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International Protection



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.
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.
An “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 patentability.
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 inventive step.
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 examination.
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.
Once the 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.
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 25 years.

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”.


Of designs
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 application.

Of Trademarks

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.

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