Is there a European patent?
A European patent (or EP patent) refers to a patent granted by the European Patent Office (EPO). An EP patent is valid in up to 38 European countries that follow European patent convention (EPC).
The advantage of applying for an EP patent is that an applicant does not need to incur patent examination and patent prosecution costs in every single European country. Besides, this procedure is also quite efficient for the applicant when patent grant is desired in several EP countries.
How to apply for a European patent?
A European patent can be applied by filing a patent application with the EPO. This patent application needs to be comply with the EPC rules and should accompany the relevant documents specified under EPC.
What is the European patent filing process?
Once the EP patent application is filed with EPO, EPO performs a formal and substantive examination. If the EPO raises any objections on the patent application, the applicant is given an opportunity to resolve them during the prosecution phase of the EP patent application. Once all objections are overcome, the EPO may grant the patent application. Till this stage, the process happens only with EPO without the involvement of any other jurisdiction.
However, once EPO grants the patent, the applicant can validate the EP patent in specific European countries by filing applicable translation copies and paying respective country-specific official costs. This process ensures that the EP patent becomes enforceable in the countries where the patent is validated.
International patent filing strategies with respect to PCT and Paris Convention
There are several international filing strategies that can be followed if the applicant wants to file the EP patent in other countries as well.
In case the applicant does not intend to file the patent application in any other country, they can simply file the patent application with EPO as the priority application (i.e., having the earliest filing date) and continue the EP patent process.
However, if the applicant does intend to file the application in other (e.g. non-EP) jurisdictions as well, there are several possible scenarios depending on the jurisdiction from which priority needs to be claimed and the business interests of the applicant. The Applicant can use Paris Convention and PCT to their advantage for foreign filing.
Paris convention filing strategies
Paris convention is a convention with 179 countries as its members. Paris convention allows an application filed in a member country to claim priority from another member country, if the later application is filed within 12 months of the earlier filed application.
For example, consider a scenario that India and US are both Paris convention members and the earliest application is filed in India as a priority country. The later application filed in US can then claim priority from the Indian priority date as long as the US application is filed within 12 months of the Indian application (priority date). This principle can similarly be applied to several member countries as depicted in scenario 1 below.
The applicant can file the EP patent application with EPO as a priority application and establish a priority date (i.e., date of earliest filing). According to Paris convention, the applicant can then file counterpart applications in all other desired countries within 12 months if these countries are members to the Paris convention. All such patent applications would claim priority from the earlier-filed EP patent application.
Another scenario is that the applicant can enter Europe after filing the patent application in another Paris convention country. This means that the EP patent application can claim priority from the priority date if the EP patent application is filed within 12 months from the priority date. E.g. An EP application filed after say, 11 months of filing an Indian patent application can claim priority from the Indian patent application.
Patent Cooperation Treaty (PCT) filing strategies
Patent Cooperation Treaty is an international treaty having 156 countries as PCT member states. Like Paris convention, PCT also allows an applicant to claim priority from another member state, where the application was earlier filed. However, an added benefit of filing an application via the PCT route is that it delays the costs by 18-19 months for national phase filing in specific countries.
The prerequisite, however, is that either the PCT filing should be done as the earliest filing or should be done within 12 months from the earliest filing date (priority date). Once the PCT application is filed, the applicant can enter national phase within 30-31 months from the priority date dependent on the target country in the national phase. This gives the applicant an additional 18-19 months of time to gather funds, improve the claimed subject matter and even to effectively decide whether to continue the future filings in national phase.
In this scenario, the applicant can have the earliest filing done as an EP patent filing and then file a PCT application within 12 months from the priority date (EP filing date). The applicant can then enter national phase within 30-31 months from the EP filing date, in various PCT member states (e.g., US, India, Australia, and so on).
Another scenario is that the applicant can claim priority from a non-European country and enter Europe at a later stage, i.e., after filing the PCT application. Here, the PCT application would still have to be filed within 12 months from the priority date and the European application (national phase) would then, have to be filed within 31 months from the priority date.
A third possible scenario is that the PCT application itself is filed as a priority application without any preceding application filing. The rule stays the same. Since the national phase should be entered within 30 (or 31) months from the priority date, the EP application should be filed within 30 months from the PCT filing date (priority date).
Hope this article was successful in explaining the intricacies of international filing strategies. Do share this article if you found it useful.