INTELLECTUAL PROPERTY WORLDWIDE PATENT REGISTRATION

Timeframe

2,5-3 years (if no objections or rejections arise)

Overview

Patents are territory limited, so in order to protect your invention in multiple foreign countries, you have several options, which are as follows:

Direct route: You shall simply file separate applications directly to those countries, in which you are seeking for patent protection.

Paris route: You file the first application for obtaining a patent in one of the member states of the Paris Convention for the Protection of Industrial Property (Paris Convention Country), and then to file separate patent applications in any other Paris Convention countries within 12-month period from the 1^st application. It will give you the benefit of claiming the filing date as the date of the 1^st application.

Patent Cooperation Treaty (PCT) route: You shall file an application under the PCT directly, or within 12-month period from the filing date of the 1^st application, which is considered valid in all contracting states of the PCT, and therefore is easier and more cost-efficient than both Direct and Paris Route filings.
In order to use the benefits of Paris Convention and PCT, the inventor must have personal or business connection to one of the member states. In other words, person must be domiciled in, have industrial or commercial establishment in, or be citizen of one of the member countries. It must be mentioned that patent can be obtained by both natural person and legal entity. If the sole reason for obtaining a patent for your invention is to own the rights to the intellectual property, we usually suggest to incorporate a company in low maintenance fee jurisdictions, and then to file an application as a legal entity. For a list of potential options, please contact our team members.

Before applying for a patent, it is important to define what exactly patents and inventions are.

An invention can be a product, a process, or some kind of a device. To be patentable, it has to be:

• be new and unique;
• have an individual character;
• involve an inventive step.

In general, patent application shall consist of the following, otherwise it will be refused:

• A request for grant;
• A description of the invention;
• One or more claims;
• Drawings if necessary;
• An abstract;
• Fee confirmation document;
• Power of Attorney if the applicant is not the inventor.

If application is accepted after its examination, then initial stages take place:

1. International Search: International Searching Authority (ISA) issues a written opinion on your invention’s potential patentability;
2. International Publication: after 18-month period from the filing date, the content of your application is disclosed to the world.

Optional stages:

1. Supplementary International Search – carried out by the other ISA upon your request;
2. International Preliminary Examination – one of the ISAs carries out an additional patentability analysis.

National Phase:

1. National Phase – after 30-month period from the filing date, your application is being reviewed by the regional patent Offices and patents are granted.

Optional stages:

1. Opposition – patent may be opposed by third parties (e.g. competitors);
2. Limitation/Revocation – may be initiated by the patent proprietor himself at any time after the grant of the patent;
3. Appeal – any decisions of the patent Offices are open to appeal.

Benefits

The benefits of obtaining an international patent include:

• the exclusive right to create the product or to provide a unique service within the particular territory/-ies;
• the legal protection against infringers and dishonest competitors;
• the ability to sell or assign to another person the patent or license its use.

Our services

• Registration of a local company (if required);
• Preparation of an international patent application/direct local applications;
• Assistance with drafting any other related materials, e.g. descriptions, claims, abstracts;
• Translations of the documents into local languages;
• Carrying out a patent search;
• Preparation of documents for international trademark registration;
• Filing application for obtaining an international patent on the basis of POA.

*Fee corresponds only to 1 application form for obtaining a patent.

*The total cost may vary since prices depend on the origin of the local company, number of states where you seek protection and on the specific fees that each state applies.

*Government fees for obtaining an international patent are not included in the estimated price and will depend on the Office of Origin and designated Contracting Parties where the invention is to be protected.

*Our standard price does not include replies to office actions, reacting to third party responses/requests/oppositions with respect to the application. 

Renewal

• The international patent is usually valid for up to 20 years;
• It can be renewed at the end of each 20-year period directly with WIPO;
• The holders will receive unofficial notice of possibility of renewal six months before the renewal date due.