Patents

How do I seek patent protection globally?

Patent protection is generally national and patents only confer protection in the country for which they are granted.

Whilst there is no such thing as a global patent, there are a number of international agreements which make it easier to obtain patents in a number of countries.

Under the terms of an international convention to which most countries are party (the Paris Convention), a patent application for an invention filed within 12 months of the first patent application for the invention can be backdated to the date of filing of that first patent application. This means that details of an invention can be disclosed non-confidentially following the filing of a first patent application in one country, without preventing valid patent protection for the invention being obtained in other countries.

Typically, a UK business or inventor will file an initial UK patent application and then consider whether or not to seek patent protection in other countries within 12 months of the UK filing. An advantage of filing in the UK first is that the UKIPO will usually issue a search report within 12 months of the filing date, which is useful in assessing the strength of the patent application before the costs of filing outside the UK are incurred.

When it comes to seeking protection outside the UK, there are a number of options.

National patent applications can be filed in each country of interest.

In some cases, protection in a number of countries can be sought by filing a single regional patent application, such as a European patent application. The European patent application system enables patents to be obtained in a number of European countries (currently 38) by filing a single patent application, and tends to be more cost-effective than filing individual national patent applications.

Another approach is to file an international application under the Patent Cooperation Treaty (PCT). The PCT is an international agreement which provides for a single filing to have simultaneous effect in each member country (currently 153). When an international patent application is filed, this delays the need to file in each country of interest for 18 months. During this period a search is conducted, providing a further indication of the likely patentability of the invention. By the end of the period, it is necessary to decide in which country or countries to continue to seek protection for the invention and steps must be taken in each of these countries to pursue the application. The national patent office of each country concerned subsequently processes the application(s) as a national patent application(s), making use of the search results.

Filing an international patent application therefore enables the cost of national filings to be deferred, as well as an understanding of the objections which are likely to be raised in processing a patent application through to grant to be gained before incurring that cost.

Wilson Gunn can advise on all aspects of intellectual property protection. Please get in touch to speak to a member of our team about patent protection.