Protecting your invention overseas

Patents are territorial rights. This means that if, for example, you have a UK patent, it will allow you to stop others from making or selling your invention in the UK. BUT, if you want to be able to stop them from doing the same in other countries, then you need to secure patent protection covering those countries too.

Priority Date

The good news is that you do not have to file patent applications in all of the countries you want to cover from the outset. You can start by filing a UK patent application, and that UK patent application must be filed before there is any non confidential disclosure of your invention, and the date of filing the UK application will provide you with what is known as a “priority date” (which you can think of as your ‘flag in the sand’). After that, you can launch your product and start selling it.

What is essential during the 12-month period following the filing of the UK application, is that you give some thought to what other markets and countries you need to cover to make sure that your market share and revenue streams will be adequately protected because, if overseas patent protection is also needed, then you have to do something by the end of 12 months from the priority date. That said, you have a couple of choices at this point. You can either:

  • file national applications in the countries/territories you want to cover; or
  • file an International or “PCT” application

Whichever of these two options you choose, the new applications(s) get to ‘keep’ the priority date (i.e. the date of filing the original UK patent application.

Why file a PCT application?

A PCT application acts, in effect, as a ‘bookmark’ in most countries worldwide, and gives you an extra 18 months to file national applications in the countries you want to cover. So, the benefits are:

  • it gives your business an extra 18 months to determine the countries in which your main markets are (or the markets that are sufficiently valuable to warrant the cost of filing patent applications there);
  • it gives your business an extra 18 months to establish a revenue stream to cover the cost of filing overseas applications;
  • it delays the ongoing prosecution costs associated with overseas patent applications by an additional 18 months, which can help with cash flow.

However, it is worth bearing in mind that:

  • the PCT application, while delaying the cost of overseas patent applications, it does not offset or reduce any of these costs. Therefore, the PCT route increases the overall cost of overseas patent protection by the cost of the PCT application; and
  • the PCT covers most, but not all, countries in the world. The countries covered by the PCT can be found here. Notable exceptions include Argentina and Taiwan and, if patent protection is required in any country not covered by the PCT, then a patent application must be filed there by the end of 12 months from filing the original UK application, even if a PCT application is also filed.

Need Help?

We hope you have found this summary useful.  If you need help to work out if your new product might be patentable, or if you have any other IP questions, we are happy to offer a confidential initial consultation, which is free of charge and obligation.  Please book your free initial consultation by clicking the link below:

https://calendly.com/strachan-ip-a-fresh-view-of-intellectual-property/30min

or by calling 07714 797135 or emailing vicki.strachan@strachanip.co.uk

or you can contact us through our website: https://strachanip.co.uk/contact/

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