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Patent Protection Overseas

Just as in the UK, in order to secure a patent overseas, formal application has to be made to a patent-granting authority with the necessary details of applicant, inventor and the invention itself. In most countries, before a patent is granted, the patent-granting authority subjects the patent application to an assessment process which includes carrying out a search to see if anything like the item has been previously disclosed, and an examination stage at which the patent-granting authority decides whether or not the invention as defined is new, unobvious, and “industrially applicable”. If all three criteria are fulfilled, a patent is granted.

Patents are territorial, i.e. if an inventor wishes to control the use of an invention only in the UK and does not mind if the invention is used by others outside the UK, then a national British patent is all that is needed. If, on the other hand, it is desired to control the use of the invention over a wider geographical range, then a broader patent filing programme is necessary, but this usually commences with an initial application in the UK, made before details of the invention come into the public domain, often at a very early stage in the development of a new and inventive idea into a product or commercial process.

The initially-filed UK application can be very basic, consisting merely of the application form which includes a request for a patent, and a description of the invention. If the UK application is to be taken further, the application must be supplemented, or superseded by a second application, within one year of the date on which the original application was filed.

During the year following the filing of the initial application, there are usually developments, and accordingly what is normally done is that, before or at the end of the year from the filing of the initial application, it is superseded by a subsequent second application. Insofar as the second application describes the same invention as in the initial filing, is considered as though it had been filed on the filing date of the initial application, but, in respect of additional or further subject-matter, is considered as though it had been filed at its actual filing date. More than one follow up application can be filed in that year. The first and any intermediate follow-up applications are usually then simply allowed to lapse.

Because, one year after the initial application has been filed, the commercial prospects are normally better understood, it is possible at that stage to decide where protection should be sought. Under international arrangements, an international patent application can be filed at the end of the year from the initial (original national) filing, “claiming the priority” so that it will be backdated in terms of consideration of the inventiveness of the idea to the filing date of the initial application. Making an international application puts down a “marker” for protection over a very wide geographical range - around 140 countries. Alternatively, one or more national or regional patent applications can be filed at that time if the specific countries or regions of interest have been identified by then.

Because patents are granted only by national or regional patent-granting authorities, an international application, filed as a single application to start with, has eventually to be split up into a number of national or regional patent applications which then each go forward in their respective jurisdiction through a process of examination towards grant.

The international application is, however, searched by a single Patent Office, a so-called International Searching Authority, and that International Searching Authority may also express a view as to whether the definitions of the invention (known as claims) against which the search has been carried out are satisfactory, i.e. whether they correspond to a patentable invention. However, the final decision as to whether the claims of the application are patentable is left to the national or regional offices.

Costs are incurred at each stage of the patenting process. At the very beginning, the principal cost is that of the professional assistance in drafting and settling the description of the invention. There is a modest Patent Office fee if the UK Patent Office is asked to carry out a search.

At the next stage, the filing of an international application is rather more costly. In addition to the necessary professional work to put the papers into the right format, and usually to add in further technical subject-matter that has emerged since the original application was made, the official fees which are due to the international system are substantial, currently around £2500. There may at this stage be other costs to meet, such as the preparation of formally correct drawings which meet the requirements.

The next cost usually incurred is that of reviewing and evaluating what is produced by the international search report, but thereafter there is no material further expenditure until the international application needs to be split up into national and regional applications. This occurs around 2½ years from the initial filing date of the first application, the so-called priority date.

Costs at this stage will vary very substantially depending upon the number and selection of countries or regions in which to continue the patenting process. If, in any selected country or region, the language of the relevant patent-granting authority is not English, a translation needs to be made. Additionally, local attorneys need to be appointed in order to take the matter forward before the local or regional patent-granting authority, so there are then two sets of professional fees to meet in addition to possible translation costs and the official fees which are always charged by the respective granting authorities. Depending on the length of the text (if translations are needed) and the countries or regions selected, the cost will vary considerably but 2 ½ years after the invention was originally made it is usually possible to judge whether the further expenditure necessary to keep the patenting process going is worthwhile.

Thereafter, there will be variable costs depending upon whether applications go effectively straight through to grant, i.e. the regional or national office raises no material objections, or whether an examination report issues alleging defects in the application and requiring arguments and/or amendments to the wording of the application to be undertaken before the objections are satisfied. This can happen more than once. Additionally in some countries, in order to keep an application alive, annual so-called maintenance fees are required., while in others a “final fee” for grant and printing needs to be paid before the Office will actually grant the Patent.

In some jurisdictions, the local patent-granting authority will take no action on an application until an examination fee is paid. This does not necessarily need to be paid at the same time as the entry into the national/regional phase.

Once it has been decided by the patent-granting authority that a patent should be granted, there is a final registration or grant fee levied by some granting authorities and that needs to be paid if the patent is to be secured. After that, sooner or later in all jurisdictions, maintenance fees need to be paid, normally called renewal fees, usually on a yearly basis, in order to keep the granted patent in force.

It should be remembered that there is no obligation, once the patenting process has started, to continue; an application may be voluntarily withdrawn at any time. Applicants should be constantly aware of the need for regular review of all pending applications and granted Patents to ensure that further investment in them is still worthwhile.