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Patents: obtaining patent protection outside of the UK

This guide is based on UK law. It was last updated in September 2008. A patent is granted by a national patent office and will only give you monopoly rights in the country in which it is granted....

This guide is based on UK law. It was last updated in September 2008.

A patent is granted by a national patent office and will only give you monopoly rights in the country in which it is granted. There is no such thing as an international patent. However, if an invention is made in the UK it is possible to obtain patents for that invention in all countries outside of the UK that operate a system of patent protection. Most countries that will be of commercial interest to you operate such a system.

It is possible to file independent patent applications in each of the countries in which you wish to obtain patent protection for your invention. This is not generally an efficient use of your resources. It would require you to follow the process for obtaining a patent in the UK (See OUT-LAW's Guide to Patents: the basics) in each of the countries in which you wish to obtain patent protection for your invention. In particular, you would have to make a separate application, and carry out a separate search of the prior art, in each country in which you wish to obtain a patent.

Fortunately, there are certain internationally recognised procedures that streamline the means by which you can obtain patent protection in countries outside of the UK. In particular, there are opportunities under the Patent Co-operation Treaty (PCT) and the European Patent Convention (EPC) to obtain patent protection in the participating countries.

What is the Patent Co-operation Treaty?

The PCT is an international treaty with over 130 signatories, including most countries that will probably be of commercial interest to you (with a few notable exceptions, including Argentina and Taiwan). The purpose of the PCT is to streamline the procedure for obtaining patent rights in a number of different countries by avoiding the need to make a separate application and carry out a separate search in each country in which you wish to obtain a patent for your invention.

By reducing the number of searches that you carry out you will consequently reduce your costs. In addition, by using the PCT system you will delay the point in the patenting process at which you must decide finally in which countries you wish to obtain patent protection. This defers the payment of certain costs, such as application fees and the cost of having your application translated into other languages.

How does the Patent Co-operation Treaty work?

If you wish to utilise the PCT system your first step will be typically to file an initial single application in the UK. This initial application will, if appropriately drafted, designate all of the countries within the PCT on the date it is filed.

At the point in time when your application is due to be published (typically 18 months after the date on which your application was filed) a single publication of your application will take place rather than a number of different publications in the countries that are of interest to you.

Rather than a number of different searches being carried out by national patent offices, a single search of any "prior art" that may affect the patentability of your invention will be undertaken by an internationally recognised searching organisation. As a result of this search you will receive an international search report and a written preliminary opinion on the patentability of your invention.

The next step is to decide in which countries you wish to progress your application. This usually occurs thirty months from the initial filing date. At this stage you have the option to have the application papers, search report and opinion on patentability forwarded to the national patent offices in these countries. The national patent offices will then each independently carry out a substantive examination of the application and decide whether or not a patent should be granted. This is often referred to as the 'national phase'.

This step in the PCT process is often critical because it is at this stage that the most significant capital costs will be incurred by you. You will have to pay filing fees in each of the countries in which you decide to pursue your application and also the costs of having the application translated from English into the language used by the relevant national patent office.

What is the European Patent Convention?

Like the PCT, the EPC is a mechanism for obtaining national patent rights in the countries who have agreed to participate in it. The EPC is actually more far-reaching than the PCT in that a single supranational patent office, the European Patent Office (EPO), deals with all aspects of the application, including the substantive examination of the application. If the EPO decides that a patent should be granted, then it follows that a national patent will be granted in each of the EPC signatory countries that are designated by you on the application to the EPO.

There are similar cost-reduction benefits as is the case with an application under the PCT, perhaps more so as translation costs can, if you wish, be deferred until you know that the EPO will approve the application. You will also only deal with one patent examiner at the EPO, rather than a number of different national patent offices. However, as a consequence of this, if that patent examiner proves unreasonable in his approach your application could, unlike the case where it is only one national patent office at the national phase under the PCT which causes you difficulties, be prejudiced in all of the countries who are members of the EPC.

It is important to note that the bundle of national patent rights granted under the EPC is not equivalent to the grant of a single patent covering all of the countries in the European Union and directly enforceable in those countries. There have been a number of attempts to introduce such a European Community Patent, but these have so far come to nothing and applicants still rely on the national rights that flow from the patent grant by the EPO. See OUT-LAW's Guide to Proposals for a new European Patent.

How does the European Patent Convention work?

Like the PCT system you file a single application that designates the member countries in which patent protection is sought. Unlike the PCT system you make this application to the EPO rather than your own national patent office.

The application may be made in any of the official languages of the member countries of the EPC, but will be prosecuted by the EPO in either English, French or German and the application must be translated into one of these languages. Otherwise, translation into the national languages of the member countries designated by you on your application can be deferred until the patent is granted by the EPO.

Upon receipt of your application, the EPO carries out its own search of the prior art and, as highlighted above, a single examiner at the EPO carries out a substantive examination of the patentability of your invention. If the invention is accepted as satisfying the criteria of patentability prescribed by the EPC then the EPO will confirm the grant of a patent. Separate national patents will then be granted in each of the member countries designated by you in your application to the EPO.

The patent granted by the EPO is open to challenge at the EPO by third parties for nine months following the date on which it is granted. This is in addition to the rights that third parties may have to apply for revocation of national patent rights in the courts of the country in which those rights are granted.

Relationship between the EPC and the PCT

It is worth noting that an application under the EPC may result from the filing of an application under the PCT. In these circumstances, an application will proceed to the EPO at the national phase of the PCT process and will be categorised as entry into the "European regional phase".

It is worth noting that eleven EPC member countries, including  Belgium, France, Greece, Ireland, Italy and the Netherlands have "closed their national route". This means that it is no longer possible to obtain a national patent protection through the PCT system without entering into the regional European phase and obtaining a European patent from the EPO.

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