Transcript of "What are-the-different-patent-filing-options-invn tree"
What are the different patent filing options?In simple words, “Patent filing” can be defined as a process of submitting an application in apatent office requesting grant of patent to your invention. If you wish to protect your invention indifferent 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 morecountries. By understanding the various patent filing options, you can construct a patent filingstrategy based on your business objectives and economic constraints. This articles attempts toprovide an overview of the patent filing options you can use. (You may be also interested inreading the article “How much does it cost to get a patent in India”)I will attempt to explian the options in a less complex way without trying to be “politicallycorrect”. The options can be broadly divided into 4 classifications: 1. Filing a provisional patent application 2. Filing a complete patent application in your country 3. Filing a patent application in a foreign country 4. Filing a Patent Cooperation Treaty (PCT) application
1. Filing a provisional patent applicationA provisional patent application is filed to secure a priority date for your invention. A prioritydate is the date on which the first patent application for your invention is filed. This date isimportant 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 begranted to your invention. If you delay filing of the patent application, then naturally, moreknowledge in the public domain gets added to the prior art, hence decreasing the probability ofpatent grant to your invention.Normally, inventors/companies file a provisional application in two senarios. The first senario iswhen time is of concern, and drafting a well constructed complete patent specification mightdelay the patent filing process. This delay in filing, pushes the priority date further, therebyreducing the probability of patent grant to your invention. The second senario is when money isof concern. Depending on the country in which the patent application is filed, there can be asubstantial difference between the provisional and complete application fee that has to be paid tothe patent office. Further, depending on the patent consultant you choose to work with, there canbe substantial difference in the fee charged by the patent consultant to draft a provisional and acomplete specification. Hence, sometimes inventors/companies draft a provisional specificationon their own and file the same.The main difference between a provisional and a complete patent application is, a completeapplication will have a “claim” section, whereas the claim section will be absent in a provisionalapplication. Claims define the scope of your invention and describes what you wish to protect inyour invention.It shall be noted that, a complete patent application has to be filed within 12 months fromthe date of filing the provisional application. Failure to do so will be considered as abondiningthe provisional application. Once abandoned, the advantages of filing the provisional applicationcannot be availed.A provisional application can be filed in the patent office of your country or in a patent office ofany convention countries (Annexure 1- list of contracting countries - Paris conventional).
2. Filing a complete patent application in your countryA complete patent application has to be filed in the patent office of your country if you wish toprotect your invention in your country. A complete patent application can be filed in the firstplace or if you have filed a provisional application provisously, then within 12 months from theprovisional application filing date.A complete patent application in your country can be filed by using any one of the followingoptions: a. 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 priorit date. b. 