Overseas Patent Applications

Filing a UK patent application generates a priority date (the date of first filing a patent application for an invention).

Applications for overseas patent protection should be filed within 12 months of filing the first UK patent application. This allows a ‘priority claim’ to be made, which effectively backdates the foreign applications to the date of filing the UK application.

It is possible to file applications for overseas protection outside of the 12-month period, but any such application will not have the benefit of the priority date. This generally means that anything that has been publicly disclosed between the filing of the UK application and the overseas applications can be cited against the overseas applications (thereby preventing grant of a patent). The law surrounding this varies depending on countries and if you have any questions please contact us.

Overseas Patent Filing Options

Presuming that a UK patent application has been filed, there are three main routes to obtain foreign patent protection:

1. International Patent Application

2. European Patent Application

3. Direct National Applications

(Or a combination of any or all of the above.)

We look at each of these routes in more detail below.

International Patent Applications

An international patent application or ‘PCT’ application is an application designating most countries of interest to patentees. The most notable exception is Taiwan. A full list of PCT contracting states may be found here: PCT Contracting States

A PCT application does not result in a ‘worldwide’ patent – there is no such thing. Instead, 30 or 31 months (normally, depending on territory) from the priority date the application must be converted into separate national and regional applications.

So why file one? It increases the overall cost of seeking patent protection by over £3000.

The PCT application simply buys an applicant an additional 18 months from first filing their UK application to find the funds to pay for separate national/regional applications. This can be particularly useful if investment is required and protection is desired in a lot of countries.

A PCT application also keeps the applicant’s options open as to the choice of countries. If the invention is still being tested to see whether or not it is likely to be a commercial success then delaying the choice of whether or not to seek protection in a particular country can be beneficial.

A third reason to file a PCT application is to address patentability objections before entering national/regional phases. As part of the PCT application process a patentability search and examination is done. The applicant has the opportunity to respond to the examination report and attempt to overcome any objections to patentability. This does incur further additional costs, but these costs can be much lower than the cost of addressing objections in the national/regional phases (where foreign attorney charges would be incurred in each country).

However, the PCT process is not for everyone. If you are sure about the country or countries that you want protection in then you might choose to file direct national /regional applications. This is often the case with applicants that know they only want protection in a single country (normally the US).

European Patent Applications

A European patent application can either be filed directly (within 12 months of filing a UK application) or it can be derived from a PCT application (31 months after filing a UK application). The procedure for each is of course slightly different, but the end result is the same.

Grant of a European patent does not result in a single European patent. Instead it results in a ‘bundle’ of national patents. Upon grant of a European patent, the patents have to be validated in the countries of interest. For a full list of countries in which protection may be obtained through this system see here: EPC Member States

The cost of validating in each country varies greatly as different countries have different validation requirements, some requiring a translation of the full application, others requiring a translation of the claims alone and other requiring only recordal of an address for service. Thus costs can be anywhere in the region of £200 to £3000 upwards per country. It is very unusual for applicants to validate European patents in all countries; normally a few main counties are selected, such as France, Germany, Spain, Italy and the UK.

Although the European Patent Office fees are quite substantial, European patent applications can represent good value for money as the central search and examination procedure reduces costs in comparison to prosecuting applications in several different countries.

It should be noted that while a European patent application is pending renewal fees are due. These fees are quite high, being several hundred pounds payable annually.

Of course a European application can be filed in conjunction with one or more direct national applications.

Direct National Patent Applications

This option is sensible if you only want protection in a few countries and are absolutely sure which countries they are.

The cost varies greatly depending upon the territory, but are generally higher when translations are involved.

As a rough guide, filing of a direct national patent application can cost anywhere between £800 and £3000. Normally up to around £1000 to £3000 per country should be budgeted to take a patent to grant. Evidently the cost of getting a patent granted varies greatly depending upon what sort of objections, if any, are raised by the national patent office.

Please contact us for an estimate of filing costs for any type of patent application or for a free consultaiton.