Albright IP Limited

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International Patent Application vs. Direct Overseas Patent Filing

It is a question which is often asked: should I file an international patent application (“PCT” or Patent Co-operation Treaty), or should I file directly in a number of overseas jurisdictions?

The typical scenario is that you, as the inventor, will have filed a local or domestic patent application in your home territory, such as the USA or the United Kingdom, in order to provide some initial patent protection for your invention. This then enables the inventor to start disclosing the idea in order to try and establish whether there is any merit in investing further funds into the invention, such as for product design and prototyping.

Filing in your home country first is also important as it allows you to start looking at possible markets overseas, without initially having to undergo the expense associated with filing patent applications there. The Paris Convention, to which nearly all major countries of the world and most of the minor countries are signatories, allows a 12 months grace period in which one can file a patent application in one member country, such as the USA or the UK, and then file in other overseas jurisdictions before the first anniversary thereby allowing retrospective or back dating of that later patent filing.

This is of great benefit, since an inventor need not go to the significant expense of filing in many countries straightaway before he or she has had some commercial feedback regarding the idea.

However, once the 12 month grace period for filing overseas does come to an end, what are the options?

Unless you know exactly where your overseas or foreign markets are going to be, and that you will never have any further markets abroad, then the international patent application (“PCT”) route will keep your options open for patent protection in more than one hundred and forty countries worldwide. In other words, the PCT route keeps a significant number of ‘doors’ open for you worldwide while you try and decide which markets might be of interest.

The PCT route therefore provides flexibility and keeps your options open.

Furthermore, although an international patent application is a reasonable expense, it is also the cheaper option in the short term thus reducing your costs early on.

Additionally, if a competitor is monitoring your patent activity, the PCT route will keep them guessing due to large number of jurisdictions that the international patent application extends.

So what are the downsides to an international (“PCT”) patent application? Firstly, no international or worldwide patent is granted. The international patent application, if filed at or near to the first anniversary of your first domestic patent filing, will in essence ‘buy’ you an extra 18 months of time to explore market possibilities overseas. At the end of this further 18 months of time, you will have to choose which countries covered by the international patent application you actually want patent protection in, and then the international patent application has to undergo a conversion process to convert it into the chosen national patent application (i.e. a local patent application in the USA, UK, Australia, Japan, China, etc.), and/or the chosen regional patent application (i.e. a patent application covering Europe, Eurasia, etc.). And there are reasonably significant costs at this conversion stage similar to those if direct filing.

Once converted, the international patent application effectively dies, and you pursue the converted national and/or regional patent applications before the respective local or regional patent offices in the normal way.

The other option, mentioned above, is to consider filing direct patent applications in your selected jurisdictions overseas instead of opting for the PCT route. Generally, this will be more expensive in the shorter term, but slightly cheaper in the longer run because you will have cut out the middle portion of filing the international patent application.

The downside to filing directly in overseas jurisdictions at your first anniversary of your local or domestic patent application is that the door of opportunity then closes should you later on find a new market opportunity becomes available that requires patent protection. Remember, outside of the first 12 months after your initial patent filing, you can no longer backdate any new patent application and your original patent application may consequently knockout your later filing if it is for the same invention.

However, if you do know exactly where your markets are going to be, and for British inventors these are often Europe and the USA, and you are happy to effectively give up the chance of any further patent protection in any other jurisdiction, then this will ultimately be your more cost-effective option in the longer run.

Of course, advice must be provided on a case-by-case basis, but the general outline provided above regarding the pros and cons of international patent applications versus direct overseas patent filings is extremely typical and one that we encounter on a daily basis in our busy patent practice.

If you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European patent attorney.

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What Our Customers Say...

