When you think of filing patents, you also think of the coverage provided and the costs of patents. It’s only logical to presume that for cost effectiveness, it would be great if you could file a worldwide patent and get a patent granted worldwide so you won’t have to file it in each country separately.
But, is there something called a worldwide patent or a global patent that gives you protection across the globe with a single patent application?
The answer is No. There is no such provision in the patent law that allows you to file a single patent and get coverage across all the countries in the world. A patent is a territorial right, which means that the coverage a patent provides is confined to the jurisdiction/country the patent is filed in. This means that if you are a patent owner, you can exclude others from exploiting your patented invention only in the country where you filed a patent.
So, do you have to file your patent application separately in every country always?
Not exactly. There are a couple of scenarios below that you, as an inventor or an organisation, can follow to get coverage in multiple countries in parts of the world.
1. Paris cooperation treaty (PCT) – (a.k.a International patent application)
PCT is a global treaty among several countries that allows you to file one patent application as a PCT patent application (also called International patent filing/application) and then, individually file applications in over 150 countries that are members to PCT (also called PCT contracting states).
If you wonder what are international patents or how to file international patents, it refers to a PCT patent filing (a.k.a international patent filing) followed by filing in your desired countries (called national phase of PCT). If you want to calculate the costs, here is an international patent cost calculator that can get you decent cost estimates across the world (Disclaimer: I don’t get paid from this website)
You may wonder if you still have to file your patent application individually in countries after filing PCT patent application, then what is the benefit of filing a PCT patent application?
Well, PCT has some interesting benefits:
1. It delays costs by about 18-19 months (depending on the country you file in) and thus, allows you more time on developing a patent strategy and securing funds. This can be specially useful for startups who are trying to secure funds or large patent filers who can buy additional time to make a more informed decision on whether to proceed with or abandon a patent application.
2. It provides you an International Search Report and a Written Opinion on your invention before you actually go ahead and file individually in countries (a.k.a PCT national phase). This can be useful in discovering any issues with your invention that you were not aware of earlier and rectifying them before the PCT national phase begins. This can save huge costs.
3. No matter whenever you file in any member country till 30/31 months from the PCT filing date, you can still take priority from the PCT filing date if it’s the earliest filing date. Taking priority is also possible with Paris convention but Paris convention does not allow a 31-month time span to take priority that PCT does. With Paris Convention, you can need to file in all countries following the Paris Convention within 12 months from the earliest filing date. It does not leverage the 31-month period like PCT does.
However, one caveat with PCT is that a PCT filed patent application does not get converted into a granted patent. You would need to file it in one or more PCT member countries in the PCT national phase filing to secure a patent grant in that country.
2. European Patent Convention (EPC)
If Europe is your desired area of filing your patent application, EPC is quite a cost-effective way to file in European countries.
You can file your patent application with the European Patent Office (EPO) and designate multiple countries from the 38 member countries of EPC. Once your patent application is allowed by the European Patent Office, you need to indicate either some or all of the designated countries as the countries to be validated. Validation means you would get patent coverage in these countries subject to necessary fee payments and grant processes.
The advantage of this strategy is that your patent application gets prosecuted only before the EPO instead of getting prosecuted in each European country (designated countries) individually, which can save huge costs. You only have to pay the grant-related/translation fee in multiple countries instead of paying the entire prosecution costs in several countries.
You can also file your patent application with EPO after filing a PCT patent application. The priority can be taken from the PCT filing date in this case.
While there is no such thing as an International/worldwide patent or a global patent, these are some of the conventions that extend the patent coverage to multiple countries. Depending on the business requirements and IP strategy, these conventions can be selected for effective patent filing.
Hopefully, this article was useful in clearing the concepts regarding worldwide or international patents. If you liked this article, please subscribe to this blog to get notified about more patent-related articles.