Patent filing

Patent filing

Filing: PCT, EPO,EAPO,Nationals

There are various ways to apply for a patent for an invention / utility model. Depending on the purposes and tasks of  clients, obtaining patent protection is associated with applying under various procedures to achieve the maximum result. Each procedure is characterized by its own features, advantages and disadvantages. The objectives of a patent attorney is to build a successful patenting strategy based on the comprehensive knowledge of these procedures.

Now all major Patent Offices support online filing so applications can be submitted quickly and directly. All further correspondence is also carried out electronically, which simplifies and speeds up the application procedure. Also, Patent Offices of different countries are working to integrate with each other in order to improve information exchange and to speed up documents filing.

PCT

As a rule, an international application is filed for the widest possible scope of rights and can combine all information from previous priority applications. Claims are written widely: large ranges of values ​​for compositions formulations, Markush structural formulas for compounds, the large number of independent claims for different objects. Subsequent adjustments to claims may be made before national filing stage based on the analysis of international search results. Such an approach can let to avoid unnecessary narrowing of the claims and to maximize scope of rights for each country.

Among the advantages of the procedure are the following:

– filing of one single application in one of 10 accepted languages ​​(Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish), which simplifies and speeds up drafting of the international application (which can be filed only 12 months from the priority filing date);

– increased period for further national filing from 12 months to 20-31 months from the date of the previous patent application filing. This is extremely important, since additional time is very useful at the stage of determining countries of interest, search for authorized representatives to work in these countries, drafting and adaptation of application materials, and other necessary documents for filing (translation into the national language, power of attorney, etc.);

– qualified specialists provide patent search results on the application, together with written communication that contains a statement about the novelty, inventive step and industrial applicability of the object of the application. The results of the patent search allow foreseeing how the application will be accepted at the national filing examination stage. Moreover, as practice shows many countries do not perform a separate patent search at the time of the substantive examination, but still analyse all documents from the international search report and when write Office Action based on/considering the results of international search. Thus, a good international search report positively sets up an expert and significantly increases the chances of success and patent grant;

– broad list of Contracting States – 152 countries support PCT system; and the list continues to grow.

Regional

Regional procedures can be initiated directly – within 12 months from the priority filing date, or as a national phase following the PCT procedure – within 20-31 months from the priority filing date.

EPO

European procedure provides only registration of inventions, with the following patentability conditions: novelty, inventive step and industrial applicability. Process of European patent registration is characterized by strict requirements for the patent application and a high level of substantive expertise. For each application a qualified patent search is conducted, the results of which are analysed and used by the expert in making the final decision on the application. Also scope of claims should be supported by research data set forth in description. Insufficient amount of supporting information may lead to claims amendment and narrowing of scope of patent rights during negotiations with the expert. It is also important to assess budget issues: the European filing is quite expensive due to the large number of Contracting States.

Therefore, it is important to estimate the chances of the European patent grant. If there were no relevant documents in the prior patent search, and the invention meets all patentability requirements, European filing is reasonable for getting a monopoly for 20 years (25 years for pharmaceuticals) in the countries of your interest. If there are doubts about the patentability of the invention, (as a rule, difficulties arise with the condition of inventive step), it is necessary to analyse the various options for getting protection in Europe: strengthen the application, or alternative national filing for patents for inventions / utility models.

Advantages:

– filing one single application in one of the 3 accepted languages ​​(English, German, French), which simplifies and speeds up the preparation of the European application;

– conducting one examination. If it was established that the application meets the conditions of patentability, this examination decision will be valid for all countries participating in the European Patent Convention;

– obtaining one patent grants patent rights simultaneously in several countries;

– obtaining a European patent is a significant positive argument and can be used in correspondence with an expert from another country to induce a positive decision to register a patent for the same object in that country;

– EPO still expands the list of contracting states. Since 2010 Morocco, Moldova, Tunisia and Cambodia have joined to the validation agreement.

EAPO

Eurasian procedure is very convenient for filing application to the countries of this region: Turkmenistan, Belarus, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Armenia. The procedure only registration of inventions with following conditions for patentability: novelty, inventive step, industrial applicability. There are certain requirements for the drafting of the Eurasian application, therefore the international application must be adapted before the national filing to Eurasia, for example, there are certain features in the formulation of the technical effect. The filing of an application according to all Eurasian requirements provides a great chance for successful registration. Due to the small number of participating countries, to cover the rest of the countries in the region, it is necessary to submit national applications for inventions / utility models.

Benefits:

– filing one single application in Russian or English, which simplifies and speeds up the preparation of the Eurasian application;

– conducting one examination. If it was established that the application meets the conditions of patentability, this examination decision will be valid for all countries participating in the Eurasian Patent Convention;

– obtaining one patent grants patent rights simultaneously in several countries;

– obtaining a Eurasian patent is a positive argument and can be used in correspondence with an expert from another country to induce a positive decision to register a patent for the same object in that country;

– annuity fees can be paid by one transfer directly to the Eurasian Patent Office;

– EAPO provides discounts for official fees for different categories of applicants.

Nationals

National patent filings can be complicated because each country has its own requirements and its own features. So it is impossible to find one universal solution. In order to achieve best results it is necessary to approach the situation in each country individually. In more detail about the features of the national patent procedures you can find in the section “Jurisdictions”.