What You Need to Know About Seeking Patent Protection Overseas

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There was a time when inventors did not have to worry about intellectual property protection outside their country, in large part because products were designed, manufactured and purchased in a limited area. However, the rise of globalization has changed this. Now, a product that is produced in one corner of the globe and manufactured in all parts of the world can easily be sold. This new economy presents challenges for patent applicants and/or inventors, one of which is how to ensure that the invention is protected in countries where your product or process is easily accessible. The solution is to file a patent application in any target market country – expanding your rights there and making it difficult for competitors to use your products or technology without proper permission.

How to obtain patent protection abroad

It is important to know from the start that there is currently no way to obtain a global patent therefore, to obtain patents in many countries of interest, there are three methods available:

• Application of the Patent Cooperation Treaty (PCT): The Patent Cooperation Treaty is an international treaty administered by the World Intellectual Property Organization (WIPO) – a treaty that makes it possible to file a single international application for patent protection in different countries (more than 150, in fact ) . However, it is not as simple as filing one 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 seem daunting, as the PCT route comes with advantages that we will discuss later in this article.

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• Paris Convention application: The Paris Convention was signed in Paris in 1883, the Paris Convention is still a valid structure for a patent application, and can be used on files in several countries (within a maximum of 12 months from the date of filing the first application in the home country). Furthermore, Paris Convention applications can also be filed in non-PCT administrative regions/countries, including Hong Kong, Iraq and Pakistan. It is important to note that filing of this type is useful when the applicant wishes to protect an invention in a few countries (up to five or so): otherwise, PCT is preferred.

• Foreign Filing License: Often, applicants do not see any benefit in filing a patent application in their own country due to less market potential and/or the invention being unpatented there. In such a scenario, the applicant could submit an application in certain countries of interest. However, in most cases, this can only be done after obtaining a foreign filing license or written permission from the relevant local patent office to file a patent application outside their country.

PCT Applications

Using the PCT pathway, one needs to submit a patent application or priority application to the national patent office before filing an application in several countries. Otherwise, the applicant can also file a PCT application directly after obtaining a foreign filing license from the local patent office.

The PCT filing procedure is divided into two international and national stages. The journey begins with the filing of an international application and ends (when the outcome is favorable) with the filing of the national phase application at national or regional patent offices.

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international stage operation

• Filing a PCT application: As mentioned above, an applicant can file a PCT application with a national or regional patent office or with WIPO. It must be filed either immediately after obtaining the foreign registration license or within 12 months of submitting the application to the local patent office.

• International search: This process involves the identification of published patent documents and technical literature by the International Searching Authority selected by the applicant. Then, an international search report and written opinion are issued, which helps the applicant to assess whether the invention is patentable. This report and written opinion shall be issued within 16 months from the date of priority or the date of filing of the first application.

• International Publication: The patent application is in the public domain 18 months after the first filing date. It must be published within 18 months of the priority date or after the date of first submission of the application.

• International Preliminary Examination (Optional)

This step also includes the International Searching Authority, which performs a further analysis of patentability on application, usually done on the modified version of the patent application. After that, an International Preliminary Examination Report (IPER) is issued.

National Phase Process

Once the PCT procedure is over (approximately 30 to 31 months after priority or first filing date), you can start to proceed with the grant of a patent directly before the national/regional patent offices of the countries in which you wish to obtain protection. Note that while national patent offices may consider an international search report, they are not obligated to grant patents based on it; Most offices will conduct their own examination and research, and will only grant a patent in their country if the applicant is able to meet their requirements.

Related: How to Proactively Protect Your Intellectual Property Online

Advantages of filing a PCT application

• Provides an additional 18 months to decide whether (and which) the application should be expanded to include other countries

• Protects refusal from the PCT contracting government patent office on official grounds

• Provide a strong basis for the applicant to make appropriate business decisions

• Reducing search and examination work for patent offices in the national phase

• Published PCT application sends global notice of the invention

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