30 March 2012

How to file an international application for a patent?

Proprietary designs - are not rarity for the Russian industrial enterprises. Today many companies concerned with the issue how to register in a correct way one's invention and to obtain a patent thereto, that is effective not only in Russia but also outside it. It is not so difficult to do as it may seem at first sight.

There is a good deal of ways of foreign patenting, but the creators of these or those utility models and technical solutions, try, as a rule, to get an international patent. For all that the main mistake consists in wrong construal of this notion. No common international patent that would be effective in the territory of all the world countries exists merely as of today as such, – any documents obtained by the right holders are effective just in the territory of those countries where they are obtained, except for the Eurasian and European patent. Nevertheless, there exists the way making it possible to be the first person in patenting one' invention or solution in many countries at once.

What is meant here is an international application for a patent. Such application is filed according to a Patent Cooperation Treaty (PCT). Is is not a patent as many peple think but a document certifying an authorship, providing a right holder with a priority for patents getting in different countries.

Two ways of an international application filing are possible: first of all either a Russian application for a patent granting in RF is filed that subsequently is transferred to the international registration or an international application is filed that subsequently is transferred in a mandatory manner to patenting in RF. In theoretical terms everything seems to be rather simple, but in practice an applicant comes across difficulties as early as before an application filing for a patent. So, according to clause 1 of article 1395 of the Civil Code of RF, applications for inventions and utility models created in Russia can be filed to a foreign patent office only after verification for data availability that represent a state secret. And only as soon as an applicant makes sure that his/her invention or utility model does not contain data representing a state secret, he/she may file an international application to the World Intellectual Property Organization (WIPO) through the Russian patent office (Rospatent). Also worth noting is that an applicant will need to pay a state fee for an international application filing. A sum depends on the fact who is an applicant (a natural person or a legal entity) of a quantity of features in a formula and text of description, ranges from 300 to 2,500 EUR. Then, within 30 months starting from a priority of an initial application it is necessary to file national applications to each of the countries as chosen by you. In the majority of the countries it is made through a local patent attorney. The costs amount to from 1,000 EUR and higher. A good deal of money is spent to your application translation to foreign languages. In each of the governments a filed application will be considered in accordance with the current legislation, that's why it is worth noting that in different cases different criteria can be applied to solve an issue whether a requested invention is worthy of being patented or not. It is naturally beyond an applicant's power to study the national legislations and to take into account all the nuances – this is precisely why in this case it will be more reasonable to address to an expert organization cooperating with the patent offices of other countries. The specialists can render assistance in a document obtaining what will save time and funds of a right holder. Nevertheless, even if you make up your mind to get a patent on your own, it is necessary to pay attention to the fact what exceptions from the legal protection are stipulated by the law of a country you are interested in. So, in many regions one can't get a patent for articles of food, therapeutic pharmaceutical agents and methods of treatment, fissile materials and so on, also worth noting is that the PCT procedure is effective only in relation to inventions.

Such an item as a utility model is patented only directly through the national offices, because the utility models are registered in a very limited number of countries.

We have already been concerned earlier with the contents of these notions, but it won't be excessive to repeat it one more time. An invention  –  is some new technical solution that raises the existing level of machines. The legislation lodges several requirements to patentable inventions: a technical solution shall be new; not known from the machines' level and shall be industrially applicable.

Utility model –  is a technical solution relating to any device that is also applicable in life. The main requirement to a utility model is its world-wide novelty. That is, by analogy with a definition of an invention, one can note that a utility model meets this criterion in case if as at the time of an application filing it was not known from the level of the machines.

If an applicant wants to patent a design invention, it is necessary for him/her to file separate applications to each country as chosen by him/her.

There are other ways to obtain a foreign patent. For example, it is possible to obtain a European patent that is effective in the countries of the European Union, through the European patent office. One can also obtain an Eurasian patent (that is effective the CIS countries except for Ukraine).

In each individually taken case the different variants of the international patenting are possible, and one should choose an optimal one, catering to a list of countries and tasks a right holder sets itself. Today there are companies in the market that are ready to assist to applicants in an international patent obtaining. When addressing to a patent office of our country, right holders often make mistakes due to which they subsequently have to stand upon their rights at court. A situation with the international patents is much worse – anyone can become complicated and omit taking into account any nuance. A piece of advice of a specialist who has been for years engaged in the international applications filing, will help you to save time and money.

The original article was published in journal "Na stol rukovoditelu" in 2012, release No.17 (http://www.nastol.ru/Go/ViewArticle?id=4110)

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney