What are-the-different-patent-filing-options-invn tree
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What are the different patent filing options? In simple words, “Patent filing ” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different 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 more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading 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 “politically correct”. 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
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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 a
patent office requesting grant of patent to your invention. If you wish to protect your invention in
different 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 more
countries. By understanding the various patent filing options, you can construct a patent filing
strategy based on your business objectives and economic constraints. This articles attempts to
provide an overview of the patent filing options you can use. (You may be also interested in
reading 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 “politically
correct”. 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 application
A provisional patent application is filed to secure a priority date for your invention. A priority
date is the date on which the first patent application for your invention is filed. This date is
important 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 be
granted to your invention. If you delay filing of the patent application, then naturally, more
knowledge in the public domain gets added to the prior art, hence decreasing the probability of
patent grant to your invention.
Normally, inventors/companies file a provisional application in two senarios. The first senario is
when time is of concern, and drafting a well constructed complete patent specification might
delay the patent filing process. This delay in filing, pushes the priority date further, thereby
reducing the probability of patent grant to your invention. The second senario is when money is
of concern. Depending on the country in which the patent application is filed, there can be a
substantial difference between the provisional and complete application fee that has to be paid to
the patent office. Further, depending on the patent consultant you choose to work with, there can
be substantial difference in the fee charged by the patent consultant to draft a provisional and a
complete specification. Hence, sometimes inventors/companies draft a provisional specification
on their own and file the same.
The main difference between a provisional and a complete patent application is, a complete
application will have a “claim” section, whereas the claim section will be absent in a provisional
application. Claims define the scope of your invention and describes what you wish to protect in
your invention.
It shall be noted that, a complete patent application has to be filed within 12 months from
the date of filing the provisional application. Failure to do so will be considered as abondining
the provisional application. Once abandoned, the advantages of filing the provisional application
cannot be availed.
A provisional application can be filed in the patent office of your country or in a patent office of
any convention countries (Annexure 1- list of contracting countries - Paris conventional).
2. Filing a complete patent application in your country
A complete patent application has to be filed in the patent office of your country if you wish to
protect your invention in your country. A complete patent application can be filed in the first
place or if you have filed a provisional application provisously, then within 12 months from the
provisional application filing date.
A complete patent application in your country can be filed by using any one of the following
options:
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 4
3. Filing a patent application in a foreign country
If you wish to wish to protect your invention in a foreign country, you can choose from one of
the 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 below
4. Filing a Patent Cooperation Treaty (PCT) application
Filing a PCT application is a good strategy if you wish to protect your invention in more number
of 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 each
country in which you wish to protect your invention. Note that if you had not filed a PCT
application, then you would have only 12 months duration from the priority date to file patent
applications in each country in which you wish to protect your invention. Another important
point to be noted in case of PCT application is that, only comple patent applications are accepted
as 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 filing
strategy may depend on business objectives, market conditions and economic constriants, among
other 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 patent
requirements. You can also contact us to explore the option of working together.
Best regards - Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
About InvnTree
InvnTree 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 large
corporations to start-ups, individual inventors, academic institutes, in-house IP counsel, IP
licensing and management companies, law firms, and investors.
InvnTree has its delivery centre in Bangalore, India. Our location gives us the leverage to tap
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array of patent services.
