It’s likely that you will want to protect your invention in any territories where you will market your product or want to prevent others from exploiting your idea. Let’s see the best way to go about this.
A granted patent gives you protection for your invention in the country in which that patent is granted, and only that country.
For example, obtaining a granted patent in the UK gives you protection for your invention in the UK. This means your competitors are prohibited from making, using, advertising, selling, importing and stocking your protected product in the UK. However, everywhere else anyone is free to use your idea.
This means you’ll also need to apply for patent protection in the other countries that you are interested in.
Deciding which countries to get protection in usually involves weighing up the cost vs the coverage. Ideally, you may want global coverage, but the cost would be huge. As such, it is usually best to take a strategic approach.
Consider protecting where you’re manufacturing, or where competitors may manufacture. Consider getting protection in your biggest markets. If your competitors couldn’t compete in those countries would that be enough to prevent them competing at all, or at least protect your revenue streams?
As we’ll see, while you need to think through where you want protection, it is not something you necessarily need to do immediately as there are systems in place that allow you to delay that decision.
“I think that the important thing to work out in terms of filing strategy is, to start it as early as possible, try and have plenty of time before you have actually disclosed your invention.” Jeremy Holmes, Imperial Innovations
You have a few options for how to get your idea protected around the world. The diagram below shows a typical patent timeline that indicates how to go about pursuing patent protection in a number of different countries and when different acts need to be performed in order to do so. Let’s talk this through, step by step.
The patenting process typically begins with a first filing (shown in blue), for example in the UK.
The UK is typically recommended for UK and European companies as the official fees payable to the UK Intellectual Property Office are relatively low and are not due for the first 12 months from filing the application. This first filing allows you to keep your options open for up to 12 months giving you time to decide how you wish to proceed around the world.
Within this first 12 months, you can file further applications that claim the benefit of the filing date of the first filed application. This is the date at which the applications will be assessed against any prior art. This process is known as “claiming priority” and the date of your first filed application is referred to as your “priority date”.
At this stage, you can decide to file an international “PCT” application (shown in green), or applications in specific countries of interest (shown in red).
In the case of an international application, for a relatively modest initial cost, the decision on which countries you wish to proceed with, and the associated costs, are delayed for an additional 18 months.
This gives you time to properly consider which markets are relevant and to raise any necessary funding. This will not lead to a “global patent”, but it centralises the application process for the first few years before splitting into national applications.
You could also file applications in specific countries of interest directly at the end of the 12 months. The costs associated with each country will be due at that time, although taking this route may lead to an earlier grant of a patent in the various different territories.
You can take both of the above approaches in tandem, although one route or the other is typically chosen.
After filing an international application, at 30 or 31 months (the time limit varies for different countries) from filing the first application you must decide which countries you wish to proceed with. This is the end of the 18 month period mentioned above for delaying your decision.
At this point, the international application splits into a number of separate, national or regional applications. Most countries have a national patent system. However, it is worth noting that there are some regional patent systems. For example, in Europe, the European Patent Office examines patent applications that can then be used to obtain protection across Europe.
Costs for filing your application in each of the countries that you have chosen will be due at this stage and will initiate the examination of your application in each of the respective countries.
Each national application is then examined by the respective Patent Office and costs will be incurred along the way associated with reviewing any objections raised against the application, reviewing any documents that have been cited and amending the application if necessary. Whilst these are difficult to predict, they have the benefit of being spread over a number of years.
Renewal fees are also payable, either following the grant of a patent or, in some cases, beginning prior to grant. These are annual fees to maintain your application or patent and vary from country to country.
Answer last updated: 17 Jan 2018Tags: