International Patent Filing
An inventor/applicant can file a patent directly in any country other than India or can apply for PCT (International) patent application within a period of one year from the first filing date/priority date and then following a timeline specified by WIPO, the inventor can file his/her patent application in any country.
The Patent Cooperation Treaty (PCT) is an international patent filing law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in more than 190 countries.
See PCT contracting states – https://www.wipo.int/pct/en/pct_contracting_states.html
A single filing of a PCT application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.
For Official fee, please visit – https://www.wipo.int/export/sites/www/pct/en/fees.pdf
For Calculating a timeline for National Phase filing, please visit – https://www.wipo.int/pct/en/calculator/pct-calculator.html
Filing a PCT application has the effect of automatically designating all Contracting States bound by the PCT on the international filing date. The effect of the international application is the same in each designated State as if a national patent application had been filed with the national patent office of that State.
The International (PCT) application is by nature a temporary placeholder. It serves as a delay mechanism to buy more time before entering the national stage of each desired member country. In that respect, a PCT application is similar to an option contract in the financial world.
The International Patent application provides an additional period of 18-19 months to an invention in comparison to a conventional national phase entry for filing the patent in different country other than native country. The additional 18-19 months may be crucial for you to raise capital or monetize your invention. You may even decide that the invention is not worthy of protection in so many foreign countries, in which case you would have only spent a few thousand dollars to gain the extra time to come to this conclusion. Without the PCT application, you would be forced to decide to spend tens of thousands of dollars at the 12-month deadline only to realize later that it was not worth it.
ANS IP Management Services team is highly experienced in drafting and filing international patent filing at competitive rates. In addition to this, our team leads from front to communicate to PCT office against the search report and written option generated by WIPO.
Why Should You Choose for International Patent Filing?
Many inventors limit themselves to patent filing in their native countries and do no proceed with international patent filing. There can be various reasons for not opting to go for international patent filing such as cost constraint, ineffective persuasion by the attorney or negligible to minimal knowledge of advantages of having an international patent. These are few of the primary reasons for avoiding the international patent filing, so let’s know what are the advantages of filing the international patent.
Advantages of International Patent Filing
As we all know that a patent is a jurisdictional right and you get the priority rights and enforcement rights in a country where it is registered. The real issues begin if an innovation has an international potential i.e. the product or patent has similar or more market value in a country other than the native country of the inventor. So, what are these advantages that we should know and that we get from an international patent filing:
Distribution of Investment in Intellectual Property
If an inventor or an applicant intends to file a patent in a more than one country then the total cost of the patent filing may go up from upto USD 50,000 or even more. Through direct national phase filing or conventional filing route this investment has to be made in a period of 12 months which becomes a huge burden and hence the inventor or the applicant drops the idea. By adopting PCT (International) patent filing route, this investment is to be made over a period of 30/31 months at a meagre cost USD 600 – USD 2000. Thus, you can plan your investment for filing patent in different countries accordingly.
Better Selection of a Market
Since the international patent filing gives a longer time period for a company to file its patent in different countries, the companies can launch their products in different countries and can assess the marketability factor of the patent or product. This reduces a risk rate caused due to unnecessary cost bearing of intellectual property and to justify the investment, the companies try to linger for higher time into the market which shows low response to their patented products. Thus, the international patent filing gives a company a better picture that which countries should be in their priority patent filing list and increase their chances of increasing a return on investment.
Improves Licensing Chance at Lower Investment
Its true that commercialization or licensing of a patent is higher in some countries than others. So, if you have filed an international (PCT) patent then it can help you license a patent in a particular without bearing the cost for filing the patent in that country. You heard right, if your product has really good potential in a market, the interested can act as assignee or applicant and will file the patent in their country with you being inventor. In this way, you can license your patent, file your patent in a country and avoid investing a higher amount for filing a national phase application.
Hence, it is always advised to file a PCT (International Patent) application, it will never harm you if your research and innovation is actually true to its core and has mass appeal.
Can International Patent Filing Assist in Research?
