Canada’s Intellectual Property Firm

Patent rights are limited to the jurisdiction in which the patent is granted. As a result, when seeking patent protection, it is important for applicants to consider where patent protection is required. For example, an applicant should consider the jurisdictions in which a product is likely to be sold and/or manufactured, as well as any jurisdictions in which competitive products are sold and/or manufactured. For many applicants, it is necessary to seek broad international protection. Of course, the desire for broad protection must be balanced against budgetary restrictions – each additional jurisdiction in which an application is filed may entail costs for filing fees, local representation, translations, issue and maintenance fees, and the like. Fortunately, various international and regional patent application procedures are available. In the right circumstances, taking advantage of these processes can streamline the application process and allow for the reduction or deferral of costs.

Patent Cooperation Treaty ("PCT") applications. Under the PCT, an applicant can file a single international "patent application," which may be used as a launch point into multiple countries or regions in which the applicant ultimately desires to pursue patent protection. At present, over 140 jurisdictions are part of the PCT.

An international PCT application cannot itself be granted as an "international patent." In order to obtain patent protection, a PCT application must be "converted" into national or regional applications in the jurisdictions of interest. However, by filing a PCT application, an applicant can secure an early filing date for subsequently pursued national and regional applications. An early filing date can be important, as patents are awarded on a "first-to-file" basis in most of the world. In most jurisdictions, a PCT application can be converted into a national or regional application up to 30 or 31 months after the PCT application is filed and still claim the benefit of the PCT filing date. A PCT application may also claim priority from an application filed up to 12 months earlier, in which case national applications typically must be filed within 30 or 31 months of the priority date. By contrast, in the absence of a PCT application, applications must generally be filed in each jurisdiction of interest within 12 months of the date of the first-filed application. Thus, a PCT application provides the opportunity to defer the decision to file national applications and their associated costs.

A further advantage of the PCT procedure is that a search report and preliminary patentability opinion are prepared. While the opinion is not binding on any national patent office, it can provide insight as to the prospects for patentability and scope of protection that is likely to be obtained. Decisions as to which national and regional applications should be pursued can then be made with this information in hand.

The tradeoff against which these benefits must be measured is higher up-front costs for filing a PCT application relative to a regular national application. Thus, if patent protection is only desired in one or two countries, the PCT route may not be worthwhile. However, when a higher number of jurisdictions are targeted for national filings, PCT applications usually become cost-effective.

In addition to and in conjunction with the PCT process, a number of regional patent applications are available. A benefit of regional applications is that they generally provide for a centralized examination and grant process, which may reduce duplication of effort and costs for examination. However, some regional applications require validation and issuance at the national level, which may necessitate translations and additional fees.

European patent applications. Applicants seeking protection in multiple European countries may file a single European patent application. European applications undergo a single centralized examination process in the European Patent Office ("EPO"), followed by a national validation stage if a European patent is granted. At present, the countries that may be designated in a European patent application are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Monaco, Malta, The Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. In a number of these jurisdictions, patents can only be obtained through a European patent application, i.e., there is no option to file directly through the national patent office. A European patent may also be extended to Bosnia and Herzegovina, and Montenegro.

After filing, the EPO conducts a search and issues a preliminary opinion on patentability. A substantive examination is then carried out on payment of an examination fee. Examination is carried out in English, French or German. Thus, if an application is filed in another language, a translation into English, French or German must be provided.

After a European patent is granted, it must be validated in each contracting state in which protection is desired. Validation entails the payment of national fees, and for some states, translation of the claims or the entire patent. Once validated, maintenance fees are payable in each state at varying rates.

Like the PCT process, the European regional patent process allows applicants to defer the payment of national fees. In addition, since substantive examination is conducted centrally, costs for local representation may be reduced; absent a European application, representation may be required for each country's examination process. Of course, these benefits must be balanced against the fees incurred during the regional application stage, including filing, search and examination fees, annual EPO renewal fees beginning in the third year of pendancy, and possibly, the cost of translation into one of the three official languages. As the European patent application process entails fees at both the regional and national levels, it may be more cost-effective to directly file national applications if patent protection is only desired in one or two European states. However, if several states are of interest, a European patent application can be very cost-effective.

Eurasian patent applications. The Eurasian Patent Convention, which came into force in 1995, provides for a unified application process for patents in Azerbaijan, Armenia, Belarus, Kazakhstan, the Kyrgyz Republic, Moldova, Russia, Tajikistan and Turkmenistan.

A Eurasian regional application may be filed directly or may be derived from a PCT application. All documents must be provided in Russian, which is the official language of the Eurasian Patent Office. Administrative fees are payable on filing, and an examination fee is payable prior to the substantive examination of an application. Prior to the payment of this fee, however, a search is conducted and a search report generated, which the applicant can use to assess the prospects for patentability. Further fees are payable if and when the application proceeds to grant.

There is no need to validate a Eurasian patent in the member states. Infringement of a Eurasian patent in a member state entails liability equivalent to that provided in the law of the member state for infringement of a national patent. After grant, maintenance fees must be paid to the Eurasian Patent Office on an annual basis. The amount of such fees is equal to the total that would be payable in all designated member states. Additionally, should the Eurasian Patent Office refuse to grant a Eurasian patent, the applicant may convert the application to a national application in one or more member states. For all of these reasons, the Eurasian patent application offers a cost-effective option for applicants seeking protection in one or more Eurasian member states, with comparatively little downside.

Other regional patent applications. Two regional systems exist for African patent applications. The African Regional Intellectual Property Organization ("ARIPO") administers a common application process for a number of primarily English-speaking countries, namely, Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. The African Intellectual Property Organization/Organisation Africaine de la Propriete Intellectuelle ("OAPI") provides for a common application for a number of primarily French-speaking countries, namely, Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d'Ivoire, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo.

The Gulf Cooperation Council ("GCC") patent system provides for a single application process for all of the member states of the Gulf Cooperation Council, namely, the United Arab Emirates, Bahrain, Saudi Arabia, Oman, Qatar and Kuwait. The GCC cannot be designated for national/regional entry from a PCT application.

Obtaining patent protection in numerous jurisdictions may be critical for some applicants, but can also be involved and very costly. However, by strategically taking advantage of the various international and regional application processes that are available, it may be possible to streamline the process, gain valuable information regarding the prospects for patentability and reduce or defer costs.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.