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How to obtain a patent abroad?

05 Aug 2019 (updated at 04 Jun 2021)
Head of Department / Patent Attorney / Mechanics Engineer

This article will focus on obtaining a patent by a Russian individual or legal entity for an invention, a utility model abroad. Patenting abroad is obtaining a patent for an invention, a utility model abroad, for which an application has already been filed or a patent has been obtained in the own country or an applicant’s country, i.e. the Russian Federation. The availability of such institution is due to the fact that currently there is no international worldwide unified patent that provides the exclusive right to a patented technical solution all over the world simultaneously. According to a general rule, the patent is in effect only on the territory of the country, where it is granted (the exception are the regional patents that are in effect on the territories of the member countries to the relevant international treaties, for example, a Eurasian patent within the member countries to the Eurasian Patent Convention or a European patent within the member countries to the European Patent Convention). While carrying out patenting abroad, the process of patenting in each state begins again and it is regulated by the national legislation. To obtain a patent in a foreign state, it is necessary to file an application with the patent office of this state in accordance with its national legislation.

Patenting inventions abroad is carried out first of all to ensure the economic interests of the applicant/right holder abroad, for example, in the countries of the intended export, the possible location of the manufacture, as well as to defend the inventions exhibited at international exhibitions, etc.

Patenting an invention in the foreign state, as a rule, takes place after filing an application with the national office. According to Article 1395 of the Code of the Russian Federation, the application for the grant of a patent for the invention or the utility model created in the Russian Federation, may be filed in a foreign state or to an international organization after six months from the date of filing the corresponding application with the Federal Executive Authority on Intellectual Property, if the applicant is not notified within the indicated period that the application contains the information constituting a state secret. The application for an invention or a utility model may be filed earlier than the indicated period, but after carrying out, at the request of the applicant, a check for the availability in the application of the information constituting a state secret. The procedure for carrying out such check shall be established by the Government of the Russian Federation.

In addition, patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention the invention or the utility model created in the Russian Federation is allowed without prior filing the correspondent application with the Federal Executive Authority on Intellectual Property, if the application under the Patent Cooperation Treaty (an international application), is filed with the Federal Executive Authority on Intellectual Property as a receiving office and the Russian Federation is indicated in it as the state, in which the applicant intends to obtain a patent and the Eurasian application is filed through the Federal Executive Authority on Intellectual Property.

Executing the application to obtain a patent abroad is a complex process. Applicants often turn to patent attorneys – the professionals, who carry out filing an application to obtain a patent.

It is necessary to note that when obtaining a patent in a foreign state, the rule of priority established by the Paris Convention for the Protection of Industrial Property of 1883 should be observed.

The Convention establishes the rule of priority under the Paris Convention, which is as follows:

Any person, who has duly filed an application for a patent for an invention, a utility model, an industrial design or a trademark in one of the member countries shall enjoy the right of priority to file the application in other countries within 12 months for patents for inventions and utility models and within 6 months for industrial designs and trademarks. Each filing an application that has the effect of properly executed national filing an application in accordance with the national legislation of each country shall be recognized as a basis for the emergence of the right of priority. Properly executed national filing an application shall be understood as any filing that is sufficient to establish the date of filing the application in the correspondent country. Due to this, subsequent filing an application in one of the other member countries before the expiration of the indicated period can not be recognized void, in particular, on the basis of another filing an application, the publication of the invention or its use, etc. Any person wishing to take advantage of priority on the basis of the previous application is obliged to file a declaration with the indication of the date of filing and the country, where it has been filed.

Thus, the rule of priority under the Paris Convention consists in that when two applications for the same invention are filed simultaneously, the applicant, who has first filed the application with his national office, shall enjoy priority.

The establishment of the rule of priority is explained by the fact that the principle that the patent shall be obtained by the person, who has first filed an application is usually applied with respect to the subject matters of industrial property. The Convention changes this rule with respect to those subject matters for which the patent has already been obtained in another member state.

The Convention also includes the rule of priority of exhibition, which implies that the member countries shall provide priority protection of the patentable inventions, the utility models, the industrial designs as well as the trademarks for the products exhibited at the official or officially recognized international exhibitions organized on the territory of one of these countries. In this case, when filing an application for a patent next time, the period of the right of priority shall be calculated since the date of placing the product at the exhibition. That is, in case of exhibiting any new product, new industrial design or other subject matter at an international exhibition, the inventor enjoys the right of priority to obtain a protection document in other states. To prove the identity of the exhibited subject matter and the date of its placement at the exhibition, the necessary documents may be requested.

There is a possibility of obtaining a patent in a foreign country in accordance with the international treaties in the field of intellectual property.

The norms on an international application and an international search are contained in the Patent Cooperation Treaty of 1970. (The Washington Treaty or the PCT). The Russian Federation is a member to this Treaty. Currently, the member countries of the above said Treaty are 152 countries. Consequently, the applicant has an opportunity to file an application and to obtain a patent in any of these countries.

The application is called “international” because the applicant indicates in it the states, where he wants to obtain protection of his invention (patent). The international application must contain a declaration, a description of the invention, one or more claims of the claims, one or more drawings (if necessary) and an abstract.

Any international application that complies with the requirements enumerated in the Treaty and in respect of which the date of international filing is established shall have the effect of properly executed national filing an application in each indicated state since the date of international filing, which shall be considered as the date of actual filing in each indicated state.

The international application shall be filed with the national patent office of the member state to the Treaty, which shall transfer it to the office entitled to an international search and one copy shall be transferred to the International Bureau of the WIPO for registration.

The international search according to the PCT Treaty shall be carried out in respect of each international application. The purpose of the international search is to identify the appropriate state of art, the definition of the novelty and inventive step of the scientific and technical achievement. The international search is carried out on the basis of the claims taking into account the description of the invention and the drawings (if any). Not all patent offices enjoy the right to carry out an international search. We shall not enumerate all the offices and organizations that are authorized to act as an international searching authority, but we shall only note that the Russian patent office is such one. The international search facilitates in future carrying out an examination in the national offices of the countries, where the application for a patent is being filed to.

The results of the consideration of the application in the form of an international search report and a written communication from the international searching authority shall be forwarded to the applicant and the International Bureau of the WIPO. The application and the search report shall be sent then to the states, where the patent is sought. The further procedure for obtaining a patent shall be determined by the national legislation.

The PCT Treaty has not created an international patent; it only allowed filing one international application instead of a plurality of ones to different countries. The result of filing an international application is obtaining an individual patent in each country indicated in the application. The rights of a patent holder in each state are determined by the national legislation, according to which the applicant must file (transfer) his application to the selected foreign national office within 30-31 months from the date of filing the first application. The above said period depends on a particular country. It should be noted specially that the applicant himself does not have the right to file an application directly to the foreign state, which is of interest to him, but he must use the services of a patent attorney, who is authorized to run business with foreign applicants. Zuykov and Partners provides a whole range of the services for filing applications and maintaining the paperwork around the world, and the company will always be happy to help you to obtain a patent in the country, which is of interest to you.

Head of Department / Patent Attorney / Mechanics Engineer