Within a term of 12 months from the application date for a patent or
utility model and 6 months for a trade mark or design the applicant can seek
international protection for its innovation claiming the priority under the
Paris Convention of the national application.
INTERNATIONAL PATENT APPLICATION
The Patent Cooperation Treaty (PCT) assists applica nts in
seeking patent protection internationally for their inventions. The PCT is
an international treaty having more than 145 Contracting States. The PCT
makes it possible to seek patent protection for an invention simultaneously
in a large number of countries by filing a single “international” patent
application instead of filing several separate national or regional patent
applications. The granting of patents remains under the control of the
national or regional patent Offices in what is called the “national phase”.
The PCT procedure includes:
An international application is filed
with a national or regional patent Office or WIPO, complying with the PCT
formality requirements, in one language, and paying one set of fees.
“International Searching Authority” (ISA) (one of the world’s major patent
Offices) identifies the published patent documents and technical literature
(“prior art”) which may have an influence on whether your invention is
patentable, and establishes a written opinion on an invention’s potential
As soon as possible after the expiration of 18 months from
the earliest filing date, the content of your international application is
disclosed to the world.
After the end of the PCT procedure, usually
at 30 months from the earliest filing date of an initial application, from
which priority is claimed, you start to pursue the grant of the patents
directly before the national (or regional) patent Offices of the countries
in which the protection is to be obtain.
The European Patent Office (EPO) accepts applications under the
European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).
Applications may be filed at the EPO in any language. However, the official
languages of the EPO are English, French and German. If the application is
not filed in one of these languages, a translation has to be submitted.
The services of a professional representative are mandatory for applicants
residing outside Europe, while the formalities examination is being carried
out, an European search report is drawn up, listing all the documents
available to the office that may be relevant to assessing novelty and
The application is published - normally together with the
search report - 18 months after the date of filing or, if priority was
claimed, the priority date. Applicants then have six months to decide
whether or not to pursue their application by requesting substantive
If the examining division decides that a patent can be
granted, it issues a decision to that effect. A mention of the grant is
published in the European Patent Bulletin once the translations of the
claims have been filed and the fees for grant and publication have been paid.
The decision to grant takes effect on the date of publication. The granted
European patent is a “bundle” of individual national patents.
mention of the grant is published, the patent has to be validated in each of
the designated states within a specific time limit. In a number of
contracting states, the patent owner may have to file a translation of the
specification in an official language of the national patent office.
COMMUNITY TRADE MARK
If business is done in more than one EU country, a Community
trade mark (CTM) offers a protection throughout the EU. CTMs are registered
at the Office for Harmonization in the Internal Market (OHIM). A CTM gives
the owner protection for all EU Member States in one single registration.
The CTM is an all-or-nothing deal: either you get it for all Member States
or you do not get a CTM at all.
Registered Community Design (RCD)
A registered Community Design is initially valid for five years from the
date of filing and can be renewed in blocks of five years up to a maximum of
UNRegistered Community Design (UCD)
An unregistered Community Design is given protection for a period of
three years from the date on which the design was first made available to
the public within the territory of the European Union. After three years,
the protection cannot be extended.
If you have disclosed your design and
then decide that you want to apply for a design registration —either because
you want full protection or for IP strategy reasons – you can still do so
within one year of disclosure. This is known as the “grace period”.
The Hague System for the International Registration of Industrial
Designs provides a practical business solution for registering up to 100
designs in over 62 territories through filing one single international
A mark may be the subject of an international
application only if it has already been registered (or, where the
international application is governed exclusively by the Protocol, if
registration has been applied for) in the Trademark Office of the
contracting party with which the applicant has the necessary connection to
be able to file an international application. This Office is referred to as
the Office of origin. An international application can be filed in any one
of the five languages of the Madrid system, namely, German, English, Italian,
French or Spanish.
International registration of designs
The Hague Convention for the International Registration Agreement
Concerning the International Deposit of Industrial Designs provides a
convenient way for design registration of up to 100 designs in over 62
territories by filing a single international application.