Foreign Patents

Decisions as to whether or not to protect your invention in other countries outside the country in which the first patent application was filed for the respective invention (“home based application”) can usually be left until about 10 to 12 months after the date that the home based application was filed. This home-based application could, for example, be your fist filed UK application.

There is an International Convention whereby, provided that any foreign applications are filed within 12 Months of the filing date of the first filed patent application (and no later) it is possible to claim the benefit of the filing date (called a "priority date") of the home filed application for each country you decide to file in. In this way, each country will treat the application as if it had been filed in their country on the day you filed your home based application.

There are a number of routes available for filing a National patent application in many countries. They are as follows::

 (i) filing separate national Patent applications in each foreign country where protection is desired;

  (ii) for European Countries filing a single European Patent Application designating one or more European countries where protection is desired;

(iii) filing a single International Patent application designating one or more countries or regions  worldwide where protection is desired;

(iv) filing a Eurasian Patent Application the Eurasian countries (mainly the former Soviet Union Countries);

(v) filing an OAIP Patent Application in the African Countries that belong to this convention.

The last four routes are less costly than separate national routes. This is because national routes involve translation into the language of the country concerned whereas, the International routes are conducted in a common language (e.g. routes (ii) and (iii) are conducted in English)

Each route is discussed briefly below. Most foreign Patent Offices require payment of periodic (usually annual) renewal fees to maintain the granted foreign Patent in force. In addition, some countries or regions (notably the European Patent Office) require payment of annual maintenance fees on pending Patent applications. No renewal fees are payable on a PCT patent application. 

Foreign National Patents 

A national Patent application may be filed at the national Patent Office of a foreign country in the local language. In some (but not all) countries, the patent office may conduct a novelty search through previously published patent specifications (and possibly a limited range of other literature) to identify published documents which may be relevant to the patentability of the invention. A search report listing these documents is normally sent to the applicant.

In most foreign countries, the application is published shortly after the search report has been completed. If the search report was favorable and the prospect of securing a granted Patent seems good, the applicant may decide to proceed to examination. In some countries, it is necessary to file an "Examination Request" (and pay an examination fee) within a specified period. Provided these requirements are fulfilled, the application will be subjected to a substantive examination, and issue an "Official Letter" detailing any objections to the application. Objections which may arise are that the invention is not new or is merely an obvious departure from what is already known.

Working closely with his advisor, the applicant may choose to instruct his advisor to prepare and file a response to the objections or amend the application to overcome the objections. There may be several exchanges of correspondence between the examiner and the advisor and this procedure is often referred to as prosecution. The costs of prosecution will depend on the time spent by the advisor.

Once examination has concluded and the examiner's objections have been overcome, the local Patent Office will formally accept the application and subject to payment of various fees (such as grant and/or printing fees), the Patent will be granted and a certificate of grant (the "Letters Patent") will be sent to the applicant. After grant, annual renewal fees will become payable. In some countries, renewal fees become due before grant.

It should be borne in mind that in seeking to secure grant of a national Patent application in a foreign country, it will be necessary to appoint a local attorney to be responsible for the procedure in their country. For this purpose, we have an established network of local attorneys to assist us in carrying out our clients' instructions in foreign countries. Further details are available on request.

Patent Costs Outside The UK

The main cost of foreign filings is calculated from disbursements (e.g., Patent Office fees, draughtsman's charges, foreign correspondents' charges, telephone, copying, fax and travel costs), service charges (a flat rate administrative charge specific to the particular job done and covering mainly clerical matters) and a charge for the professional time spent on the matter.

Granted patents (and in some cases pending applications) are subject to payment of annual renewal fees to maintain the patent in force - details of specific renewal costs can be obtained on request.  

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