INTERNATIONAL PATENTS

Albright IP will prepare a draft patent specification for your approval based on your disclosure to us. In order to keep costs down, it is therefore important to provide as much information as possible about the invention at the outset.

Once approved, a patent application will be prepared and filed. The application will preferably include a description, claims, drawings and an abstract. This is known as a full application. We use an electronic filing system with the International Bureau, and therefore will receive an immediate acknowledgment and official filing receipt.

Sometimes, in order to reduce up-front costs, applications are filed initially without claims and an abstract. We generally advise against this, unless it is absolutely necessary, because new subject matter cannot be added to a patent application, once filed. In other words, late filed claims are limited to the subject matter included in the specification on filing. It also takes longer to receive the search results, which could be very important for your product development.

We normally recommend filing a PCT application that claims priority from a British patent application, after the search report for the British application has issued. This can give a valuable indication of what prior art is known before filing an international application, which can then be tailored accordingly.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Once filed, the application is searched (for example, by the European Patent Office) and an International Search Report (ISR) and Written Opinion (WO) are issued. The Written Opinion sets out the Examiner’s opinion on the novelty (uniqueness) and inventiveness of your invention, and thus the likelihood of being granted a patent.

The ISR + WO can issue within about 4 months or so from filing, if priority to an earlier patent application is claimed. If the PCT application is filed directly, it may take up to 9 months for the ISR + WO to issue.

We will forward the ISR + WO to you and briefly comment on its relevance.

We are happy to discuss the results of the search with you, in order to provide initial guidance and advice. If you should require more detailed analysis or review along with proposing possible claim amendments if necessary, we can provide a competitive cost-estimate.

It is often prudent at this time to also consider the results of the search in light of possible infringement on your part. For example, if you were to put your invention on the market, would it fall within the scope of an earlier patent even though it is an improvement? Albright IP can discuss this with you, provide a quotation, and undertake this analysis.

It is also wise to consider the infringement aspect if you are undergoing prototyping and/or manufacture. It is preferable to make changes earlier on to the design to circumvent a competitor’s patent rather than waiting for launch before discovering issues.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Around 18 months from the date of filing, or from the priority date if priority is claimed, your application is published, together with a copy of the search report (if established). Once a PCT patent application has been published, files relating to it are available for public inspection and bibliographic data is available to the public on PatentScope (WIPO’s international patent database).

Albright IP will record the details and dates of the published application when it is received, and a copy of the publication will be forwarded to you.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Optionally, International Preliminary Examination (IPE) can be requested and a fee paid, either 22 months from the priority date or 3 months after issuance of the ISR + WO, which results in an Examination Report being issued.

This is useful if amendment of the application proves necessary. In any event, an International Preliminary Report on Patentability (IPRP) is always issued to the Patent Offices in the countries covered by the application.

We can advise you on a case by case basis and whether or not we believe requesting IPE would be beneficial, in view of the costs involved.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

At 30 or 31 months from the priority date, the application leaves the International Phase. Before this happens, you need to choose territories in which to pursue patent protection during the National Phase (or Regional Phase). Albright IP will contact you in good time beforehand and guide you through this procedure with commercial and proactive advice.

National and regional applications are made in your countries of interest based on the international application as it stands following any amendments in the International Phase.

For example, you may wish to convert your PCT application into a European patent application which is a Regional phase application. Conversion of your PCT application in the United States, Australia, Canada, China and Japan, for example, would result in corresponding National Phase applications.

Any converted applications are then prosecuted individually before the local national or regional Patent Offices. Again, Albright IP will guide you through this entire process.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

The Patent Cooperation Treaty (as modified in 2001)

Regulations under the Patent Cooperation Treaty (as of July 2015)