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Patent filing: protecting innovation in a global market

It is generally advisable to begin by filing a national patent application for an invention or innovation at the patent office in the inventor or company’s country of residence or operation (for more on obtaining a national right, click here). This is particularly useful where budgets are tight, as it will establish a ‘priority date’ from which inventors can seek additional rights in other jurisdictions for the same innovation as the company grows and develops.

Larger corporations or those operating in fast-moving or highly competitive technological sectors will generally follow the same process for their patentable innovation; however, they may consider foreign patent applications for key territories at an earlier stage of the process. Depending on their areas of trade, larger corporations may concentrate their applications on key national patent offices (e.g. the USPTO) and extend those rights to larger territories via regional patent offices (e.g. the European Patent Office or EPO) or via international treaties and agreements (e.g. the Patent Cooperation Treaty (PCT) or a Patent Prosecution Highway (PPH)).

This is a basic introduction to the patent application process. For details on Novagraaf’s specific patent services, including patent drafting, prior art searching, portfolio management and litigation support, click here for our services overview page. Click here for further information on the Unitary Patent or here to contact one of our patent attorneys or to review their expertise in your sector.

Step 1: Filing an application at a national patent office

Filing a national (e.g. UK) application first provides a crucial window in which to assess the success and market potential of the innovation and, therefore, tailor any subsequent applications to markets of interest to the company. In general, patent applicants will have 12 months from the priority date in which to file foreign applications at relevant additional patent offices (for more on obtaining a national right, click here).

Step 2: Extending the right to foreign markets

In general, there are two ways to extend the coverage of an existing patent application to new territories (provided that the process is completed within the 12-month priority period):

Filing national rights:

  • Patent holders can choose to file a patent application directly at each country’s patent office in which they wish to obtain a patent. For non-English language countries, they will need to prepare a translation as part of this process.
  • Alternatively, patent holders can choose to file a patent application at a regional patent office covering the territory of interest. The most popular of these is the EPO, which oversees the prosecution of a European Patent (EP) application that covers 38 states, including the whole of the EU. The EPO will also manage and grant the Unitary Patent once it comes into effect in 2017.
  • The other regional patent offices are: OAPI and ARIPO (covering different groups of African states); GCC (covering Saudi Arabia and some other Middle Eastern states); and Eurasia (covering the Russian Federation and some other ex-USSR states).

UPDATE: What will be the impact on European Patents of the UK's vote to leave the EU?

Filing an ‘international’ patent application:

  • Alternatively, patent holders can file an international Patent Cooperation Treaty (PCT) application. This is a single international application procedure that covers around 140 countries. The application provides automatic coverage for all PCT member states and takes the place of filing individual applications before national or regional patent offices.
  • Although some examination of the application does take place, the PCT system itself does not grant patents. Instead, patent holders and/or their patent attorneys need to complete the national or regional phase entry formalities for each country or region in which they wish to continue their application.

However, even though applications can be filed via a regional (EP) or international (PCT) channel, each application filed will go through its own national procedure in the territories designated in the application. In the EP, US, Canada, Japan, China and some other major jurisdictions, this will include a separate official search report followed by a full substantive examination. For further detail on the additional prosecution requirements and tools required, as well as relevant post-grant formalities, please contact to arrange to speak to one of our attorneys.

Step 3: Reviewing the scope of the right

Once a patent application has been filed for an innovation, it cannot be changed or added to. The only way to incorporate additional material is to file a fresh application at the national patent office within the priority year, claiming priority from the initial application. For this reason, at the 12-month stage, it is often wise to redraft the specification to include any additional developments in the priority year and to better define the invention over the prior art. This new application can be filed at the national patent office claiming priority for the material disclosed in the earlier application(s). At that point, such amendments can also be incorporated into the foreign national or regional and/or PCT applications.

How to get a patent: further information

You can find out more about patents and the processes for obtaining, enforcing and exploiting patent rights in overseas markets, here. For information on Novagraaf’s patent services, including patent drafting, prior art searching, portfolio management and litigation support, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.