How are international and regional patents filed and protected? In the following lines, we will address these topics.
A patent protects a technical invention, namely a scientific process or a new product characterized by an inventive step and industrial applicability. The objective of this intellectual property right is to allow its owner—by means of a twenty-year monopoly on the invention—to reap the fruits of the investment in capital, human and otherwise, that led to the aforementioned invention. Consequently, no third party may lawfully exploit the invention without the prior authorization of the owner.
Pursuant to the Paris Convention of 1883, the owner of inventions may apply for international, European, or national patents.
Ownership lasts for twenty years starting from the filing date of the relative application. Once the twenty-year term has expired, the invention falls into the public domain and becomes freely reproducible by competitors.
Today, there are three different types that one can choose from:
- national patents (for example, the Italian national patent, the French national patent, etc.);
- the European patent;
- international patents, designating specific nations and/or regions.
There also exists—from a de jure condendo perspective (regarding future law)—the European patent "with unitary effect," the so-called "Unitary Patent."
In today’s article, we will focus on international and European patents and the protections these titles guarantee.
The regional patent of greatest interest to us, due to our geographic context, is the European patent, governed by the European Patent Convention (EPC), the so-called Munich Convention of 1973.
Filing a European patent application allows for obtaining, potentially, protection in approximately forty European countries.
It should be noted that, unlike European trademark protection, a European patent does not grant automatic protection across the European Union, but requires the specific designation of the countries in which protection is sought in relation to the patent.
The Filing
Pursuant to the aforementioned Convention, ownership is granted by the European Patent Office (hereinafter, "EPO"), based in Munich, according to a procedure that must be conducted in one of the three official languages, namely French, English, or German.
The application must contain the following elements:
- the request for protection;
- the personal data of the applicant and the inventor;
- the description of the invention; the claims;
- the drawings;
- a short abstract of the technical information inherent to the invention and the designated states.
In particular, the description serves the function of illustrating the technical problem the invention aims to solve and the advantages derived from its use.
The claims must reproduce, in appropriate technical language, the elements for which protection is requested via international, national, or European patents. It should be noted that what is merely described, but not also claimed, will not become the subject of protection. To be effective, claims must be clear and concise.
Claims are understood to be formulated in a "cascade" manner, meaning the first is the most important as it encapsulates the core of the invention, while subsequent claims are a form of specification of the first.
Finally, technical drawings serve the function of showing the inventive solution for which protection is requested. Therefore, they must be drafted in such a way as to clearly convey the scope of the invention. Consequently, overly detailed construction drawings with irrelevant measurements and details are discouraged.
Finally, since this is a costly filing, it is recommended to proceed only if there is an interest in obtaining patent protection in at least 4 European countries. The amount of fees varies depending on whether or not one exceeds 15 claims and can amount to approximately 5,700 Euros, not including the fees due following the grant of the title. During the European patent grant procedure, the application must be kept alive by paying annual fees directly to the EPO to avoid losing rights.
The Grant
Once the process of filing a European patent application is completed, an application number and a filing date are obtained.
The steps following the filing in the European patent grant procedure are generally as follows:
- payment of initial application fees within one month of the filing date, which can amount to approximately 1,500.00 Euros;
- communication to the applicant of the receipt of the application by the EPO;
- examination of formalities by the Receiving Section: in this phase, communications regarding missing documents or payment errors may be received, which the applicant must remedy within the time limits set by the Office;
- transmission of the EPO search report to the applicant;
- publication of the application in the European Patent Bulletin;
- request for examination by the applicant: this request is deemed made upon payment of the examination and designation fees, i.e., within six months from the date of publication of the search report;
- substantive examination;
- translations of the European patent to be provided to the Offices of the States designated in the application for national validation purposes;
- opposition period lasting nine months from the date the European patent is granted: within this term, any interested third party may file an opposition against the grant of a European patent with an EPO Opposition Division.
Maintenance
Once ownership is granted, the fees required to keep the title alive are no longer paid to the EPO.
These payments must, in fact, be made annually to the national Patent and Trademark Offices designated during the application for the title.
Like a national patent, a European patent will have a duration of twenty years from the filing date.
International Patents
International patents are commonly referred to as "PCT," after the name of the treaty, the Patent Cooperation Treaty, which has been joined by almost all states in the world, including Italy.
This is a procedure through which, by filing a single application, protection can be obtained in multiple states, not necessarily located on the same continent. This procedure is managed by the World Intellectual Property Organization, commonly called "WIPO," based in Geneva, Switzerland.
The application can be submitted immediately or within one year of the filing of a national or regional patent, so as to claim priority from the latter.
International Patents: The Application
The application for PCT international patents can only be filed by residents or nationals of a state party to the aforementioned convention. It is submitted by transmitting to WIPO a similar form containing the data described above under "Regional Patents – Introduction."
The official languages of the PCT, unlike the European one, vary according to the designated receiving offices. As an example, please note that WIPO, if selected as the receiving office, accepts any language; the Italian Office (UIBM - Ufficio Italiano Brevetti e Marchi), on the other hand, accepts French, English, and German in addition to Italian.
Similar to national or regional applications, in order to proceed with the filing, the filing fee and the search fee must be paid, which may vary depending on the length of the text or the number of claims. The aforementioned fees correspond, in their amount, to those required during the filing phase of a European patent application.
Grant of International Patents
Once the filing process for international patents is completed, an application number and a filing date are obtained, similar to what happens in national or regional types.
However, unlike what occurs in the equivalent European phase, the unitary procedure stops before the examination of the application.
In fact, once the novelty search is completed by the International Office, the ball passes to the national offices designated during the application phase.
It will, therefore, be at the national level that the patent is examined and granted. Consequently, from this point forward, the patent will split into many national patents, each of which will follow its own fate and procedure.
The national phase will thus consist of filing the international application in the designated state, often translated into the local language; paying the fees required by the state; and a series of administrative requirements that vary from country to country.
For this phase, it is almost indispensable to be assisted by a consultant.
Maintenance of International Patents
Once the fees for filing and search have been paid, no further fees need to be paid to WIPO, not even annual maintenance fees, which, instead, must be paid to the national offices designated in the patent application.
International patents, just like the others, have a duration of twenty years starting from the filing date.
Conclusions
In light of the above, we can conclude that inventions can be protected and safeguarded across a broad spectrum by opting for international or European patents.
The choice of which of the two to select to protect one's invention lies with the applicant and requires reflection regarding costs and the states in which protection is sought; aspects that must be evaluated with a trusted patent consultant before proceeding with the filing of the application.