Idea Protection by means of patents requires not only detailed description of the invention, but also careful planning and tracking of the patenting process, which altogether is called patent prosecution. Invention patenting is a legal procedure, which is directly related to schedules, strict deadlines and penalty for not complying with them. In most cases there are two types of penalties - surcharge (1) or withdrawal of the application (2), wherein the second follows the first one. Some deadlines feature both options, while some - the most critical ones - have only one end, that is the withdrawal.
Different time-frames for different patent phases
After a patenting strategy is formed, a complete time-frame for applying for the patents and validating them in selected countries must be put in a calendar with popping up reminders, etc. Let's cut it into several sections, which reflect the most popular patenting strategies:
1. The patent will cover just one or two countries. In this case, no regional or PCT patent applications will be required. The timeline will consist only of the national patent procedures in selected countries, whereas only one date is critical - submission of a national application in the second country should be made within 12 months from the earliest priority date (except for provisional applications);
2. The patent will cover multiple counties, but not more than 2-3 within different regions. In this case, no regional patent applications will be needed, but PCT application filing will be indispensable in order to save cost on examination and search. Tracking based on two schedules will be performed. If the priority application is filed as a national application, then tracking starts with national application timeline, wherein the most critical date is the end of 12th month from the priority filing date.
In case the priority is filed as PCT application at once, the most important timeline to follow is the PCT application timeline, provided in the picture below. During the validation phase (national phase of PCT), regular timelines apply as for all national patent applications.
3. The patent will cover tens of countries worldwide. The most popular scenario is following:
national (priority) application => PCT application => Regional Applications => national phase in validation countries.
Therefore the tracking begins with the deadline of 12 months after the priority date, then PCT timeline, followed by regional applications deadlines. And finally - the national phase, when the actual patents are issued. There might be variations of the sequence provided above, such as avoiding the national priority application and filing PCT at the very beginning; or, for some countries, validation follows immediately after PCT phase, because there might be no regional application for selected countries, etc.
Provided above is the PCT timeline. PCT is the most complex type of patent application - it has 7 deadlines and multiple of options for almost each milestone. Everything begins with the priority application date. The priority application might be national, regional or PCT itself. In case it is not a PCT application, then it has to be filed withing 12 months from the priority date.
When filing a PCT application, an international search authority has to be indicated. For UK applicants, only the European Patent Office can be indicated as the International Search Authority. Some other countries can choose between two or more search authorities. Selection of an ISA is important for the validation phase (the search performed in some authorities might be not recognized by some national patent offices) as well as the search fees are different.
European Patent Timeline
Figure 2 represents the timeline for European Patent. It is different from the PCT timeline - the time calculation starts not from the priority, but from the filing date of the European Patent application. Most of the deadlines are related to submission of certain information details and can be avoided if all information is provided on the date of filing.
European Search and national validation
It is natural, that if during the PCT phase the international search was made by EPO, then no additional search has to be made in the EP phase. However, examination is sometimes recommended (will be discussed on a separate topic). Request for extension of the application to the countries in Europe (not European Union) has to be requested by the deadline of 24th month, including payment of the extension fees. Further, the applicant has to request validation in the selected extension states. The term for submission of required forms and translation is typically 3 months, but can be different according to the national patent law of a certain state. It takes another 3 months after submission of the translation for the patent to be granted in a national phase.
Many dates to remember
In conclusion, there are many deadlines to remember for each of the patenting phases. For implementation of extended patenting strategies, one has to note tens of deadlines and communicate with multiple national patent attorneys in the validation countries. For inexperienced patentees this might be a hard task with increased risk to make failures and loosing patent right in some countries. This is where patent attorneys and agents come to help. They usually use sophisticated software tools for deadline tracking and document management. Also, through the years of experience they have collected information from foreign patent attorneys with their fees and contacts in a single database.
After finishing our work with patent drafting, we always recommend reputable attorneys to file patent applications for our customers. Then it is up to the customer to decide, whether to use their services or not. Once again - services from Lithuanian patent attorneys are in line with European standards, but much more cost effective.