Protecting your Patent “Internationally”

With the age of globalization and an era of the global market, major companies offer those products and services which are viable around the world. But as per the principle of patent law is concerned, the validity of a patent is limited to the jurisdiction to which it has been applied. Therefore, there is no such concept of “international” patent in the world. For example, the patent granted by the United States Patent and Trademark Office (USPTO) will end at the US border and the owner cannot claim it somewhere else in the world. With no such single patented invention that can be claimed internationally, the inventor is left with only a couple of options that can help in their pursuit of getting patents in multiple countries.

If a foreign applicant files for a patent in other countries, the rights provided to the foreign national will be the same as that of the rights provided to the domestic applicant. This rule of reciprocity will be applicable. Meanwhile, filing of applications in multiple countries will be expensive and time taking. It is expensive, as one needs to hire any local attorney and follow all the procedures with several statutory costs. In case your business is not big, then it might not be feasible for seeking protection in multiple countries.

While applying for the patent in any single country you have to follow procedures that are mentioned in the patent rules and acts of that respective country. Mostly, the procedures are the same which includes filing of application along with the claims, descriptions, drawing (if any), etc. Majorly, there are two routes through which the applicant can get protection internationally. They are Paris Convention and Patent Cooperation Treaty. Let us briefly discuss the two.

Paris Convention

A Paris Convention application is an alternative to the PCT patent application that is filed in the non-PCT member countries or filed directly in convention countries within 12 months from the first patent application filed in the home country. The first patent application filed in the home country is commonly referred to as a priority patent application. The priority date of the Paris convention patent application is the date of filing of the first patent application in the home country. The Paris Convention patent application may be filed directly in the Contracting countries when the Applicants are very sure about the patentability of their invention and wish to secure a patent in the shortest possible time.

As soon the applicant file the patent application in the contracting state, it starts the 12-month period within which the applicant can file the application elsewhere and can claim the priority date of the priority application filed in the home country.  To the extent that the content of the Paris Convention application is disclosed in the earlier priority document, it will be backdated to the priority date which is beneficial for the applicant.

The common advantage of using the Paris Convention as discusses earlier in the 12-month convention period which helps the applicant to seek funds or to perform market research and turn an idea into a commercial product. All of such exercises can be done by filing a Convention Application without risking a loss of rights in other countries.

PCT Filing

This is the most convenient route if a patent applicant is trying to protect his invention in multiple countries as large numbers of countries are currently signatories to this treaty. PCT requires the filing of an international patent application within 12 months from the date of the local/domestic patent application from which priority is to be claimed. If the international application is filed within 12 months from the date of priority, the applicant gets a minimum of 30 months to decide whether he wants to enter other countries as a national phase or not. An additional advantage of PCT is the International Search Report which the PCT impaneled Search Authority provides a detailed opinion on the patentability of the invention disclosed in the PCT application. To enter India as a national phase, a period of 31 months is available. PCT applications can directly be filed without claiming any priority from domestic or local applications. The International application can be filed directly and in case of claiming priority from local applications, international patent applications have to be filed within 12 months from the date of filing the local application. In some cases, if this timeline is missed, priority can be restored.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.

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