International Patent Applications

Once a UK patent application has been filed, there's a one year period before steps have to be taken to seek protection in other countries.

 

Applications for patent protection in other countries are processed either using the European Patent Convention (EPC), the Patent Cooperation Treaty (PCT) or applying direct to the country in which you require protection.

 

European Patent Convention

 

The EPC allows a single patent application to be filed in up to 39 member states (Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom).  A patent is then granted in each of the chosen countries according to the countries national law.

 

What are the costs

 

As a rough guide, it currently costs EUR 6025 in ‘official fees only’ (or EUR 6165 if the application is filed on paper) to take a patent application through to the grant stage. This does not include patent agent / attorney fees - which would increase the overall cost.

 

How long does it take

 

The European patent grant procedure takes about three to five years from the date your application is filed. It is made up of two main stages. The first comprises a formalities examination, the preparation of the search report and the preliminary opinion on whether the claimed invention and the application meet the requirements of the EPC. The second involves substantive examination.

 

Patent Convention Treaty

 

A PCT is operated by the WIPO and allows a single patent application to be filed in 157 countries and streamlines the protection process. It imposes only one set of formalities to comply with instead of multiple national formalities and requires only one international search, publication and examination.

 

The PCT system comprises of two stages, an international phase and a national or regional phase before designated offices. The international phase starts the process and similar to filing in the UK consists of filing the application, undertaking a search, the publication of the patent, preliminary examination etc. Afterwards, the application progresses to the national or regional phase, where it is converted into individual foreign patent applications in each of the countries where patent protection is to be sought.

 

The decision to grant a patent is made by the national or regional offices during the national phase. The national phase is usually applied at 30 months (some states are 20 months) with translations and fees being payable at this point.

 

What are the costs

 

It currently costs approximately £4000 in ‘official fees’ to file a minimum PCT application (e.g, having a total of 50 pages). Patent agent / attorney fees would increase the overall cost e.g. £5500-£8000.

 

The official fee cost to file an optional Demand (excluding the costs of filing any arguments and/or amendments in reply to the WOISA), is approximately £2200.

 

The cost of entering the National/Regional Phase in a particular country/region is roughly the same as the cost of filing a "direct" patent application in that country/region. The official fee for each country/region ranges from £1000-£5000. This does not include patent agent / attorney fees - which would increase the overall cost.

 

How long does it take

 

The PCT grant procedure takes about five to seven years from the date your application is filed.