International
A patent is a territorial right given by the government of that specific jurisdiction to the Applicant. The Applicant, if wishes, can file for patent in other countries as well and hence, opt for international filing of the application for patent.
The real value of an intellectual creation can be ascertained when it is put in use by the creator on his own or through a third party under a license or an assignment. Also, the real loss of the same can be ascertained especially when a creation, legally unprotected or ineligible to be protected under law, is lawfully commercially exploited by a third party or a potential competitor.
When it comes to inventive creations (generally in the field of science and technology) the only form of protection globally available is “patent”. For an invention to qualify as patentable, it should pass the novelty, inventive step (non-obviousness) and industrial applicability tests individually and there will be a high level of scrutiny applied (especially on the inventive step requirement) to the patent applications before they are granted. On the other hand, in many jurisdictions there is available a form of protection for inventions that are minor or incremental to existing prior arts that may or may not possess significant extent of inventiveness, still being protected under law usually as utility models or utility certificates or petty patents or innovation patents or short-term patents or minor patents and small patent.
An international application can be filed by the Applicant either through PCT (Patent Co-operation Treaty) or through Conventional application which has been explained in detail below:
PCT (International Patent Publication)
Filing an international application through PCT provides a common international platform to the Applicant through which the Applicant can request for patent in almost 157 countries with more time period as compared to Conventional application.
1. Pre-filing
Filing of the international application also requires meeting the legal as well as technical knowledge. International application filing definitely requires a higher skilled and experienced Attorney.
Drafting Complete Specification for International Patent Application
An international application can be filed only through complete specification and not through a provisional specification. Based on the complete specification, a person can file the same patent application all over the world. A highly skilled person having such knowledge is advisable to be looked into drafting of such applications.
Preparing application for Foreign Filing License
If an Applicant wishes to file directly an international application instead of a national application first in India, then a permission from the Patent Office is required to be obtained. In other words, an Indian resident, who is either an Applicant or an inventor, does not wish to file for a Patent application first in India but wishes to file an international application directly, then a request for Foreign Filing License is required to be Obtained from the Patent Office.
A Foreign Filing License can be requested to the Patent Office by filing an application request for the same wherein the Patent Office will study the details regarding the invention as well and based on the same, grant a foreign filing license.
2. Filing
Filing the PCT application
A request for filing an international application through PCT can be submitted by the Applicant from the country from which it wishes to claim the priority by filing few forms and paying requisite fees before the International Bureau (IB).
In India, an Applicant can file a PCT application within twelve months, from the date of the priority of the patent application filed in India.
After filing a PCT application, the Applicant gets 30/31 months to enter other countries. Thus, the Applicant gets more time to strategically decide the countries in which he wishes to request for a Patent.
India as Receiving Office / International Searching Authority
PCT application allows an Applicant to conduct a search and get an opinion from a ‘higher authority’ weather the invention is meets the criteria of novelty, inventive step and the industrial applicability.
The ‘higher authority’ is called as International Searching Authority (ISA) and the opinion given them is called as Written Opinion of International Search Authority.
An applicant can choose any country as an International Search Authority (ISA). Therefore, India can be chosen as one as well.
WIPO Switzerland as Receiving Office / International Searching Authority
Access to all the documents filed for an international application is available online on the website of World Intellectual Property Organization (WIPO).
WIPO is established in Switzerland and acts a Receiving Office. After which the Applicant can choose the ISA.
Post-Filing and Publication
After filing a request for an international application along with the complete specification and claims, publication of the same takes place on the WIPO website after specific time period.
Filing request for early international publication
If required, an Applicant can request for an early publication of the international application along with requisite form and fees.
Filing international License Availability
Filing declarations and amendments
Declaration by inventor is to be provided that the rights of the inventor are assigned to the applicant and the applicant has the rights to obtain the patent.
The applicant can also file amendments, if any, such as change in specification, claims, attorney, forms, inventors, etc.
