What You Need to Know About Seeking Patent Protection Overseas
To fully leverage rights and enhance revenue, it's vital to expand patent protections when conducting international business: Here's how.
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There was a time when inventors did not have to worry about protecting intellectual property outside their country, largely because products were typically conceived, manufactured and purchased within a circumscribed territory. However, the rise of globalization has changed this. Now, a product produced in one corner of a globe can easily be sold and manufactured all over the world. This new economy presents challenges for patent applicants and/or inventors, one of them how to ensure that an invention is protected in countries that have easy access to your product or process. The solution lies in filing a patent application in any market-target countries — expanding your rights there and making it difficult for competitors to use your products or technology without due authorization.
Ways of obtaining overseas patent protection
It's is vital to know at the outset that currently, there's no method of obtaining a worldwide patent So, to acquire patents in multiple countries of interest, there are three available methods:
• Patent Cooperation Treaty (PCT) application: PCT is a World Intellectual Property Organization (WIPO)-administered international treaty — one that makes it possible to file a single international application to acquire patent protection in various countries (more than 150, in fact). However, it's not as simple as filing a single application and getting patent protection among them all. The process involves filing an application with WIPO first, followed by national applications in each of the target countries. This may still seem arduous, the PCT route comes with advantages that we will discuss later in this article.
• Paris Convention application: Signed in Paris in 1883, The Paris Convention remains a viable patent application structure, and can be used to file in multiple countries (within a maximum of 12 months of the filing date of the first application in the home country). Moreover, Paris Convention applications can also be filed in administrative regions/countries that are not signatory to the PCT, including Hong Kong, Iraq and Pakistan. It's important to mention that filing this type is advantageous when an applicant wishes to protect an invention in just a few countries (up to five or so): otherwise, PCT is preferred.
• Foreign filing license: Oftentimes, applicants do not see any benefit in filing a patent application in their own country due to lesser market potential and/or non-patentability of an invention there. In such a scenario, an applicant can file an application in specific countries of interest. However, in most, this can only be done after obtaining a foreign filing license or written permission from the respective local patent office to file a patent application outside their country.
Using the PCT route, one needs to file a patent application or priority application with the national patent office before filing an application in multiple countries. Otherwise, the applicant can also file a PCT application directly after obtaining a foreign filing license from their local patent office.
The PCT filing procedure is divided into international and national phases. The journey begins with the filing of an international application and concludes (when the outcome is favorable) with the filing of a national phase application in national or regional patent offices.
International phase process
• Filing a PCT application: As mentioned above, an applicant can file the PCT application with the national or regional patent office, or with WIPO. It must be filed either just after acquiring a foreign filing license or within 12 months of filing the application with the local patent office.
• International search: This process involves identification of the published patent documents and technical literature by the International Searching Authority chosen by the applicant. Thereafter, an international search report and written opinion is issued, which helps the applicant evaluate whether an invention is patentable or not. This report and written opinion are issued within 16 months from the priority date or first filing date of the application.
• International publication: The patent application comes into the public domain after 18 months from the earliest filing date. It is required to be published within 18 months from the priority date or after the first filing date of application.
• International preliminary examination (optional)
This step also involves International Searching Authority, which conducts additional patentability analysis on request, and is usually performed on the amended version of a patent application. Thereafter, an International Preliminary Examination Report (IPER) is issued.
National phase process
Once the PCT procedure concludes (approximately 30 to 31 months after the priority or first filing date), you can start pursuing the grant of the patent directly before the national/regional patent offices of the countries where you are interested in acquiring protection. Note that, while national patent offices may consider an international search report, they are not bound to grant patents based on it; most offices will conduct their own examination and search, and will only grant a patent in their country if an applicant is able to satisfy its requirements.
Advantages of filing a PCT application
• Offers an additional 18 months to decide if the application must be expanded to other (and which) countries
• Protects rejection from PCT contracting state patent office on formal grounds
• Provides a strong basis for the applicant to take appropriate business decisions
• Reduces search and examination work for the patent offices in the national phase
• Published PCT application sends a global notice about the invention