We understand that no two clients are the same, and even for a single client, their needs may
vary over time. Hence, we do not employ a rigid service pricing model. We have an array of
flexible client engagement models that are mutually beneficial. We even offer free patent
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Further, we believe that safeguarding information disclosed by our clients is of paramount
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Annexure 1 - Contracting Parties > Paris Convention (Total Contracting
Parties : 173)
Data sourced from WIPO website www.wipo.int
CONTRACTING
PARTY
STATUS DATE DETAILS
Albania In Force October 4, 1995 Details
Algeria In Force March 1, 1966 Details
Andorra In Force June 2, 2004 Details
Angola In Force December 27, 2007 Details
Antigua and Barbuda In Force March 17, 2000 Details
Argentina In Force February 10, 1967 Details
Armenia In Force December 25, 1991 Details
Australia In Force October 10, 1925 Details
Austria In Force January 1, 1909 Details
Azerbaijan In Force December 25, 1995 Details
Bahamas In Force July 10, 1973 Details
Bahrain In Force October 29, 1997 Details
Bangladesh In Force March 3, 1991 Details
Barbados In Force March 12, 1985 Details
Belarus In Force December 25, 1991 Details
Belgium In Force July 7, 1884 Details
Belize In Force June 17, 2000 Details
Benin In Force January 10, 1967 Details
Bhutan In Force August 4, 2000 Details
Bolivia (Plurinational
State of)
In Force November 4, 1993 Details
Bosnia and
Herzegovina
In Force March 1, 1992 Details
Botswana In Force April 15, 1998 Details
Brazil In Force July 7, 1884 Details
Bulgaria In Force June 13, 1921 Details
Burkina Faso In Force November 19, 1963 Details
Burundi In Force September 3, 1977 Details
Cambodia In Force September 22, 1998 Details
Cameroon In Force May 10, 1964 Details
Canada In Force June 12, 1925 Details
Central African
Republic
In Force November 19, 1963 Details
Chad In Force November 19, 1963 Details
Chile In Force June 14, 1991 Details
China In Force March 19, 1985 Details
Colombia In Force September 3, 1996 Details
Comoros In Force April 3, 2005 Details
Congo In Force September 2, 1963 Details
Costa Rica In Force October 31, 1995 Details
Côte d'Ivoire In Force October 23, 1963 Details
Croatia In Force October 8, 1991 Details
Cuba In Force November 17, 1904 Details
Cyprus In Force January 17, 1966 Details
Czech Republic In Force January 1, 1993 Details
Democratic People's
Republic of Korea
In Force June 10, 1980 Details
Democratic Republic
of the Congo
In Force January 31, 1975 Details
Denmark In Force October 1, 1894 Details
Djibouti In Force May 13, 2002 Details
Dominica In Force August 7, 1999 Details
Dominican Republic In Force July 11, 1890 Details
Ecuador In Force June 22, 1999 Details
Egypt In Force July 1, 1951 Details
El Salvador In Force February 19, 1994 Details
Equatorial Guinea In Force June 26, 1997 Details
Estonia In Force August 24, 1994 Details
Finland In Force September 20, 1921 Details
France In Force July 7, 1884 Details
Gabon In Force February 29, 1964 Details
Gambia In Force January 21, 1992 Details
Georgia In Force December 25, 1991 Details
Germany In Force May 1, 1903 Details
Ghana In Force September 28, 1976 Details
Greece In Force October 2, 1924 Details
Grenada In Force September 22, 1998 Details
Guatemala In Force August 18, 1998 Details
Guinea In Force February 5, 1982 Details
Guinea-Bissau In Force June 28, 1988 Details
Guyana In Force October 25, 1994 Details
Haiti In Force July 1, 1958 Details
Holy See In Force September 29, 1960 Details
Honduras In Force February 4, 1994 Details
Hungary In Force January 1, 1909 Details
Iceland In Force May 5, 1962 Details
India In Force December 7, 1998 Details
Indonesia In Force December 24, 1950 Details
Iran (Islamic Republic
of)
In Force December 16, 1959 Details
Iraq In Force January 24, 1976 Details
Ireland In Force December 4, 1925 Details
Israel In Force March 24, 1950 Details