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. c. Use the PCT route – Explained under option 43. Filing a patent application in a foreign countryIf you wish to wish to protect your invention in a foreign country, you can choose from one ofthe options given below: a. 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 priorit date. b. 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. c. Use the PCT route – Explained in detail below4. Filing a Patent Cooperation Treaty (PCT) applicationFiling a PCT application is a good strategy if you wish to protect your invention in more numberof 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 eachcountry in which you wish to protect your invention. Note that if you had not filed a PCTapplication, then you would have only 12 months duration from the priority date to file patentapplications in each country in which you wish to protect your invention. Another importantpoint to be noted in case of PCT application is that, only comple patent applications are acceptedas PCT applications. Further, a PCT application can be filed in the patent office of your country.A PCT application can be under the following senarious: a. File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, Annexure 2 - list of PCT contracting countries) you wish to protect your invention. b. 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. c. 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 the patent filing strategy may be constructed on a case to case basis. The filingstrategy may depend on business objectives, market conditions and economic constriants, amongother factors.I hope you found this article helpful.Please feel free check our patent services page to find out if we can cater to your patentrequirements. You can also contact us to explore the option of working together.Best regards - Team InvnTreeThis work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
About InvnTreeInvnTree is a people and processes driven company that offers a wide array of patent services.We leverage our technology and patent expertise to provide quality patent services.InvnTree caters to a global clientele that includes technology companies ranging from largecorporations to start-ups, individual inventors, academic institutes, in-house IP counsel, IPlicensing and management companies, law firms, and investors.InvnTree has its delivery centre in Bangalore, India. Our location gives us the leverage to tapinto the best talent available in India. From here, our team of experienced and dedicatedprofessionals, work in accordance with lean processes to deliver high quality services atcompetitive prices. Our team includes professional having advanced degrees in science andengineering, from prestigious institutes; all of who have strong experience is delivering a widearray of patent services.We understand that no two clients are the same, and even for a single client, their needs mayvary over time. Hence, we do not employ a rigid service pricing model. We have an array offlexible client engagement models that are mutually beneficial. We even offer free patentstrategy consulting to our clients.Further, we believe that safeguarding information disclosed by our clients is of paramountimportance. Hence, we have taken stringent legal, technological, process and physical measuresto safeguard sensitive client information. India USA Contact person Kartik Puttaiah Vikas L Jayaram Designation Co-founder and CEO Client engagement executive Email email@example.com firstname.lastname@example.org Phone +91-80-42124165; +91 98863 34262 +1-917-207-9649 Address No. 93, 2nd floor, 21st Main, BSK 2nd www.invntree.com stage, Bangalore – 560070,