Albright IP Limited
Albright IP Limited
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David Chalk
David Chalk
21:43 02 Jun 20
Great service, attention to detail and truly actionable advice. I've no hesitation in recommending Albright IP and Adrian in particular. Many thanks.read more
George Tatham-Losh
George Tatham-Losh
13:29 05 Feb 20
Fantastic service as always, detailed, informative and all the hard work was done with minimal input from myself. I have been working with Katie and her fantastic team for years and would highly recommend.read more
Christopher James
Christopher James
16:59 20 Jan 20
Choosing Albright IP was one of the best decisions I have made. Adrian and Cloe have both helped me tremendously so far, they are very professional, friendly, prompt and always there to help and answer any questions. Katie Oliver has also been wonderful assisting with the trademark. Thank you all and looking forward to continue to work with you.read more
Richard Hearn
Richard Hearn
16:05 22 Nov 19
Excellent professional advise and extremely honest and upfront people. Many thanks Adrian and your team!
Brian Gibbs
Brian Gibbs
07:32 23 Aug 19
I have absolutely no hesitation in recommending Albright IP Ltd having received superb service and support throughout. Every query I raised was dealt with professionally and very quickly by Will who provided fully detailed and regular updates as well being approachable and friendly at all times. I have full confidence in Albright IP!read more
Warren Philbey
Warren Philbey
10:54 18 Jul 19
From the first call I had a great feeling, polite, friendly, informative and professional. From then it just got better and after a great deal of help and support in understanding our needs we contracted with Albright and they did a fantastic service, exceeding any expectations and proving themselves to be a truly wonderful company to work with. 10 stars! A big thank you to Adrian and his team.read more
Terence Hodgson
Terence Hodgson
23:06 12 Jun 19
I have not had reason to contact Albright for several years since the granting of my Patent but quite recently I did get in touch. It was as I remembered, friendly, professional, honest and informative. It appears that Adrian and the Albright team are there for me no matter the length of time. T Hodgson. UMU HSA Ltdread more
Paul Sims
Paul Sims
12:40 12 Apr 19
Adrian and The Albright Team are Professional and Helpful. It has is a real gem to found such great people to act as part of my extended legal team regards Patents. I am pleased to recommend and have them represent my Registered Patents. Thank you. www.thebluebearpartnership.comread more
Nick Ball
Nick Ball
19:16 12 Mar 19
High quality service at a reasonable price. With Albright you feel you're in very good hands. Marc was always courteous, responsive, well informed and generous with his time. I would have no hesitation recommending Albright or working with them again.read more
Andrew Stewart
Andrew Stewart
16:27 26 Feb 19
Great depth of expertise, advice and counsel. Not only expert advisors, Albright IP provide valuable, balanced and cogent advice on complex (and simple) matters of patent and trademark law. Delivered with great clarity, always available and keen to provide balanced perspectives in support of good outcomes. Great partners, highly recommend.read more
Simon Bradbeer
Simon Bradbeer
11:37 05 Feb 19
After leaving a well known London based attorney Albright IP were recommended to me by a colleague within the group. Since then Adrian and his team have consistently given me superb advice and support whatever the project. With their help the company has been granted a number of robust patents, registered designs and trademarks.read more
Scott Johnson
Scott Johnson
14:59 11 Jan 19
I have known Adrian Hocking for over 10 years. The service he and his colleagues offer is professional, transparent and friendly. If you have an idea that is either completely new or you think is a step-change from what is currently available, I recommend that you contact Albright IP.read more
Hannah Azar
Hannah Azar
11:10 24 Dec 18
Adrian is an exceptionally talented and experienced patent attorney. I was very impressed by the quality of work produced by the team at Albright. A fast, helpful and friendly service.read more
Oliver Pearce
Oliver Pearce
19:11 01 Dec 18
Fantastic one to one service. Knowledgeable. Friendly. Competent. And very rapid response to queries. Very impressed!read more
Simon Folmann
Simon Folmann
21:32 26 Nov 18
Adrian Hocking and Albright IP have offered us excellent service, and expertise over the last 12 months. They explain in detail the processes, implications, and opportunities with obtaining and securing Intellectual Property and for a Product Development company such as ours, it is crucial that the terminology and quality of work be above industry standard. I can with high confidence say, that the delivered work so far from Albright IP and their team, is unparalleled to prior partners we have had in IP; and I am sure it will continue to do so in our future endeavours together.read more
Martin Boyd
Martin Boyd
15:17 03 Nov 18
Excellent technical and legal knowledge. Amazing friendly customer service catered to individual customer needs. Highly recommended.read more
Mike N
Mike N
16:14 08 Oct 18
Albright-IP - We can highly recommend Albright-IP, after contacting several patent companies prior to application - we were after a patent company to offer realistic and practical advice, be able to process our claim from start to finish, After speaking with Mr Doherty on the telephone we decided Albright -IP would be able to offer the skills and knowledge required for our application and asked them to represent us. Albright-IP were on hand to explain the complexities of the process and how our claim may or may not be defended in the real world, Mr Will Doherty is our patent attorney, he was professional and attentive, his knowledge and customer service is very good. We are confident our patent application is in good hands and we are pleased to have Alrbight IP there to assist us with our application, without their input we may well have been wasting our time due to our lack of knowledge in this complex matter.read more
