THE PATENT PROCEDURES Flashcards
Types of procedures to obtain patents
Registration=no selective
Validity seal= exam
The first country of deposit is normally the applicant’s country of origin. Within ____ from the original deposit, the applicant can seek international coverage.
12 months
File first in your origin country. 12 months from the
first deposit, file in EACH foreign country. its own exam and procedure and, once granted, EACH country has jurisdiction over the patent.
National procedures:
A) EPO: Single centralized exam with the possibility to cover up to the 39 EPC countries. After grant, patent enters the regional phase in each country of coverage.
B) UNITARY PATENT: Single centralized exam and coverage of 17 UPC countries. After grant, patents are under the jurisdiction of the Unified Patent Court.
European
Extend through the Patent Cooperation Treaty (PCT) to the (W IPO) to seek coverage in countries members of the
WIPO.
International PCT procedure.
Deposit
search report EPO - 9 months
comment
publish 18 after deposit = exam
National decides
National procedure Italy
valid for multiple countries in
English, French or German.
single opposition procedure
If the patent is granted, it enters the regional
phase. You have then to translate to the country language.
EPO procedure
(9 months): enables third parties to raise
objections against a patent granted
* Centralised and less expensive than a lawsuit in court
EPO Opposition
Goal:
* A single patent procedure/exam managed by the EU, single judiciary court after grant
* Cut translation costs
* Avoid fragmented and expensive court decisions
Problems:
* National sovereignty of countries and national courts
* National languages
Solution:
* Exam phase: managed by the EPO (which remains independent),
* Languages: English, French and German. Only AI translations in other languages.
* Litigation: Unified Patent Court (UPC) with competence over all countries
Unitary Patent (UP) with Unified Patent Court (UPC)
Not Spain not Poland or Croatia
After grant, the applicant files a request for unitary effect. From that moment, the patent will follow the unitary patent rules.
The EU Patent Court will have jurisdiction on any legal dispute.
Unitary Patent
Temporarily available in 17 countries. 8 countries not ready
- Human translations temporarily needed (for 6 -12 years!)
- Unified Patent Court
* 2 cental divisions (Munich and Paris)
* 1 court of appeal (Luxembourg)
* Local divisions in all countries (Milan for Italy)
Unitary patent Transitional period
Unitary patent Cost
UP covers more countries for similar cost. 17 UP vs 4 EPO
* UK and Switzerland are out * However, costs remain very high, compared
to US or China.
- PCT: Patent Cooperation Treaty. since 1970.
- filing a single application for all 148 member countries.
- Filing allowed in many offices
- Search report conducted in various offices
- More expensive, but allows to defer regional phase for about 30-32 months before designating the countries of coverage and entering the regional phase.
- each country accepts a different time limit
- In Europe, the EPO is the office in charge for the search report.
- When the patent enters the regional phase, each country follows its procedure for the exam and grant.
- International PCT procedure
In some offices (e.g., EPO, USPTO) it is possible to ask for —— that allows to proceed to the exam and get a patent as soon as possible, e.g. 1,5 year.
FAST TRACK
In some offices (e.g., Germany, NL, USPTO) it is possible to wait some time before the patent
is examined (and the exam fees are paid)
- Canada: up to 4 years
- China, Japan, US: up to 3 years
- Germany: up to 7 years
- The patent application remains dormant until the exam.
DEFERRED EXAM