Applying for and updating DAS codes
DAS codes is a Digital Access Service which is an electronic system that allows an Applicant to access all the documents filed for the International application and apply to the other countries. However, the applicant has to file a request for the same and update the IB accordingly.
Requesting early publication before international search report generation
An applicant can request for early publication of the international application including documents such as complete specification, claims, any amendments, etc. before ISA generates a report and an opinion of its own regarding the patentability of the application.
Requesting Publication after International Search Report Generation
An applicant can request for publication of its application after generation of International Search Report (ISR) as well. ISR is a report which includes documents regarding the invention which the Authority thinks is similar to the patent. These documents are obtained through a search conducted by the ISA.
The ISA also generates its own opinion as to how the documents as searched by them are similar to the invention.
Thus, the ISA generates its own opinion regarding the novelty, inventive step and industrial applicability of the invention.
The opinion of the ISA can be positive or negative.
International Preliminary Examination Application
If the opinion of the ISA is a negative opinion, that is, the opinion of the ISA is not favour of the applicant that the invention is not novel or involves an inventive step or is industrially applicable, then the Applicant can file an explanation or reply to the opinion by providing explanations or arguments.
In order to understand whether the arguments are acceptable, the Applicant can request for second opinion which will be provided by International Preliminary Examiner through an International Preliminary Report on Patentability (IPRP).
Interpretation of International Search Report
On receiving a search report and opinion from the ISA, the Applicant can amend the claims or specification, and provide an application in view of the opinion of the ISA.
he said report, opinion, amendment and explanation helps in establishing a positive opinion in all the national phase of the countries.
Interpretation of International Preliminary Examination Report
On receiving the opinion of IPRP, the Applicant can further amend the claims or specification, and provide additional response or arguments.
The said report, opinion, amendment and explanation helps in establishing a positive opinion in all the national phase of the countries.
Strategy for International PCT National Phases
It is important to understand the patentability of the invention and the search reports and opinions provided by the ISA. This helps to meet the requirements of obtaining patent. It is therefore, necessary to strategize the drafting and filing international application which will further aid in obtaining a patent in other countries as well.
Contracting with National Attorneys for filing National Phase Applications
A patent attorney can practice law before a specific jurisdiction. Therefore, a patent agent/attorney practicing before India cannot practice before USA or Europe. Even on filing an international application, the applicant will require a patent attorney in USA if he wishes to file an application for patent before USA.
We, Allinnov Research and Development Pvt Ltd. help you to find and contact attorneys in other jurisdictions as well.
3. Convention / PCT National Phase Patent Applications
Conventional applications are also international applications wherein the applicant can enter the other jurisdiction directly without requesting for a PCT application or ISR. But an applicant can enter to other jurisdictions through conventional application only within twelve months from the date of priority of the application.
Drafting complete specification for the Convention / National Phase Patent Application
Documents required for filing a request for conventional application includes complete specification and claims along with specific documents in specific jurisdictions.
Preparing and Filing application for Foreign Filing License in India.
An applicant, if wishes to directly file for an international application without filing the same in India, the applicant has to request to file the same before the Patent Office to obtain a foreign filing license.
Patents
A person can apply for Patent in South Africa before CIPC - Companies and Intellectual Property Commission. South Africa and India have similarity for applying first a provisional specification followed by a complete specification within twelve months. The basic requirement of novelty, inventive step and industrial applicability is also required. Approximate time period for getting a patent in South Africa is two years.
South Africa is a member of the International Patent Co-operation Treaty (PCT) and patent granted in South Africa can last to a maximum of twenty complete years from the date of filing if renewal requirements are met.
Patents are granted for inventions related to products and processes for problems to which new technical solutions are offered. Patent applications in South Africa undergo formal examinations only and are granted without undergoing substantial (critically) examinations procedures.
