Obtaining patents in other countries

When planning to enter the international market, each company thinks about the protection of intellectual property rights, but, as a rule, more attention is paid to trademarks. But, for example, the protection of the appearance of goods or any other details (package, design, inventions, car body, etc.) is very often forgotten.

Many are convinced that a patent obtained in one country provides protection throughout the world. However, this is not at all the case and there is no such concept as an “international patent”

To protect your invention, useful model or industrial design, a special patenting procedure is required in each country or regional organization. This includes the concept of international registration of a patent.

Where to begin? First of all, it is necessary to decide on the covered territory, since the procedure for obtaining a patent in other countries will depend on this.

International registration of a patent can be done in one of the following ways:

  • according to the national procedure in each country – the applicant submits an application to a specific country/countries; however, it should be borne in mind that according to the Law of Ukraine “On the Protection of Rights for Inventions and Utility Models”, such an applicant first applies to Ukrpatent. After that, in order to maintain the convention priority (i.e. the date of filing the first application), no later than 12 months, you must file an application with the national office of the country where you want to obtain the patent protection for your invention. This option is suitable if one or several countries are selected.
  • according to the regional procedure (European patent, Eurasian patent, ARIPO and OAP (valid in African countries) and others) – the essence of such patenting lies in a wider territorial coverage; many countries of Europe, Asia, CIS, Africa have signed agreements on obtaining a single patent, which is valid in the respective territories. An important advantage is that by filing an application in one country, the registered patent will be protected in all countries that have signed the relevant agreement.
  • according to the international procedure Patent Cooperation Treaty – as of today, the agreement has been signed by 153 countries-participants, which indicates the scale of patent protection; residents of these countries (including Ukraine) can file only one international application, which is filed with the patent office of the applicant’s country and then sent to WIPO, or can also be immediately sent to WIPO; the main advantage of this procedure is a longer period for the applicant to make a decision in which countries or regions the application will be submitted – 31 months from the priority date.

There is also a preliminary international examination and international search procedure provided for by the Patent Cooperation Treaty. In most cases, VigoLex professionals recommend their clients to use this procedure in order to get an additional opportunity to determine by which of the procedures a particular patent should be registered. This can be done before the payment of state duties, which constitute a significant part of the costs. The direct obtainment of patents is carried out in the country chosen by the applicant, the regional office of which decides to issue a patent.

As for the cost, here a lot depends on the chosen procedure, the legal status of the applicant, the need to translate the application itself into state languages. VigoLex lawyers are always ready to provide a transparent calculation of all services. Indeed, despite the existence of common approaches and patenting principles, each country has its own special requirements for applications.

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