Best Countries for Patenting

There is no worldwide or international patent that cover all countries of the world at the same time. The first patent must be obtained in the country, of which the applicant is a resident. The first foreign country for patenting should be the one in which the product is supposed to be manufactured, if that country is not Russia.

From the very beginning, it should be emphasized that patent protection is based on the territoriality principle. Patents are issued in accordance with the requirements of the national legislation and are valid only in the country in which it is obtained. It is also necessary to take into account that in some countries, in accordance with national legislation, it is forbidden to obtain patents in foreign countries without obtaining a patent, or rather, without filing an application in the country of residence. This is due to the fact that all technical solutions are tested for secrecy and can be classified in the interests of the state.

Thus, for example in Russia, according to the Article 1395 of the Russian Civil Code of the Russian Federation (hereinafter the Civil Code), an application for a patent for an invention or utility model created in the Russian Federation may be filed in a foreign country or with an international organization after expiration of six months from the date of filing of the respective application with the Federal Executive Authority on Intellectual Property if the applicant has not been notified within the abovementioned term that the application contains information considered as the state secret.

The application for an invention or utility model may be filed prior to the said time limit but only after the verification of the existence of the information constituting state secret in the application, which has to be requested by the applicant. The procedure for such verification shall be established by the national government. There is an administrative liability for violation of this rule.[1]

So, the first patent must be obtained in the country of the applicant’s residence. As it was defined above, the patent must be obtained in each country separately. The first patent applicant must obtain it in its country, but it is still not clear, in which particular countries it better to obtain a patent.

Since a patent certifies the exclusive right to the patented solution, namely, the right to allow and prohibit the use of the patented solution by third parties in the territory where the patent is obtained, it follows that a patent should be obtained in the countries where the applicant wants to prohibit or allow the use of the patented product. At the same time, it should be noted that it is not possible to prohibit the use of the solution all over the world, due to the high financial cost of patenting. Obtaining a patent in 100 countries is rather expensive. Some applicants, however, can afford patenting in multiple countries, but hardly anyone will agree to spend tens of millions to get a patent in 100 countries. That is unnecessary. Common sense and understanding of what it is all for should prevail in all actions.

So, the first foreign country for patenting should be the one where the manufacturing of the product is supposed to take place, if that country is different from Russia. For example, the applicant is planning to set up manufacturing in China, so it needs to get the patent in China.

Then, for example, the commercialization of the solution will be carried out in the US, Europe and Japan, so in these countries, the applicant also needs to take care of protecting its product and obtaining exclusive rights to it.

The applicant should mind the possibility of obtaining a regional patent, which will be valid in several countries at the same time. For example, there is a need and opportunity to sell a patented product in several CIS countries such as Kazakhstan, Belarus and Armenia. In such a case, it would be best to try to obtain a single Eurasian patent which covers 8 countries of the ex-USSR, including but not limited to Russia, Belarus, Kazakhstan and Armenia.

The application shall be filed in Russian, then a substantive examination is carried out and a decision is rendered. Next, the patent has to be maintained by paying the fees. The fees are paid to the Eurasian Patent Organization (EAPO). The right holder can maintain the patent in one country, in several countries of interest or in all eight. The amount of the maintenance fee depends on the number of countries. The patent is valid for 20 years, and when it expires, it goes into the public domain, i.e., any interested person can use it for economic benefit, without any consequences. Submission of one Eurasian application will significantly reduce the cost of patenting, in comparison with the submission of several applications to the selected states.

Special attention should be paid to obtaining protection in Europe. Thus, in Europe it is possible to obtain a regional patent by filing an application at the European Patent Office (EPO), which includes 38 countries of the European Union (EU). One application is filed in one of the three languages: English, German or French, which is subjected to an international search and examination on the merits. After the decision to grant the patent, the claims are translated into two other languages different from the language of the application, the patent fee is paid and then the patent validation procedure is completed.

To date, the peculiarity of the procedure for obtaining a European patent is that the obtained protection document does not provide final protection in most member states of the European Patent Convention (EPC). In order to complete the procedure for patenting, it is necessary to pass the so-called validation, i.e., the provision to the national patent offices of translations of the application materials (in whole or in parts, depending on the country) into the relevant national language. Maintenance of the European patent, all other legally significant actions, as well as judicial proceedings take place in each of the countries of action selected by the applicant, according to the national procedure.

Thus, filing an application to the EPO is expedient in case of commercialization of the product in three or more countries of the EU. If the product is planned to be sold in a couple of EU countries, it is more appropriate to file national applications in the selected countries. This procedure for obtaining national patents will significantly reduce the cost of patenting.

In conclusion, we would like to add that the procedure for obtaining a patent in foreign countries is not only expensive, but also time consuming. There are a number of foreign countries, where the term of consideration of applications is 8-10 years, which is half the life of a patent, given the term of a patent is 20 years. Such countries include, but are not limited to: Egypt, UAE, Saudi Arabia, Mexico, Brazil and Argentina. This should not be forgotten and should be taken into account when choosing one or another country for patenting.

[1] ConsultantPlus Legal Reference Database