Patent rights are territorial. A UK patent only protects your invention in the UK. A patent in the US, Japan or China will only protect your invention in those respective territories. Within 12 months of filing a UK patent application it is possible to file a patent application overseas and claim back the initial filing date, known as the “priority date”, of your UK patent application. We will monitor this deadline on your behalf and discuss with you, ahead of the deadline, the best way to secure overseas patent protection.
If your invention warrants protection outside the UK, it is possible to protect your invention by:
· Filing separate national patent applications with the Patent Offices in the territories in which you wish to seek protection;
· Filing an International (PCT) patent application, which effectively reserves the right to file separate national patent applications in many countries for 30 or 31 months from the priority date;
· Filing a European patent application, which allows you to prosecute a single European patent application centrally with the European Patent Office before “converting” the granted European patent into separate national patents in the European states of interest to you and/or into an EU patent (also known as a unitary patent).
The territories covered by an International (PCT) patent application can be viewed at http://www.wipo.int/pct/en/pct_contracting_states.html.
The states covered by a European patent application can be viewed at https://www.epo.org/about-us/foundation/member-states.html.
The states covered by an EU (unitary) patent can be viewed at https://www.epo.org/applying/european/unitary/unitary-patent.html.
It is also important to consider which territories are of interest to you within 12 months of the initial UK filing date to ensure that an appropriate filing strategy is pursued. If appropriate action is not taken by the 12 month deadline, it may not be possible to seek patent protection in all of the territories of interest to you at a later date. Whilst an International (PCT) patent application covers a large number of countries, there are still some countries which are not included and so it is important to bear this in mind when considering your filing strategy.
OVERSEAS NATIONAL APPLICATIONS