Ways to Obtain a Patent Abroad and Information About Patent Offices

Legal Standards

According to Article 1395, paragraph 1 of the Civil Code of the Russian Federation "Patent Protection for Inventions or Utility Models in Foreign Countries and International Organizations," an application for a patent for an invention or utility model created in Russia can be filed in a foreign country or international organization six months after submitting the corresponding application to the federal executive body for intellectual property. This is unless the applicant is notified within this period that the application contains information constituting a state secret. Moreover, an application with conventional priority can be filed in a foreign country or international organization no later than 12 months from the priority date.

It is important to note that violating the above article can result in penalties for the applicant. According to Article 7.28 of the Administrative Code of the Russian Federation, violating the established procedure for patenting industrial property objects in foreign countries can result in administrative fines ranging from one thousand to two thousand rubles for individuals and fifty thousand to eighty thousand rubles for legal entities.

This legislation is similarly enforced in all countries. Applications for inventions and utility models are territorially protected, meaning they are only protected in the countries where they are registered. There is no such thing as an international or global patent covering all countries, as some applicants mistakenly believe.

Therefore, in order to protect his invention or utility model abroad, the applicant must file an application directly in the foreign country of interest after filing the initial application in the country of which he is a citizen (for individuals) or in which he is registered (for legal entities), including through regional/international systems of which the country is a member.

Submitting an application to the specified regional/international systems is advisable if there is interest in several countries at the same time, as this will save paperwork costs and reduce the time for its consideration.

Ways to File Patent Applications Abroad

There are three ways to apply abroad:

1. National (submitting an application to each individual country).
2. International (filing an “international application” under the PCT procedure (Patent Cooperation Treaty) through the World Intellectual Property Organization with its subsequent transfer to the national or regional offices of interest).
3. Regional (submitting an application through a regional system that unites a group of countries on a regional basis).

Let's take a closer look at each of these methods.

National application

An application for a patent for an invention or utility model is filed with the official patent office of a country through a representative - a registered patent attorney in that country.

The application process consists of the following stages: formal examination, substantive examination of the application, which includes conducting a search, research, review of prior art documents, sending search results and queries (if necessary), processing the applicant’s responses to received queries, making a decision, registration patent. The duration of the paperwork varies depending on the countries chosen by the applicant, for example, in the USA, China the paperwork process can last for 2.5-3 years, in India the paperwork can last up to 5 years, and in Egypt and Brazil - up to 10 years.

In some countries, once an application is filed, annual fees are paid to maintain the application, and payment periods also vary from country to country.

International Application

The process of reviewing international applications is carried out by WIPO based in Geneva.

The Patent Cooperation Treaty (PCT) allows you to seek patent protection for an invention simultaneously in each of many countries by filing a single application. Such an application may be filed by a national of any PCT Contracting State or a person resident in such a State. Typically, it may be filed with the national patent office of the Contracting State of which the applicant is a national or in which he resides, or, at the option of the applicant, directly with WIPO.

As of today, the International Patent and Trademark Office includes more than 150 countries.

After submitting an application to the international office, based on the results of its consideration, an international search report is provided with the results of research around the world of prior art. In this way, applicants receive a preliminary idea of the patentability of their inventions. Next, they will have to decide whether to transfer this application within 30/31 months from the priority date, depending on the country, to the states of their choice (i.e. the international application moves to the national stage). However, the number of countries where an application is filed at the national stage may be reduced or increased in accordance with the results of the international search report. For example, if during the inspection the applicant’s technical solution is recognized as not meeting the patentability condition of “inventive step,” then he has the opportunity to file an application only in those countries where there is such a patentable object as a utility model, which is subject to only the patentability condition of world "novelty".

Regional Application

This regional patent system is designed to shorten registration time, reduce the cost of obtaining a patent compared to the national system, and simplify the procedure as a whole, since the examination is carried out only once, and its results are recognized immediately in a number of countries. There is no need for translation into the official languages of the participating countries. It is worth noting that a patent in this case is issued only for an invention.

There are several regional patent offices around the world.

• European Patent Office (EPO)

A European patent is issued by the European Patent Office (EPO). The application is submitted directly to the EPO, which is located in Germany and unites 38 EU member states: Austria, Albania, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, Great Britain, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Lithuania, Liechtenstein, Luxembourg, Latvia, Monaco, the former Yugoslav Republic of Macedonia, Malta, the Netherlands, Norway, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia, San Marino, including Turkey.

At the same time, 12 of the 38 countries listed do not accept a direct application at the national stage, including a translation of an international application; an application can only be submitted to them through the European Patent Office.

• Eurasian Patent Office (EAPO)

A Eurasian patent for an invention is issued by the Eurasian Patent Office (EAPO).

EAPO is located in Russia, in Moscow, and includes 8 countries: Turkmenistan, the Republic of Belarus, the Republic of Tajikistan, the Russian Federation, the Republic of Kazakhstan, the Azerbaijan Republic, the Kyrgyz Republic, and the Republic of Armenia.

A Eurasian patent application makes it possible to obtain a patent protecting an invention in all designated countries that are members of the EAPO, subject to payment of annual maintenance fees that must be paid in each country where protection is required. A unified process for substantive examination of an application is also convenient, the results of which apply to all 8 countries.

• African Regional Intellectual Rights Organization (APIRO)

The application is submitted to the African Regional Intellectual Rights Organization based in Zimbabwe.

ARIPO currently includes 22 countries: Botswana, Gambia, Ghana, Zambia, Zimbabwe, Cape Verde, Kenya, Lesotho, Liberia, Mauritius, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Seychelles Islands, Somalia, Sudan, Tanzania, Uganda, Eswatini. Of these countries, only when crossing the PCT for Eswatini, it is necessary to apply for ARIPO, and Somalia and Mauritius are not members of the PCT.

When filing an application through ARIPO, there is also a single process for checking the invention for compliance with the conditions of patentability. Once a patent is granted, it is considered granted in all member countries, subject to payment of annual maintenance fees in the countries in which protection is sought.

• African Intellectual Rights Organization (AOIP)

African Intellectual Rights Organization is based in Cameroon and includes 17 states: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Cote d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal, Togo, Comoros. All member countries are automatically included in the application, that is, it is not possible to indicate individual specific states.

For all of these 17 countries, filing an application with the AOIP is a mandatory step when translating an international PCT application.

By analogy with ARIPO, the AOIP carries out a unified process for checking an invention for compliance with the conditions of patentability. A patent is valid simultaneously in all countries, subject to payment of annual fees for maintaining the patent in force in each individual country.

• Gulf Cooperation Council

Gulf Cooperation Council (GCC) is based in Saudi Arabia and is a regional union of 6 Arab states on the Arabian Peninsula: Bahrain, Qatar, Kuwait, UAE, Oman, Saudi Arabia. The GCC patent system is not part of the PCT, but all countries participating in the GCC patent system are members of the PCT. The principle of considering an application and further maintaining a patent for an invention in force is similar to the principles of other regional offices.

Since there is no agreement on the mutual recognition of patents by all subjects of international law, the presence of a national or regional patent will not prevent competitors from using the applicant’s technical solution outside the protected area. In this regard, in order to expand protected areas, the applicant must take care in advance of submitting an application to each of the national and/or regional patent organizations that are of interest to him.