This is because there is no obligation to take a Unitary Patent as the patent may be validated individually in individual countries instead.