Annexure 1 - Contracting Parties > Paris Convention (Total ContractingParties : 173)Data sourced from WIPO website www.wipo.intCONTRACTING STATUS DATE DETAILSPARTYAlbania In Force October 4, 1995 DetailsAlgeria In Force March 1, 1966 DetailsAndorra In Force June 2, 2004 DetailsAngola In Force December 27, 2007 DetailsAntigua and Barbuda In Force March 17, 2000 DetailsArgentina In Force February 10, 1967 DetailsArmenia In Force December 25, 1991 DetailsAustralia In Force October 10, 1925 DetailsAustria In Force January 1, 1909 DetailsAzerbaijan In Force December 25, 1995 DetailsBahamas In Force July 10, 1973 DetailsBahrain In Force October 29, 1997 DetailsBangladesh In Force March 3, 1991 DetailsBarbados In Force March 12, 1985 DetailsBelarus In Force December 25, 1991 DetailsBelgium In Force July 7, 1884 Details
Belize In Force June 17, 2000 DetailsBenin In Force January 10, 1967 DetailsBhutan In Force August 4, 2000 DetailsBolivia (Plurinational In Force November 4, 1993 DetailsState of)Bosnia and In Force March 1, 1992 DetailsHerzegovinaBotswana In Force April 15, 1998 DetailsBrazil In Force July 7, 1884 DetailsBulgaria In Force June 13, 1921 DetailsBurkina Faso In Force November 19, 1963 DetailsBurundi In Force September 3, 1977 DetailsCambodia In Force September 22, 1998 DetailsCameroon In Force May 10, 1964 DetailsCanada In Force June 12, 1925 DetailsCentral African In Force November 19, 1963 DetailsRepublicChad In Force November 19, 1963 DetailsChile In Force June 14, 1991 DetailsChina In Force March 19, 1985 DetailsColombia In Force September 3, 1996 DetailsComoros In Force April 3, 2005 Details
Congo In Force September 2, 1963 DetailsCosta Rica In Force October 31, 1995 DetailsCôte dIvoire In Force October 23, 1963 DetailsCroatia In Force October 8, 1991 DetailsCuba In Force November 17, 1904 DetailsCyprus In Force January 17, 1966 DetailsCzech Republic In Force January 1, 1993 DetailsDemocratic Peoples In Force June 10, 1980 DetailsRepublic of KoreaDemocratic Republic In Force January 31, 1975 Detailsof the CongoDenmark In Force October 1, 1894 DetailsDjibouti In Force May 13, 2002 DetailsDominica In Force August 7, 1999 DetailsDominican Republic In Force July 11, 1890 DetailsEcuador In Force June 22, 1999 DetailsEgypt In Force July 1, 1951 DetailsEl Salvador In Force February 19, 1994 DetailsEquatorial Guinea In Force June 26, 1997 DetailsEstonia In Force August 24, 1994 DetailsFinland In Force September 20, 1921 Details
France In Force July 7, 1884 DetailsGabon In Force February 29, 1964 DetailsGambia In Force January 21, 1992 DetailsGeorgia In Force December 25, 1991 DetailsGermany In Force May 1, 1903 DetailsGhana In Force September 28, 1976 DetailsGreece In Force October 2, 1924 DetailsGrenada In Force September 22, 1998 DetailsGuatemala In Force August 18, 1998 DetailsGuinea In Force February 5, 1982 DetailsGuinea-Bissau In Force June 28, 1988 DetailsGuyana In Force October 25, 1994 DetailsHaiti In Force July 1, 1958 DetailsHoly See In Force September 29, 1960 DetailsHonduras In Force February 4, 1994 DetailsHungary In Force January 1, 1909 DetailsIceland In Force May 5, 1962 DetailsIndia In Force December 7, 1998 DetailsIndonesia In Force December 24, 1950 DetailsIran (Islamic Republic In Force December 16, 1959 Detailsof)
Iraq In Force January 24, 1976 DetailsIreland In Force December 4, 1925 DetailsIsrael In Force March 24, 1950 DetailsItaly In Force July 7, 1884 DetailsJamaica In Force December 24, 1999 DetailsJapan In Force July 15, 1899 DetailsJordan In Force July 17, 1972 DetailsKazakhstan In Force December 25, 1991 DetailsKenya In Force June 14, 1965 DetailsKyrgyzstan In Force December 25, 1991 DetailsLao Peoples In Force October 8, 1998 DetailsDemocratic RepublicLatvia In Force September 7, 1993 DetailsLebanon In Force September 1, 1924 DetailsLesotho In Force September 28, 1989 DetailsLiberia In Force August 27, 1994 DetailsLibyan Arab In Force September 28, 1976 DetailsJamahiriyaLiechtenstein In Force July 14, 1933 DetailsLithuania In Force May 22, 1994 DetailsLuxembourg In Force June 30, 1922 Details
