How to Get an International Patent Protection - An Easy Guide

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One can get international patent protection on their invention in 2 ways:

1. Paris/Conventional Route

In this approach the applicant can either simultaneously file in all desired countries where it want protection or file in one of the 177 signatories of the Paris Convention (PC), that will give the applicant a grace period of 12 months from the date of filling, to file in other signatory countries.

2. Patent Cooperation Treaty (PCT) Route

PCT is an international treaty with around 152 contracting members which makes patent protection at an international level more structured and time-flexible. An applicant in this approach files an application directly under PCT or within those 12 months that were granted by PC (above), thus extending the grace period of patent filling in other countries to 31 months from date of filing.

How does the Paris Conventional process work?

The Paris Convention is administered by the World Intellectual Property Organization (WIPO). With over 177 countries as contracting parties, essentially the Paris Convention establishes a right of priority, which means that an applicant can utilize his/her first filing date in one signatory country as an effective filing date in other contracting countries. One of the major necessities to this right of priority is that the subsequent filings must be done within 12 months from the first filing. The signatory countries can also join the Patent Cooperation Treaty (PCT), which allows contracting parties to file international patent applications with some additional time.

How does the PCT process work?

1. An applicant can file an international patent application either at national/regional Patent Office or WIPO, in accordance with the PCT norms.

2. The International Searching Authority (ISA) (one of the world’s major Patent Offices) isolates the published patent documents and technical literature (“prior art”) that might impact the patentability of the invention and then opines on the invention’s potential patentability in a written format.

3. The content of your international application is disclosed to the world after the expiration of 18 months from the earliest filing date.

4. At the request of the applicant, Supplementary International Search and International Preliminary Examination may be conducted, to carry out an additional patentability analysis.

5. Approximately at 30 months from the earliest filing date of your first application from which you claim priority, the applicant could start to pursue the grant of their patents directly before the Patent Offices of the countries in which he wants to obtain them.

Advantages of Paris Route

An applicant will be able to file in any of the additional 29 countries like Argentina, Bangladesh, Bhutan, Cambodia, Nepal, Mauritius and Pakistan, which are not members of the PCT but are signatories of Paris Convention. In any Patent filing time factor must always be considered. If one needs protection in only a few countries, the Paris approach will be more advantageous and cost-effective as the proceeding can be completed in the given 12 month time frame. In this route the applicant doesn’t pay any extra money other than the required amount in patent filing in separate countries. While in the PCT route the applicant will be required to pay an additional amount for the extension of time period to 31 months for patent filing in PCT countries. In addition, some technologies may have a shorter shelf span, which makes the shorter time period of 1 year the more economical and obvious option.

Advantages of PCT Route

Following the PCT route allows the applicant to delay national entry into PCT member countries to 31 months from the priority date. Such an extended period may be utilized further to do market analysis, obtain licensees for the invention, gather financial aid or funds for the process and on obtaining a preliminary examination report issues regarding novelty, inventive step, and industrial applicability of the invention may be resolved. This approach is more beneficial if the applicant is considering patent protection in multiple countries, patent proceedings being time consuming, a 31 month extended time frame will be advantageous. Majorly, multi-national companies, large corporations, research institution, universities and organizations opt for PCT.

In conclusion, one opts for PCT route majorly for the additional 19 months’ time extension for patent filing in other countries. This additional time can be utilized to appoint local patent agents in every foreign country, do the necessary translational work and pay the national fees.

Author: Avadhi Jain, intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.