Patenting Overseas

Foreign patents can be obtained in a number of different ways depending on the countries in which patent protection is required:

• By filing separate national patent applications (called Paris Convention Applications or Convention Applications) in the individual countries to be covered,
• By filing a European Patent Application, which can cover any number of countries selected from those European countries that are members of the European Patent Convention,
• By filing an International Patent Application, which can cover any number of countries selected from a worldwide group of countries that are members of the Patent Cooperation Treaty.

Paris Convention Application

The filing of foreign patent applications may be delayed for up to one year from the date of filing of your initial application for the invention or, in some circumstances, for up to 18 months from that date. If filed within a year, a foreign application can effectively be backdated to the filing date of your initial application . Its validity will then not be affected by any public disclosure of the invention which may have taken place between the filing of the your initial application and the subsequent foreign filing.

In most countries, patent applications are subjected to a search and examination. The purpose of the search is to ascertain whether there are any prior publications that affect the novelty and patentability of the invention. When the application is examined, an objection can be raised that the invention is not patentable in the light of the disclosures in any such publications. In that event, the applicant is given an opportunity to argue against the objection or amend the application to highlight those features of the invention which distinguish it from the disclosures.

To avoid duplication of work and the expense that can be entailed in dealing in this way with a number of separate applications, a single European or International application may be filed, depending on the countries required to be covered. Only one search then needs to be made.

European Patent Application

In the case of a European application, it is examined and, when any objections have been overcome, a European patent is granted. It is then necessary to register it individually in those countries in which protection is required, including providing translations where necessary, whereupon it becomes a group of separate patents.

International Patent Application

In the case of an International application, it may at the applicant’s option be examined at the initial stage. Alternatively, it may be taken directly to the next stage, which is the filing of individual applications in those countries where protection is required, including the provision of translations as appropriate. If the International application has not been examined initially, each individual application is examined separately. Patents are then granted on the individual applications.

European and International Application Advantages

Both the European and International patent systems have the advantage of enabling applicants to delay deciding which countries to cover, and thus committing themselves to substantial costs, until they know what the chances are of obtaining patents and they perhaps have a better idea of the commercial potential of their invention.