Madagascar In Force December 21, 1963 DetailsMalawi In Force July 6, 1964 DetailsMalaysia In Force January 1, 1989 DetailsMali In Force March 1, 1983 DetailsMalta In Force October 20, 1967 DetailsMauritania In Force April 11, 1965 DetailsMauritius In Force September 24, 1976 DetailsMexico In Force September 7, 1903 DetailsMonaco In Force April 29, 1956 DetailsMongolia In Force April 21, 1985 DetailsMontenegro In Force June 3, 2006 DetailsMorocco In Force July 30, 1917 DetailsMozambique In Force July 9, 1998 DetailsNamibia In Force January 1, 2004 DetailsNepal In Force June 22, 2001 DetailsNetherlands In Force July 7, 1884 DetailsNew Zealand In Force July 29, 1931 DetailsNicaragua In Force July 3, 1996 DetailsNiger In Force July 5, 1964 DetailsNigeria In Force September 2, 1963 Details
Norway In Force July 1, 1885 DetailsOman In Force July 14, 1999 DetailsPakistan In Force July 22, 2004 DetailsPanama In Force October 19, 1996 DetailsPapua New Guinea In Force June 15, 1999 DetailsParaguay In Force May 28, 1994 DetailsPeru In Force April 11, 1995 DetailsPhilippines In Force September 27, 1965 DetailsPoland In Force November 10, 1919 DetailsPortugal In Force July 7, 1884 DetailsQatar In Force July 5, 2000 DetailsRepublic of Korea In Force May 4, 1980 DetailsRepublic of Moldova In Force December 25, 1991 DetailsRomania In Force October 6, 1920 DetailsRussian Federation In Force July 1, 1965 DetailsRwanda In Force March 1, 1984 DetailsSaint Kitts and Nevis In Force April 9, 1995 DetailsSaint Lucia In Force June 9, 1995 DetailsSaint Vincent and the In Force August 29, 1995 DetailsGrenadinesSan Marino In Force March 4, 1960 Details
Sao Tome and In Force May 12, 1998 DetailsPrincipeSaudi Arabia In Force March 11, 2004 DetailsSenegal In Force December 21, 1963 DetailsSerbia In Force April 27, 1992 DetailsSeychelles In Force November 7, 2002 DetailsSierra Leone In Force June 17, 1997 DetailsSingapore In Force February 23, 1995 DetailsSlovakia In Force January 1, 1993 DetailsSlovenia In Force June 25, 1991 DetailsSouth Africa In Force December 1, 1947 DetailsSpain In Force July 7, 1884 DetailsSri Lanka In Force December 29, 1952 DetailsSudan In Force April 16, 1984 DetailsSuriname In Force November 25, 1975 DetailsSwaziland In Force May 12, 1991 DetailsSweden In Force July 1, 1885 DetailsSwitzerland In Force July 7, 1884 DetailsSyrian Arab Republic In Force September 1, 1924 DetailsTajikistan In Force December 25, 1991 DetailsThailand In Force August 2, 2008 Details
The former Yugoslav In Force September 8, 1991 DetailsRepublic ofMacedoniaTogo In Force September 10, 1967 DetailsTonga In Force June 14, 2001 DetailsTrinidad and Tobago In Force August 1, 1964 DetailsTunisia In Force July 7, 1884 DetailsTurkey In Force October 10, 1925 DetailsTurkmenistan In Force December 25, 1991 DetailsUganda In Force June 14, 1965 DetailsUkraine In Force December 25, 1991 DetailsUnited Arab Emirates In Force September 19, 1996 DetailsUnited Kingdom In Force July 7, 1884 DetailsUnited Republic of In Force June 16, 1963 DetailsTanzaniaUnited States of In Force May 30, 1887 DetailsAmericaUruguay In Force March 18, 1967 DetailsUzbekistan In Force December 25, 1991 DetailsVenezuela (Bolivarian In Force September 12, 1995 DetailsRepublic of)Viet Nam In Force March 8, 1949 DetailsYemen In Force February 15, 2007 Details
Zambia In Force April 6, 1965 DetailsZimbabwe In Force April 18, 1980 Details
Annexure 2 - list of PCT contracting countriesData sourced from USPTO website www.uspto.gov Name of State followed Date on which State by Country Code became bound by the PCT* Albania AL 4 October 1995 Algeria DZ 1 8 March 2000 Antigua and Barbuda AG 17 March 2000 Armenia AM 1 25 December 1991 Australia AU 31 March 1980 Austria AT 23 April 1979 Azerbaijan AZ 25 December 1995 Barbados BB 12 March 1985 Belarus BY 1 25 December 1991 Belgium BE 14 December 1981 Belize BZ 17 June 2000 Benin BJ 26 February 1987 Bosnia and Herzegovina BA 7 September 1996 Botswana BW 30 October 2003 Brazil BR 9 April 1978 Bulgaria BG 21 May 1984