Italy In Force July 7, 1884 Details
Jamaica In Force December 24, 1999 Details
Japan In Force July 15, 1899 Details
Jordan In Force July 17, 1972 Details
Kazakhstan In Force December 25, 1991 Details
Kenya In Force June 14, 1965 Details
Kyrgyzstan In Force December 25, 1991 Details
Lao People's
Democratic Republic
In Force October 8, 1998 Details
Latvia In Force September 7, 1993 Details
Lebanon In Force September 1, 1924 Details
Lesotho In Force September 28, 1989 Details
Liberia In Force August 27, 1994 Details
Libyan Arab
Jamahiriya
In Force September 28, 1976 Details
Liechtenstein In Force July 14, 1933 Details
Lithuania In Force May 22, 1994 Details
Luxembourg In Force June 30, 1922 Details
Madagascar In Force December 21, 1963 Details
Malawi In Force July 6, 1964 Details
Malaysia In Force January 1, 1989 Details
Mali In Force March 1, 1983 Details
Malta In Force October 20, 1967 Details
Mauritania In Force April 11, 1965 Details
Mauritius In Force September 24, 1976 Details
Mexico In Force September 7, 1903 Details
Monaco In Force April 29, 1956 Details
Mongolia In Force April 21, 1985 Details
Montenegro In Force June 3, 2006 Details
Morocco In Force July 30, 1917 Details
Mozambique In Force July 9, 1998 Details
Namibia In Force January 1, 2004 Details
Nepal In Force June 22, 2001 Details
Netherlands In Force July 7, 1884 Details
New Zealand In Force July 29, 1931 Details
Nicaragua In Force July 3, 1996 Details
Niger In Force July 5, 1964 Details
Nigeria In Force September 2, 1963 Details
Norway In Force July 1, 1885 Details
Oman In Force July 14, 1999 Details
Pakistan In Force July 22, 2004 Details
Panama In Force October 19, 1996 Details
Papua New Guinea In Force June 15, 1999 Details
Paraguay In Force May 28, 1994 Details
Peru In Force April 11, 1995 Details
Philippines In Force September 27, 1965 Details
Poland In Force November 10, 1919 Details
Portugal In Force July 7, 1884 Details
Qatar In Force July 5, 2000 Details
Republic of Korea In Force May 4, 1980 Details
Republic of Moldova In Force December 25, 1991 Details
Romania In Force October 6, 1920 Details
Russian Federation In Force July 1, 1965 Details
Rwanda In Force March 1, 1984 Details
Saint Kitts and Nevis In Force April 9, 1995 Details
Saint Lucia In Force June 9, 1995 Details
Saint Vincent and the
Grenadines
In Force August 29, 1995 Details
San Marino In Force March 4, 1960 Details
Sao Tome and
Principe
In Force May 12, 1998 Details
Saudi Arabia In Force March 11, 2004 Details
Senegal In Force December 21, 1963 Details
Serbia In Force April 27, 1992 Details
Seychelles In Force November 7, 2002 Details
Sierra Leone In Force June 17, 1997 Details
Singapore In Force February 23, 1995 Details
Slovakia In Force January 1, 1993 Details
Slovenia In Force June 25, 1991 Details
South Africa In Force December 1, 1947 Details
Spain In Force July 7, 1884 Details
Sri Lanka In Force December 29, 1952 Details
Sudan In Force April 16, 1984 Details
Suriname In Force November 25, 1975 Details
Swaziland In Force May 12, 1991 Details
Sweden In Force July 1, 1885 Details
Switzerland In Force July 7, 1884 Details
Syrian Arab Republic In Force September 1, 1924 Details
Tajikistan In Force December 25, 1991 Details
Thailand In Force August 2, 2008 Details
The former Yugoslav
Republic of
Macedonia
In Force September 8, 1991 Details
Togo In Force September 10, 1967 Details
Tonga In Force June 14, 2001 Details
Trinidad and Tobago In Force August 1, 1964 Details
Tunisia In Force July 7, 1884 Details
Turkey In Force October 10, 1925 Details
Turkmenistan In Force December 25, 1991 Details
Uganda In Force June 14, 1965 Details
Ukraine In Force December 25, 1991 Details
United Arab Emirates In Force September 19, 1996 Details
United Kingdom In Force July 7, 1884 Details
United Republic of
Tanzania
In Force June 16, 1963 Details
United States of
America
In Force May 30, 1887 Details
Uruguay In Force March 18, 1967 Details
Uzbekistan In Force December 25, 1991 Details