Jeffrey Chua
Jeffrey Chua
08:47 14 Sep 18
We worked with Albright IP Limited on patent applications in EU and UK, specifically through Cloe Loo. Cloe and her team have done a fantastic job. We were glad to have assistance from Albright on our patent application journey. I am impressed by the team's professionalism and we will be engaging Albright to be our long-term legal adviser in patent applications.read more
Graham Kelly
Graham Kelly
17:49 07 Sep 18
I have a granted patent! thanks to Will and the team at Albright. ? Friendly and helpful service, it's great how they can very quickly grasp the required understanding of your idea and put pen to paper and draft a patent. Will was great at pointing out what are valid aspects of my idea and taking me through the process of what that means in patent language! A few more steps to go to hopefully gain the overseas coverage. ?read more
Geraint Morgan
Geraint Morgan
09:44 21 Aug 18
Albright IP provided an excellent, efficient, affordable high quality service that made the whole patent filing experience an enjoyable one - contrary to previous experiences. We are certainly more likely to consider patenting our innovations in the future based on our recent experience and would highly recommend Albright IP to others.......read more
Don Spence
Don Spence
12:07 09 Aug 18
Filing patents can be a steep learning curve but Adrian does an excellent job explaining the process. Adrian and his associates are easy to contact and they will always answer your questions. Money and cost are important and the Albright team do their best to make sure your $$ is spent in a wise fashion. After working with Albright for 6 years, I am happy with their work and I have no reason to change companies. My many thanks for professional service.read more
Graeme Allison
Graeme Allison
22:54 31 Jul 18
Adrian and his team provided and excellent service, their technical understanding is fantastic and patent advice has been impeccable, I’d highly recommend Albright IP should you be looking for patent expertise.read more
Mark Hendriksen
Mark Hendriksen
16:12 17 Jul 18
Exceptional. Guided me through the process in clear understandable steps. Hoping we have a long and successful future ahead with the patents they've so expertly managed for me so far.read more
jing cheng
jing cheng
13:12 19 Jun 18
I contacted Adrain for advise in a short time frame. He is very professional and clear about price policy. He has very good understanding of online business and IP law. He is very quick responding and speakes the language I understand. Highly recommended.read more
Lorenzo Rimoldi
Lorenzo Rimoldi
12:44 07 Jun 18
Adrian was very helpful, upfront and clear on processes, costs and timeline. He's very professional and proactive in his involvement and support. I would definitely recommend Albright IP.read more
Mohammed Deria
Mohammed Deria
04:06 01 Jun 18
Adrian is a true professional at the top of his field! Due to his background in engineering, Adrian effortlessly understand the needs of his client even when it is highly technical in nature. An attentive ear and huge generosity with his time, Adrian's support to us as a client has been extremely valuable. I would highly recommend Adrian and the team at Albright IP for protecting your IP.read more
Guy Procter
Guy Procter
17:36 21 May 18
What can I say, excellent help so far! Very clear and helpful service, explained in terms you can understand covered everything I thought I needed and then some more to give me all the options available. More than willing to recommend Albright IP.read more
Kirishan Siva
Kirishan Siva
09:14 17 Dec 17
The Albright team were extremely helpful and knowledgeable in the whole patent process for our product and went through each process in registering patent to help us understand this fully. Highly recommend Adrian and team for their knowledge, efficiency and professional service!read more
Jade Baron
Jade Baron
16:05 25 Nov 17
Adrian Hocking at Albright handled my recent patent application. I've been very happy with his service. He was very responsive to my questions and explained everything thoroughly. He was very supportive of my idea and consistently positive, which was also helpful. Albright has relationships with various other businesses that help inventors, so it's kind of a like a one-stop-shop. Highly recommend.read more
Meopham Fencing
Meopham Fencing
15:27 08 Nov 17
Great advice and customer service at a reasonable price. They have enabled us to finalise our case satisfactorily. Would happily recommend them and use them again.read more
James Garritt
James Garritt
09:17 17 Oct 17
Adrian and his team have been fantastic in all works asked to do. They have ensured my idea has been protected in every way. They have helped with the design process also and I could not wish for a better team. You may be paying a little more than you feel is expected....but you get what you pay for and you probably save money in the long run. Highly recommended.... use without worry.read more
Tony Laycock
Tony Laycock
16:06 02 Oct 17
I have found that the company has given me excellent service in getting my patent through the process. Every time I have had a phone conversation I have felt I was given plenty of time to discuss what was happening. Along with sound advice I have been able to make great progress. In my opinion it is one of the best companies I have ever dealt with and would be happy to recommend them.read more
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Helpful Tips

When can I talk about my invention?

The general rule is ‘file your patent first, then disclose’. Some countries, eg. USA, do allow disclosure first and then filing within 12 months. But most countries do not, and thus a non-confidential prior disclosure will ‘knock out’ your patent.

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Cheltenham Head Office

Albright IP
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Cheltenham: +44 (0)1242 691801
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Email: info@albright-ip.co.uk

Vat No: 891 4780 86


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