Burkina Faso BF 21 March 1989Cameroon CM 24 January 1978Canada CA 2 January 1990Central African Republic CF 24 January 1978Chad TD 24 January 1978China CN 1 January 1994Colombia CO 28 February 2001Comoros KM 3 April 2005Congo CG 24 January 1978Costa Rica CR 3 August 1999Côte dIvoire CI 30 April 1991Croatia HR 1 July 1998Cuba CU 1 16 July 1996Cyprus CY 1 April 1998Czech Republic CZ 1 January 1993Democratic Peoples Republic of 8 July 1980Korea KPDenmark DK 1 December 1978Dominica DM 7 August 1999Ecuador EC 7 May 2001
Egypt EG 6 September 2003El Salvador SV 17 August 2006Equatorial Guinea GQ 17 July 2001Estonia EE 24 August 1994Finland FI 2 1 October 1980France FR 1, 3 25 February 1978Gabon GA 24 January 1978Gambia GM 9 December 1997Georgia GE 1 25 December 1991Germany DE 24 January 1978Ghana GH 26 February 1997Greece GR 9 October 1990Grenada GD 22 September 1998 (will become bound on 14Guatemala GT October 2006)Guinea GN 27 May 1991Guinea-Bissau GW 12 December 1997Honduras HN 20 June 2006Hungary HU 1 27 June 1980Iceland IS 23 March 1995
India IN 1 7 December 1998Indonesia ID 1 5 September 1997Ireland IE 1 August 1992Israel IL 1 June 1996Italy IT 28 March 1985Japan JP 1 October 1978Kazakhstan KZ 1 25 December 1991Kenya KE 8 June 1994Kyrgyzstan KG 1 25 December 1991Lao Peoples Democratic Republic 14 June 2006LALatvia LV 7 September 1993Lesotho LS 21 October 1995Liberia LR 27 August 1994Libyan Arab Jamahiriya LY 15 September 2005Liechtenstein LI 19 March 1980Lithuania LT 5 July 1994Luxembourg LU 30 April 1978Madagascar MG 24 January 1978Malawi MW 24 January 1978
Malaysia MY1 16 August 2006Mali ML 19 October 1984Mauritania MR 13 April 1983Mexico MX 1 January 1995Monaco MC 22 June 1979Mongolia MN 27 May 1991Morocco MA 8 October 1999Mozambique MZ 1 18 May 2000Namibia NA 1 January 2004Netherlands NL 4 10 July 1979New Zealand NZ 1 December 1992Nicaragua NI 6 March 2003Niger NE 21 March 1993Nigeria NG 8 May 2005Norway NO 2 1 January 1980Oman OM 1 26 October 2001Papua New Guinea PG 14 June 2003Philippines PH 17 August 2001Poland PL 2 25 December 1990Portugal PT 24 November 1992
Republic of Korea KR 10 August 1984Republic of Moldova MD 1 25 December 1991Romania RO 1 23 July 1979Russian Federation RU 1 29 March 1978Saint Kitts and Nevis KN 27 October 2005Saint Lucia LC 1 30 August 1996Saint Vincent and the Grenadines 6 August 2002VC1San Marino SM 14 December 2004Senegal SN 24 January 1978Serbia and Montenegro YU 1 February 1997Seychelles SC 7 November 2002Sierra Leone SL 17 June 1997Singapore SG 23 February 1995Slovakia SK 1 January 1993Slovenia SI 1 March 1994South Africa ZA 1 16 March 1999Spain ES 16 November 1989Sri Lanka LK 26 February 1982Sudan SD 16 April 1984
Swaziland SZ 20 September 1994Sweden SE 2 17 May 1978Switzerland CH 24 January 1978Syrian Arab Republic SY 26 June 2003Tajikistan TJ 1 25 December 1991The former Yugoslav Republic of 10 August 1995Macedonia MKTogo TG 24 January 1978Trinidad and Tobago TT 10 March 1994Tunisia TN 1 10 December 2001Turkey TR 1 January 1996Turkmenistan TM 1 25 December 1991Uganda UG 9 February 1995Ukraine UA 1 25 December 1991United Arab Emirates AE 10 March 1999United Kingdon GB 5 24 January 1978United Republic of Tanzania TZ 14 September 1999United States of America US 6, 7 24 January 1978Uzebekistan UZ 1 25 December 1991Viet Nam VN 10 March 1993
Zambia ZM 15 November 2001Zimbabwe ZW 11 June 1997* All PCT Contracting States are bound by Chapter II of the PCT relating to the international preliminary examination.1 With the declaration provided for in Article 64(5)2 With the declaration provided for in Article 64(2)(a)(ii)3 Including all Overseas Departments and Territories.4 Ratification for the Kingdom in Europe, the Netherlands Antilles and Aruba.5 Extends to the Isle of Man.6 With the declarations provided for in Articles 64(3)(a) and 64(4)(a).7 Extends to all areas for which the United States of America has international responsibility.