Yes, the international patent filing can actively help in enhancing your research and get connected or acquainted to a person research in the same field from different university, state or country. An international patent filing assures a privacy or protection extension to the inventor for larger time period. So, if more than one inventor across the globe are researching in the same field can actually exchange knowledge among themshelves to improve the results of their research drastically and may also improve the turn around time for an outcome. This is possible due to the fact that now the inventors do not need to be afraid of copying because although the international patent filing does not allow protection in a particular country but in case of any mischief it allows sufficient time to the inventor file their inventor in their targeted country and take next course of action.
What Are The Preferred Countries to File International Patent Filing (Conventional Filing)?
Now, let’s talk in detail about another kind of international patent filing i.e. direct conventional entry into foreign countries within time period 12 months. Many inventors and applicants intend to file their application in only one or two foreign countries than their native countries.
Patent Filing in USA
United States of America is one of the primary destinations for patent filing of the inventors due to the fact that the patent organization of the USA is highly matured and a procedure goes through a rigorous scrutiny by the USPTO Examiners. Hence, whichever patent comes out unscathed and get grant in USA has high value. Along with value addition, USPTO also provides a high commercialization ration which means if your patent is granted in USA and you intend to license the same then it is much easier in USA than other countries.
Patent Filing in European Patent Organization
European Patent Organization are termed as equally if not better patent office and their patent procedures have similar stringent rules as compared with USPTO. Although, due to higher cost of filing applicants try to avoid EPO filing, but to ensure best commercialibility of their product, EPO is one of the best jurisdictions. Also, in such a huge filing cost, the applicant gets a massive benefit that it can test the largest pool of developed nations as EPO has more than 30 countries signatories to it and most of them are developed nations.
Additionally, a patent granted in EPO is applicable in all its signatory countries and it adds a massive value to the patent valuation and corporate valuation for a company who owns a European patent portfolio.
Hence, if you need to choose a jurisdiction for direct international patent filing, EPO should in your prime list as it can give a market boots that your patent and your product deserves.
Patent Filing in Japan
Japan is another developed which has rich and diverse patent background and an applicant who has a Japanese granted patent and patented product can achieve maximum marketability of their products. To file a patent in Japan, one needs to translate a patent application into Japanese language. The patent examination in Japan goes through fine scrutiny and if succeeded, can add massive value to a patent portfolio of an applicant.
Japan provide a wide market acceptability due to their history of producing one of the finest patented products in the world and most of those products are second to none. Hence, if you are looking to choose a list of countries in which your patent application should be filed and with that you are looking to ensure high market potential then Japan should surely be in that list.
Patent Filing in Australia
Although, Australia is not a prime destination for a lot of patent filers but it should steadily the Australian patent ecosystem is emerging to one of the best in the world and also its market is one of the most sophisticated with high inception rate. Australia allows patent filing in English language and allows an inventor to explore various technical fields in terms of innovation. The patent ecosystem in Australia allows patent filing in futuristic projects also, given the fact that they should not be an abstract idea. So, Australia should be given much more weightage in your patent list along with other primary countries.
Patent Filing in Few Other Primary Countries
Along with the above mentioned primary countries there are few more countries who have developing yet very diverse and strict or matured patent ecosystem such China, Canada, South Korea, Singapore and India. These countries alone give a market of more nearly 3 billion people and since their patent ecosystem is inclusive one and developing very along with their market, they can be in your prime choosing.
For filing a patent in India, you should have a patent application in English language. The cost of filing a patent in India is very low with respect to other developing or developed nations and due to its matured market nature, it can give you boost like no other.
Canadian patent office allows patent filing in French and English languages and Canada has one of the highest rate of patent filing in world. Canadian patent system is steadily attaining a global stature of matured patent ecosystem and hence, it should be in your international patent filing list too.
South Korean patent office allows a patent filing in Korean language and gives one of the developed market exposures in Asia. Singapore has nearly same patent ecosystem as of South Korea and allows a patent filing in English language.