International Patents – Protecting Your IP Globally

In an era defined by rapid technological advancements and a borderless marketplace, safeguarding intellectual property (IP) is vital for any forward-thinking business strategy. Often, individuals and companies initiate their IP protection journey on a national level, laying the groundwork for securing their innovations within the confines of their home country. For instance, protecting your intellectual property in the UK might be the initial focus for many enterprises.

Patents are a form of IP that protect innovations and ideas, granting inventors exclusive rights to their creations for a specified period (normally 20 years). To qualify for a patent, an invention must meet stringent criteria, including utility, novelty, and non-obviousness. Utility refers to the practical and beneficial aspect of the invention, demonstrating its functionality and usefulness. Novelty requires that the invention is entirely new and has not been disclosed or publicly known prior to the patent application. Non-obviousness demands that the invention is not an apparent extension of existing knowledge or technology.

However, the territorial nature of national patents poses a challenge. While they provide robust protection within the borders of the granting nation, they offer no defence against infringement beyond those limits. As businesses expand their reach and innovations transcend geographical boundaries, the need to protect intellectual property globally is becoming more and more important.

Protecting your patent globally

Protecting your innovations globally involves a strategic sequence of steps, beginning with the filing of a local patent application, such as with the UK Intellectual Property Office (UK IPO), to establish a priority date. This initial filing not only safeguards your invention within the national borders but also serves as the foundation for international protection. Recognising the importance of timely action, innovators have a crucial one-year window to file foreign patent applications while retaining the original priority date. By filing international patent applications within this specified timeframe, inventors ensure that their innovations are considered globally as if filed on the original priority date. This strategic manoeuvre not only simplifies the application process but also maximises the potential for securing international patents.

Submitting an international patent application

Unfortunately, a single “international patent” that protects your IP globally doesn’t exist. To fully protect your invention on a global scale, you typically need to submit separate patent applications in each country where you want coverage. This process can be a bit of a time and money investment, especially if you’re looking at a big expansion. However, there’s a helpful middle ground known as the Patent Cooperation Treaty (PCT). Instead of diving headfirst into individual country filings, you can start with a PCT application. This approach provides a sort of buffer period before you commit to filing in specific countries, giving you more time to plan and manage costs effectively.

PCT patent applications

Although there is no magic “international patent”, leveraging tools like the PCT makes the journey more manageable and marks a strategic juncture in the pursuit of global patent protection. As a foundational component of the global intellectual property framework, the Patent Cooperation Treaty (PCT) serves as a channel for inventors seeking to navigate the complexities of securing patents across borders. Governed by the World Intellectual Property Organisation (WIPO), the PCT is a collaborative agreement between most industrial countries, providing a centralised platform for streamlined international patent application processes.

Unlike national patent offices, the PCT system does not conduct a full examination or grant patents outright. Instead, it offers a preliminary phase, acting as a helpful pause that delays the often cumbersome and expensive process of filing individual foreign patent applications. This interim period that covers and acts as an “international patent” is known as the “international phase”. It plays a crucial role in giving inventors insight into the potential scope and viability of their patents.

During the international phase, inventors receive an International Search Report (ISR) and a Written Opinion, providing preliminary information on the patentability of the invention. This not only offers a valuable snapshot of the patent landscape but also serves as a proactive measure, allowing inventors to assess the feasibility of their inventions before committing to the substantial costs associated with individual national filings.

A significant advantage of the PCT system is its ability to replace the need for simultaneous filings in multiple countries. If the desired countries are members of the PCT, inventors can use this to cover most of the globe with a single application. This simplifies the process, mitigates financial strain, and grants inventors a more deliberate and informed approach to their international patent strategy. So, while it’s not a fully-fledged global patent, the PCT application guides inventors through a smarter, more informed approach to international patent protection.

The international phase

The international phase begins with the initial filing of a PCT patent application and the subsequent entry into the National/Regional Phase. This intermediate stage is marked by two key chapters.

Chapter I Phase

The Chapter I Phase begins with filing the application, followed by the preparation of an International Search Report (ISR) and a Written Opinion by the International Search Authority (WOSIA). During this phase, inventors can tweak their claims based on the initial evaluation. Once this is done, the PCT application is published, ISR and any amended claims included. If no request for an international preliminary examination is filed, the Written Opinion becomes the International Preliminary Report on Patentability (IPRP) under Chapter I. This gives inventors a good sense of their patent’s potential before moving on to the next steps in the global patent process.

Optional Chapter II Phase

The Optional Chapter II Phase is the second stage in the PCT patent application process that occurs if the inventor decides to file a Demand for international preliminary examination. During this phase, inventors have the opportunity to present amendments and arguments to address any objections raised in the Written Opinion of the International Search Authority (WOISA). The process involves a thorough examination, with the goal of resolving any outstanding issues and refining the patent application further. The result of the Optional Chapter II Phase is an International Preliminary Report on Patentability (IPRP) under Chapter II. This optional phase empowers inventors to actively engage in the examination process, providing a platform for dialogue and clarification before deciding on the next steps in the pursuit of global patent protection.

The PCT application ends if it’s not taken to the national phase in any member state. This marks the end of the international process. But, for those wanting to continue nationally, there’s a crucial deadline to remember. The national phase entry must happen within 2.5 years from the priority date. This deadline acts as a signal to switch from the international phase to the next step in securing patent protection at the national level.

Who can submit PCT Patent Applications?

When it comes to submitting PCT patent applications, it’s essential to consider the residency or nationality of at least one applicant. PCT application filing mandates that at least one applicant is a resident or national of a PCT member state. The choice of where to file the PCT application is then determined by the residences or nationalities of the applicants. For instance, if an applicant is a resident or national of the UK, they can file at the UK International Patent Office. On the other hand, applicants from other countries can choose to file in a PCT member state where they are eligible. This requirement ensures that PCT applications are submitted within a framework that aligns with the residency and nationality of the applicants, contributing to a structured and accessible international patenting process.

The advantages of PCT patent applications

Opting for PCT patent applications comes with several strategic advantages for inventors. One notable benefit is the potential for lower costs at the conclusion of the priority period. PCT applications allow inventors to defer decisions on patent protection locations and associated filing costs until the conclusion of the International Phase, which typically spans around 18 months. This delay provides a valuable window for thoughtful planning and decision-making. Particularly advantageous is the flexibility PCT offers when deciding on foreign patent protection near the one-year priority limit. In such scenarios, a single PCT application filed in English can circumvent the need for rushed individual filings, offering inventors a streamlined and cost-effective approach to navigating the complexities of global patent protection.

The disadvantages of PCT patent applications

While PCT patent applications offer strategic advantages, it’s crucial to consider their associated disadvantages. One notable drawback is the higher overall costs incurred throughout the patenting process. The international nature of PCT applications often results in increased expenses compared to pursuing patent protection in individual countries. Additionally, the pursuit of a PCT route usually entails a longer timeline before a patent is granted. The extended process, spanning the International Phase and subsequent national phases, can test the patience of inventors seeking quicker protection. Thus, the decision to opt for a PCT application should be weighed carefully, considering the balance between the upfront convenience and the potential drawbacks of higher costs and a lengthier timeframe for patent approval.

The costs involved in a PCT patent application

• Minimum cost for a 50-page PCT application: £4000 (excl.VAT)
• Total filing cost: £5500-£8000 (excl.VAT)
• Optional Demand filing cost: £2200 (excl.VAT), with potential £1000 recoup in European Regional Phase
• National/Regional Phase entry cost: Similar to “direct” application, £1000-£5000 (excl.VAT), plus translation if needed

The costs associated with a PCT patent application can vary based on several factors, including the complexity of the application, the countries involved, and the services provided by different patent professionals or agencies. It is advisable to consult with a patent attorney or agent to obtain accurate and up-to-date estimates tailored to your specific case. They can provide precise cost breakdowns based on your individual circumstances and the jurisdictions you are considering for patent protection.

Conclusion

Navigating the realm of international patents is vital for individuals and businesses seeking to safeguard their intellectual property (IP) in an era of rapid technological advancements and global markets. The Patent Cooperation Treaty (PCT) offers a practical approach to simplify the international patent process. PCT applications give inventors a flexible and cost-effective way to protect their innovations globally. While PCT brings advantages like lower costs and deferred decisions, it’s essential to note drawbacks, including higher overall costs and a longer wait for patent approval.

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