In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use.
I will attempt to explain the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications:
- Filing a provisional patent application
- Filing a complete patent application in your country
- Filing a patent application in a foreign country
- Filing a Patent Cooperation Treaty (PCT) application
1. Filing a provisional patent application
A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.
Normally, inventors/companies file a provisional application in two scenarios. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.
The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.
It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.
A provisional application can be filed in the patent office of your country or in a patent office of any convention countries (list of contracting countries – Paris conventional).
2. Filing a complete patent application in your country
A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application previously, then within 12 months from the provisional application filing date.
A complete patent application in your country can be filed by using any one of the following options:
- File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priority date.
- File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.
- Use the PCT route – Explained under option 4
3. Filing a patent application in a foreign country
If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:
- File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.
- File a complete application in any convention country (secure a priority date) and and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.
- Use the PCT route – Explained in detail below
4. Filing a Patent Cooperation Treaty (PCT) application
Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only compel patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.
A PCT application can be under the following scenarios:
- File a provisional application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.
- File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.
- File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.
It should be noted that the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constraints, among other factors.
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[About the author: Kartik Puttaiah is a patent consultant and co-founder of InvnTree Intellectual Property Services Pvt. Ltd., a patent services company based out of Bangalore http://invntree.com/]
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