Venezuela (Bolivarian
Republic of)
In Force September 12, 1995 Details
Viet Nam In Force March 8, 1949 Details
Yemen In Force February 15, 2007 Details
Zambia In Force April 6, 1965 Details
Zimbabwe In Force April 18, 1980 Details
Annexure 2 - list of PCT contracting countries
Data sourced from USPTO website www.uspto.gov
Name of State followed
by Country Code
Date on which State
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 1989
Cameroon CM 24 January 1978
Canada CA 2 January 1990
Central African Republic CF 24 January 1978
Chad TD 24 January 1978
China CN 1 January 1994
Colombia CO 28 February 2001
Comoros KM 3 April 2005
Congo CG 24 January 1978
Costa Rica CR 3 August 1999
Côte d'Ivoire CI 30 April 1991
Croatia HR 1 July 1998
Cuba CU 1 16 July 1996
Cyprus CY 1 April 1998
Czech Republic CZ 1 January 1993
Democratic People's Republic of
Korea KP
8 July 1980
Denmark DK 1 December 1978
Dominica DM 7 August 1999
Ecuador EC 7 May 2001
Egypt EG 6 September 2003
El Salvador SV 17 August 2006
Equatorial Guinea GQ 17 July 2001
Estonia EE 24 August 1994
Finland FI 2 1 October 1980
France FR 1, 3
25 February 1978
Gabon GA 24 January 1978
Gambia GM 9 December 1997
Georgia GE 1 25 December 1991
Germany DE 24 January 1978
Ghana GH 26 February 1997
Greece GR 9 October 1990
Grenada GD 22 September 1998
Guatemala GT (will become bound on 14
October 2006)
Guinea GN 27 May 1991
Guinea-Bissau GW 12 December 1997
Honduras HN 20 June 2006
Hungary HU 1 27 June 1980
Iceland IS 23 March 1995
India IN 1 7 December 1998
Indonesia ID 1 5 September 1997
Ireland IE 1 August 1992
Israel IL 1 June 1996
Italy IT 28 March 1985
Japan JP 1 October 1978
Kazakhstan KZ 1 25 December 1991
Kenya KE 8 June 1994
Kyrgyzstan KG 1 25 December 1991
Lao People's Democratic Republic
LA 14 June 2006
Latvia LV 7 September 1993
Lesotho LS 21 October 1995
Liberia LR 27 August 1994
Libyan Arab Jamahiriya LY 15 September 2005
Liechtenstein LI 19 March 1980
Lithuania LT 5 July 1994
Luxembourg LU 30 April 1978
Madagascar MG 24 January 1978
Malawi MW 24 January 1978
Malaysia MY1 16 August 2006
Mali ML 19 October 1984
Mauritania MR 13 April 1983
Mexico MX 1 January 1995
Monaco MC 22 June 1979
Mongolia MN 27 May 1991
Morocco MA 8 October 1999
Mozambique MZ 1 18 May 2000
Namibia NA 1 January 2004
Netherlands NL 4 10 July 1979
New Zealand NZ 1 December 1992
Nicaragua NI 6 March 2003
Niger NE 21 March 1993
Nigeria NG 8 May 2005
Norway NO 2 1 January 1980
Oman OM 1 26 October 2001
Papua New Guinea PG 14 June 2003
Philippines PH 17 August 2001
Poland PL 2 25 December 1990
Portugal PT 24 November 1992
Republic of Korea KR 10 August 1984
Republic of Moldova MD 1 25 December 1991
Romania RO 1 23 July 1979
Russian Federation RU 1 29 March 1978
Saint Kitts and Nevis KN 27 October 2005
Saint Lucia LC 1 30 August 1996
Saint Vincent and the Grenadines
VC1
6 August 2002
San Marino SM 14 December 2004
Senegal SN 24 January 1978
Serbia and Montenegro YU 1 February 1997
Seychelles SC 7 November 2002
Sierra Leone SL 17 June 1997
Singapore SG 23 February 1995
Slovakia SK 1 January 1993
Slovenia SI 1 March 1994
South Africa ZA 1 16 March 1999
Spain ES 16 November 1989
Sri Lanka LK 26 February 1982
Sudan SD 16 April 1984
Swaziland SZ 20 September 1994
Sweden SE 2 17 May 1978
Switzerland CH 24 January 1978
Syrian Arab Republic SY 26 June 2003
Tajikistan TJ 1 25 December 1991
The former Yugoslav Republic of
Macedonia MK
10 August 1995
Togo TG 24 January 1978
Trinidad and Tobago TT 10 March 1994
Tunisia TN 1 10 December 2001
Turkey TR 1 January 1996
Turkmenistan TM 1 25 December 1991
Uganda UG 9 February 1995
Ukraine UA 1 25 December 1991
United Arab Emirates AE 10 March 1999
United Kingdon GB 5 24 January 1978
United Republic of Tanzania TZ 14 September 1999
United States of America US 6, 7
24 January 1978
Uzebekistan UZ 1 25 December 1991
Viet Nam VN 10 March 1993
Zambia ZM 15 November 2001
Zimbabwe 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.
