Patenting abroad

Patenting abroad

There are several ways to obtain patent protection at international level. There is no international protection system for utility models.

Through the Patent Cooperation Treaty (PCT), it is possible to file a single international application for protection of inventions, valid in any or all of the more than 140 member states of the treaty, as desired. It is important to note that although only one patent application is filed, it is examined separately in each country and the national filing fees are also paid separately. All documentation must be translated into the language of the country of destination.

Under the rules of the European Patent Convention (EPC), to apply for a European Patent (EP), a request must be filed at the European Patent Office (EPO). It is important to note that the European patent is not automatically valid in all countries. After the grant of a European patent, the patent proprietor must submit translations to the patent offices of the selected countries and pay additional fees. The Office of the chosen country then publishes a separate patent grant notification, which is the basis for patent protection in that country.

To apply for a European patent with unitary effect (Unitary Patent), a request must be filed with the EPO. This is based on a European patent granted by the EPO under the EPC rules. Once the European patent has been granted, the patent proprietor can apply for unitary effect, thereby obtaining a unitary patent which provides unitary patent protection in up to 25 EU Member States. NB! This system will enter into force in the second half of 2022.


How to protect your invention abroad?

It is possible to patent an invention abroad either individually in each selected country or simultaneously in a group of countries using the possibilities offered by international agreements. When filing a patent application separately with the patent office of each foreign country, the patent application must be drafted and filed in accordance with the law of that country. The main international agreements for the external patenting of inventions are the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC).

How can you protect an invention at European level?

To obtain pan-European protection, European patent should be registered at the European Patent Office (EPO).

How to protect an invention worldwide?

To obtain international protection for an invention, an international application has to be filed either at the national patent office of a member state or at the WIPO International Bureau.

Is there any time limit on patenting abroad?

Due to the requirement of worldwide novelty of an invention, an inventor should file his patent applications in all the countries where he wishes to obtain a patent on the same day. As this is not possible in practice, there is an option to do so within 12 months of the first application and to claim priority from the first application.

How not to be late with patenting?

  • The development of the solution should be kept undisclosed until the need to patent it is clear;
  • An appropriate contract(s) should be entered with the inventor(s) of the invention(s) (before starting to develop the solution);
  • Disclosing and publishing the technical solution before filing a patent application should be avoided, as this can jeopardise the novelty of the invention;
  • A strategy should be determined for the provisional exploitation of the invention.

When not to patent?

  • When the invention does not have a sufficient advantage over other solutions (lack of market, uncompetitive price, etc.);
  • When there is no business plan for exploitation of the invention;
  • When there are no financial resources for patenting.