The South African Patent Office although advises innovators / applicants to seek professional support of patent attorneys, it allows individuals to file only provisional (unfinished inventions) patent applications by their own, however it does not take any responsibility for losses due to improperly drafted provisional patent specifications. As it comes to complete specification patent applications, the office accepts patent applications filed only through South African Qualified Patent Attorneys
Patents in South Africa may be granted only for inventions that comply with the inventive step and industrial applicability requirements and any invention that can be classified as discoveries, scientific theories, mathematical methods, business or game playing methods and computer programs / algorithms are not considered to be patentable according to the South African Patent Act, 1978.
Get in touch with us to get your invention protected as a patent in South Africa now.
A person can apply for Patent in Nigeria before Ministry of Industry Trade and Investments Commercial Law Department Trademarks, Patents and Designs Registry. The process to apply for a request for patent is similar to that of India i.e., it should meet the requirements of novelty, inventive step and industrial applicability. The only important requirement for applying patent in Nigeria, is that if the applicant is a foreign owned company, he must provide an address or address of service within Nigeria.
UK Intellectual Property Office (IPO) also has same process as that of India and Europe. A person can apply for patent through European national/regional phase. A person has to file a request for search and examination separately within a specific time period.
The process of Australia patent is slightly different than that of India. In Australia, a patent application can be filed either for standard patent or innovation patent. A standard patent is similar to that of India and provides protection for up to twenty years; in case of pharmaceuticals, for twenty years. For standard patent, it is necessary to meet the requirement of novelty, inventive step and industrial applicability. In case of innovative patent, innovative step is required to be established which is different from inventive step. A protection for period of eight years is provided in innovative patents. A person can apply for patent before IP Australia.
A person can file an application for patent in New Zealand before Intellectual Property Office of New Zealand – IPONZ. To file an application before IPNOZ, it is required to file a completed online form, specification and fee as per the New Zealand Patents Act 2013 and Regulations 2014
A request for grant of patent in Europe can be filed before European Patent Office (EPO). European Patent Office allows to file a patent application in French, German and English language. On grant of patent application in Europe, a person can convert its rights into national rights in each country through a validation process.
4. Utility Models
A utility model is similar to patent application wherein utility models are minor/smaller patents obtained for a shorter period of time with less stringent requirements. Examples of utility models include watches, toys, machines, etc. A request for utility model cannot be applied in USA, UK or Canada, but can be applied in the following countries:
1. Germany
Utility Model Patents in Germany and Austria are called and issued as “Gebrauchsmuster” and they’re governed by the Utility Model Act 1986 in Germany.
All technical inventions other than processes that are novel, non-obvious and are industrially applicable can be protected under the act, subject to those excluded as non-registrable inventions as per the country’s Patents Act. The rights of the owner of a Utility Models remains as such as for a patent to initiate an action for any infringements from the date of its registration.
Utility Model Patents in Germany are unexamined rights which means that the office grants a patent without any examination extensive examination procedures other than those formal ones unless an action for cancellation or invalidation or infringement proceeding is initiated against it.
The validity of a registered German Utility Model Patent (Gebrauchsmuster) is for a period of 10 years from the date of filing or priority date. While the invention for which an application for UM is filed should be clearly disclosed for any person skilled in art to carry out the same, no amendments is possible later and the requirement for drawings are not mandatory.
For utility model patent applications filed in any other languages (other than German), the office demands filing a complete translation of the specification and claims in the German language to be filed within 3 months from the date of filing the application. Applications without any formal deficiencies are registered and published in the Patent gazette freely accessible online through the DPMAregister information system.
Through Allinnov you can,
- Get your German Utility Model Patent specification drafted in English
- Translated to German Language
- Filed in Germany and
- Get a Utility Model Patent Granted in Germany
Hassle free and right through your mobile phone and emails at affordable prices. We currently do not provide support in post grant or pre-grant opposition / invalidation matters if any for a Utility Model application in Germany.
Basic requirement for utility model is that it should be new (novel).
A utility model right is granted for maximum time period of ten years in Germany, China, South Korea and Taiwan. In Japan, the said right is usually granted for a period of ten to fifteen years. In some cases, a person can convert its patent right into utility model right.
