Obtaining a patent outside of the UK

Author: Alex Frost, Chartered and European Patent Attorney

This month Alex Frost explores the options for obtaining patents around the world.

Normally a patent application for an invention made in the UK is first filed at the UK Patent Office. Provided that this first application contains at least a reasonable description of the new idea (and, desirably, some claims or at the very least some generalised statements of the inventive concept behind the idea) it will provide a basis for "claiming priority" up to 12 months later.

What this means in practice is that you have up to 12 months from the initial UK filing date to apply for patents abroad, with those foreign patents taking an effective filing date of the earlier UK application.

Patent coverage option
Foreign filing falls into two basic categories: a direct filing at the 12 month stage (or sooner) in each country of interest, or via a "PCT" (International) patent application also filed before the 12 month deadline. The "direct" route is fine if you are sure you know that you only want protection in a small number of countries (say, the US and the EU) and you are fairly sure that no further countries will become of interest later on.

An International application, by contrast, is a single application, written in English, which represents a bundle of potential rights in perhaps 80% of the countries in the world (and almost all of the largest economies). It does not save costs (the bundle of rights must still be split up, usually around 18 months from the filing date of the PCT application, into the countries of interest) but it does buy you some valuable time to consider the commercial value of the invention.

Expected costs
Obtaining patent rights around the world is a complicated and expensive business! With translations and official fees, costs to obtain patent protection in, say, the US, the EU, Japan, South Korea, Australia and Canada are likely to be in the region of £25-£30,000 (though this is spread over a period of 4-6 years) whichever route is taken (national or PCT). Annual renewal fees are payable for each patent as well, though usually only after grant.

Although in the electronics industry patents are often considered to be the most valuable of the available IP rights, there are of course many other rights, both registrable and unregistrable. These rights are often overlooked or misunderstood.

©2005. Boult Wade Tennant

This article appeared in Vol.22 No. 1 (February 2006) of Components in Electronics.

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