International Patents

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 using the :

European Patent Convention (EPC) - Europe
Patent Cooperation Treaty (PCT) - Worldwide

or applying direct to the country that Patent protection is required.

European Patent Convention

The European Patent Convention (EPC) is an international treaty that provides a unified procedure for granting European patents. It was signed in 1973 and came into effect in 1977, creating the European Patent Organisation (EPO), which administers the Patent application process across its member states.

Key features of the European Patent Convention

Unified Patent Application Process: Applicants can submit a single Patent application to the EPO, which can result in a patent being granted across multiple European countries that are members of the convention.
EPO Jurisdiction: The EPO reviews applications, conducts examinations, and grants Patents. Once granted, the Patent becomes a "bundle" of national Patents in the designated member states.

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).

Opposition and Appeal

After a patent is granted, third parties can file an opposition within nine months. Additionally, applicants and opponents can appeal decisions made by the EPO's examining and opposition divisions.

Language Requirements

Applications can be filed in English, French, or German, the official languages of the EPO.

European Patent Convention Costs

It currently costs EUR 6025 in ‘official fees’ (or EUR 6165 if the application is filed on paper) to take a Patent application through to the grant stage. However this does not include Patent Attorney / Agent 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 the application is filed. It is made up of two main stages. The first stage is the 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 stage involves a substantive examination.

Patent Convention Treaty

The Patent Cooperation Treaty (PCT) is an international treaty that allows inventors and companies to seek patent protection for their inventions in multiple countries simultaneously by filing a single international patent application. Managed by the World Intellectual Property Organization (WIPO), the PCT streamlines the patent process and provides a more efficient and cost-effective path to obtaining patents in different jurisdictions.

Key aspects of a PCT

Single Application : Through the PCT, an applicant can file a single international application, which has the same legal effect as a national application filed in each designated member country.
International Phase : The process starts with the International Application (often filed in the applicant’s home country or directly at WIPO). The application undergoes a search by an International Searching Authority (ISA), which provides an International Search Report (ISR) and a written opinion regarding the invention's patentability. Optionally, the applicant may request an International Preliminary Examination to further assess the patentability of the invention.
National Phase : After the international phase, the applicant must enter the national phase in each country or region where patent protection is sought. This phase usually starts 30 months from the priority date (the date of the first filing, typically a national or regional application that precedes the PCT application).

Advantages of a PCT

Delays costs: The PCT allows applicants to defer the high costs associated with filing individual national patents (translations, legal fees, etc.) for up to 30 months.
Increased time for strategy : Applicants have more time to assess the commercial potential of their inventions before making significant investments in patent filings across multiple countries.
Comprehensive search and examination : The international search and optional preliminary examination provide valuable insights into patentability before committing to national filings.

Patent Convention Treaty Costs

It currently costs approximately £4000 in ‘official fees’ to file a minimum PCT application (e.g, having a total of 50 pages). However this does not include Patent Attorney / Agent fees, which would increase the overall cost.

The official fee 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 fees for each country/region range from £1000-£5000. However this does not include Patent Attorney / Agent fees, which would increase the overall cost.

How long does it take

The Patent Cooperation Treaty (PCT) process typically takes about 30 to 31 months from the initial filing date to enter into the National Phase (when the applicant chooses specific countries for patent protection).

Here’s a basic timeline :

Filing : The international PCT application is filed, which can either be done directly through the PCT or based on a prior national Patent application within 12 months.
International Search Report (ISR) : Within 16 months from the priority date, a search is conducted to check for existing Patents that might affect the patentability of the invention.
Optional International Preliminary Examination (IPE) : After the ISR, an optional IPE can be requested to further evaluate the patentability of the invention. This can add more time, but is useful for determining patent viability in different countries.
Entering National Phase : Around 30 to 31 months from the priority date, the applicant must enter the national phase by submitting translations and paying national fees in the chosen countries where Patent protection is desired.

Each national Patent Office then continues with its own examination and grant procedures, which can vary in duration depending on the country.