Introduction
The cost of obtaining a patent and thereby protecting the invention in number of countries is not only expensive but a complicated task. Many a times the applicant finds himself in the hailstorm of unfathomable timing deadlines. Getting an international patent protection for an invention can impose financial burden on small and medium enterprises or entrepreneurial undertakings. Various modes/strategies can be used for filing an application for the grant of patent simultaneously in various countries.
The process of obtaining a National Patent Protection involves drafting of the application along with the complete description and claims, filling of the application, prosecution and hearing in case of opposition/infringement and finally timely payment of the renewal fee for the maintenance of the granted patent. To be precise, everything comes at a cost.
The expenditure on obtaining a patent in a single country is itself so huge than a strategy that minimizes or delays the expenses is valuable. Delaying the cost provides an additional opportunity to the patent applicant to assess and evaluate the possibility of success of the patented product or process overseas, its commercial demand, freedom-to-operate the patented product or process and more importantly the applicant is able to calculate in the due time the probability of obtaining protection in a particular foreign country. This saves the applicant from the undue expenses of filing the patent application in foreign countries where there are chances of facing rejection of the application or of the patented product or process.
Therefore, any strategy that provides enough time to the patent owner to strategically evaluate the overall potential value and demand of the invention in other foreign countries while preserving the first filing date (priority date) is looked as a welcome step.
Filing Strategies
To obtain an international patent protection on an invention, any of the following three strategies can be used.
- Separate Applications: This is the most expensive approach and involves filing of separate patent applications in the national patent office of each country where the applicant is keen on seeking protection for its invention. In this approach, the separate applications are usually filed on the same day of filing of the initial application in the parent country. The drawback of this system is that the applicant does not get additional time to assess and evaluate the possibility of success of the invention overseas and filing fees for each of the countries in which the protection is sought begins to accrue as soon as the application is filed.
- Convention application : The second approach entails filing of a patent application claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries. Such an international patent application is known as convention application and is filed in accordance with the Paris Convention for the Protection of Industrial Property. This approach requires filing of application for patent firstly in a single Paris Convention member country to establish the first filing date or priority date for the application. The application can then be delayed for up to twelve months before filing in other Convention countries so that the applicant gets a year's time from the first filing date or priority date to delay the costs related to obtaining international patent protection.
- PCT International Application: The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications in which the applicant has an option to file a single international patent application in one language with one receiving patent office in order to simultaneously seek protection for an invention in up to 148 countries throughout the world.
Other than being the least expensive of the three approaches, an international application filed using PCT confers up to thirty months time, from the priority date or international filing date whichever is earlier, to enter the National Offices of various member countries. Further, this is also an economical procedure that allows the inventor/applicant all additional time to assess the commercial viability of the invention. This delay is significantly advantageous for applicants in taking strategic decisions about the countries in which patent protection can be pursued.
To be unambiguous, the PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for filing of patent applications simultaneously in many countries while preserving the priority date of that application.
Further, PCT route provides an International Search Report (ISR) that is very valuable to the applicant. The ISR gives the applicant a fair idea about the probability of obtaining protection of the invention through patent before incurring charges for filing and prosecution in individual countries.
Conclusion
Though it is true that a patent confers on the patent owner, the exclusive right to prevent others from making, using, selling, or importing the invention defined in the claims of the patent and these exclusive rights act as an incentive, however, protecting an invention in a number of countries means an extra financial burden on the inventor/applicant. The applicant needs to balance the cost incurred in obtaining the international protection through patents and the profits earned thereafter so that the protection becomes a commercial asset and not a financial burden.
Therefore, any strategy that delays the entry of the international patent application in national/regional offices of foreign countries, where applicant is keen on seeking protection for its invention, is significantly advantageous out of the three strategies discussed above, seeking international protection through PCT international application is most profitable in the sense of money and time both!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
