Obtaining patent protection in multiple territories

A patent’s coverage is limited to the particular territory that issues the patent. Applications for patents may be submitted in multiple countries if an inventor wishes to protect the invention in more than one country. There are a number of international treaties facilitating such geographical coverage.

Priority rights

The Paris Convention for the Protection of Industrial Property (the Treaty of Paris) facilitates the geographical extension of an invention’s protection by allowing the holder of a first patent application to take advantage of a ‘priority period’ for filing further patent applications relating to the same invention in its signatory countries. Subsequent patent applications are considered to be filed on the day on which the first application was filed with regard to the state of the art, provided that they are filed within 12 months of the date that the first application was first filed and relate to the same invention. Third-party patent applications concerning identical inventions, or a disclosure of the invention occurring in the priority period are not considered to form part of the state-of-the-art. For example, if you decided to apply for a patent in Germany or Japan nine months after a first patent application was submitted in France, then any disclosure of your invention in the course of this nine-month period will not render your patent application invalid in these two countries, which are signatories to the Treaty of Paris.

The filing date of a first patent application for an invention is of vital importance, therefore, since it can serve as a starting point for the priority period. It also determines the cut-off point for what can be considered prior art.

Priority-claiming patent applications can be filed directly with the national patent authorities in the relevant state (for instance, the US, Japan, Australia, the UK or Germany). Alternatively, you can apply for such a patent application with a regional administrative body, for instance the European Patent Office (EPO), which grants a national patent for each of the member states of the European Patent Organisation via a single procedure.

PCT and international applications

Broad geographical coverage can also be achieved by submitting an international application under the Patent Cooperation Treaty (PCT). The PCT, under the umbrella of the World Intellectual Property Organisation (WIPO), provides a system whereby during an initial international phase, a single international patent application can be filed and searched for in over 140 countries party to the PCT. In addition, the application undergoes a preliminary examination during this international phase.

A PCT application, following the international phase, is transformed into a series of national or regional applications, each of which need to be granted at the Patent Office of the chosen country. In effect, the PCT provides a sophisticated centralised procedure for the filing, the initial search, and the initial examination of patent applications in respect of a number of countries, and greatly simplifies the procedure of filing multiple international applications.

The PCT provides a system in which a single application can be used as the first step to gaining national patents in any of the countries that are currently party to the PCT. Furthermore, the system provides a means of delaying the submission of patent applications to the various national and regional patent offices, where patent protection is desired, until at least 30 months from the filing date of a priority application. Filing patent applications before multiple national offices is an expensive process. Delaying such costs via use of the PCT system can be crucial as it allows the commercial success of the invention to be assessed and key markets to be identified before incurring such expense.

The European patent and procedures at the EPO

Patents granted by the EPO must comply with the requirements of the European Patent Convention (EPC), particularly in regards to the tests of patentability. However, any third party may lodge a patent opposition with the EPO in the nine months following the issue of a patent, with the aim of having the patent revoked or limited.

Once issued, a European patent grants the same coverage as a national patent in each of the states. However, in some cases, this grant is conditional upon the presentation of the required translations of the description and/or claims of the patent in one of the official languages of a specific state (according to the national application rules of the London Protocol).

Would you like to know more about obtaining patent protection in multiple territories?

Please contact us if you would like to protect your invention in one or more countries or to receive more information on submission, foreign extensions, the patent procedure or the patent opposition procedure. You can contact us via the form in the upper right-hand corner of this page.