Protect your patent abroad

Total: 157.  Status on February 14, 2023

Priority Right Claim

Nationals of any signatory country of the Paris Convention, for instance Spain, may claim their non-extendable one year right of priority from the earliest national patent application when a PCT Patent application is filed internationally. The WIPO is also member of the Paris Convention, allowing applicants of a PCT Patent application to claim a priority right within 12 months (one year), if this is the earliest application, when they file successive patent applications in other national or regional patent Offices abroad that are members of the Paris Union.

Languages

A PCT patent application can be filed in at least one language from which no translation is required for either PCT international search or publication purposes. These can be published in one of the following languages; Spanish, English, French, German, Chinese, Japanese, Korean, Portuguese, Arabic and Russian.

Who May Apply?

All natural persons and legal entities who are a resident or national of any signatory country may apply for a PCT.

Common Mistakes and Suggestions

As patent practitioners, we observe some but very often mistakes made by inventors, which can jeopardize the patent process, negatively affect its validity and protection or even can prevent the invention from being appropriately marketed or cause multiple Office objections after the PCT has entered the national stages abroad. We should suggest you to:

Choose A Patent Agent

You can act on your own for patent filing, but if you have no proficiency in international patent law practice and relevant conventions, then you should be guided and represented by qualified patent professionals (a registered IP agent), who are specialized and skilled in the undertaking of every complex tasks with the Office, either for the search an draft of the patent claims before it is filed, as well as for duly attending the usual arising actions throughout the examination proceedings, helping you to ensure the desired success during the process and hence on the result and strength of the enforceable right obtained, because failing to take a relevant action concerning the amendment or on the patentability during the international phase, might mean that you will multiply those Office objections by the number of countries where you decide later to enter into the national phase, considering the high expenses for responding these actions before each national Office.

Protect Before Disclosing

The invention should be secretly kept until the date of filing, since that prior disclosure may destroy the novelty requirement of the patent. – Search Before Filing. Before applying for a patent, it is advisable to carry out a patent search and evaluate the prior art and near patents to ensure your invention is new. Conducting a patent search is a smart first step to take before investing a lot of time and money into the patent process (not just a simple Google search to know if the product exists). Not only will you know if there are any similar patents in the prior art, you will be able to use the results to better define your invention and include only that patentable matter.

Marketability of Your Invention

You should figure out whether potential consumers will have any interest in the invention. Sometimes, inventions are not commercially attractive; they are not marketable and consumers or manufacturers show no interest on the patent or on its exploitation. The solution to a given problem is not completely solved, it is too complex or the idea of the value of the invention is impractical. – Patent Promotion. Do not wait for someone to buy your patent. If you will not be directly engaged in the exploitation of your invention, then you should actively promote it towards manufacturers, distributors, retailers or to anyone operating in the particular industrial field of the invention. This task should be done continuously, from the moment you have obtained the official receipt that confirms the filing of the patent application, so you can seek meanwhile for the needed investment, co-funding from anyone who is potentially interested in participating jointly with the costs for the extension of your patent rights abroad, or in the local marketability of the invention in exchange of a license agreement.

We can advise you if you are deciding on a valuable patent protection strategy and planning, you want to license your patent, or if your invention is being infringed by others and you want to take effective enforcement action in the Commercial Court. We would comply with the international practice and smooth the prosecution step by step and will always propose and take the best solution to overcome any official objection that arises during the procedure by taking care of the scope of the invention as well as foreseeing possible situations that could happen in the future for each specific patent application. The value-added patent services we provide can be summarized as follows:

Plan your IP Strategy

We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.

Full Assistance

Our registered attorney and other in-house patent professionals can represent you and assist you during all the International Phase if you want to file a PCT Patent application (WIPO), whether you want to claim an earlier priority right or it is a first filing internationally. Our fees for PCT patent filings and prosecution are fixed for each stage in this International Bureau so you can foresee the estimated costs for your patent protection project during the International Phase.

Search Services

We may carry out an in-depth prior art search worldwide referring to the technical information you have provide us, which would allow us to find if your invention has not been patented, before we draft your specification and apply for the desired patent on your behalf. This comprehensive search with our written report and a risk assessment is conducted by using tools and databases that are not publicly available. A good patent search can save you time, and a fortune in wasted resources, efforts, incurred significant promotional costs, and evade your potential legal liability in exploiting by mistake a non-patentable invention or a very close technology to someone else’s patent rights. This is a highly skilled and complex work that should be conducted by a specialized patent practitioner.

Patent Drafting and Filing

The initial strategic steps are decisive to achieve success in the future with your invention, therefore we  take particular care and assist on the following features:

Where to Protect Your First Patent

We can plan which would be the best Office to file your first patent application (priority), either National, European or Internationally, depending on the countries where you will likely market your invention, which we will electronically file in your name.

What & How to Protect

Our in-house patent professionals can help you identifying and protecting only what is technically valuable, from the material you provide us with, and do not waste time or resources on getting a weak patent for those irrelevant matters. For this purpose, the inventor must provide us with all the relevant and detailed information in his hand to help us understand how the given technical problem is solved by the invention and allow our engineer to draft the best possible claims supporting specification, who will prepare andwrite in full, clear, concise, and exact terms of the abstract, description, backgrounds of the invention by citing and comparing the closest prior art documents, create the professional technical drawings if needed, and specify the claims that best describe your invention, being this the most important element of the patent draft, to be carefully considered and for which patent protection is sought. We will provide the preliminary patent draft for our client’s review and approval, before filing, within 15 to 20 working days, from the date we receive the full details of your

When to Apply

Commonly, it should be filed as soon as possible, ensuring you are the first-to-file the patent.

Who

The applicant(s) and hence the future ownership of the patent should be always held by person or legal entity who will likely exploit the invention in the market.

Prosecution and Management

We will monitor the whole process of your PCT patent application throughout the International Phase and duly inform you of every official communication we receive from WIPO, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders well before the available time limits for each specific action.

Office Actions

If your patent is objected by the WIPO based on formal requirements or on patentability provisions or opposed by a third party, we may study the grounds of the objection or the relevance of the prior right on which the observations have been founded and file either the amendment or an Office action response in defense of your rights within the given deadlines, by planning the adequate strategy and ensuring success insofar as possible, in obtaining an objection-free application when the national phase is entered. Assistance is also provided if you want to file relevant observations against a likely conflicting application, by preparing the needed technical and legal observations in support. We may require you to provide us relevant details or proof in support of our comments, facts or evidences to be alleged. – Litigation. In enforcement, we can represent and assist either the plaintiff or the defendant in utility model and patent rights infringement proceedings or in a cancellation action procedure (Invalidity request) before the competent Spanish or European Courts.

Other Actions

We can handle any associated matter on PCT patents such us the recordal of licenses, change of names and ownership transfers.

Watching Services

Abecsa can provide its clients with a local watch service in the Spanish and European registers, keeping an eye on what your competitors have filed. If we find a new published application which is potentially conflicting with your prior patent, then we will send you an alert proposing you the filing observations within the statutory deadline of the Office whenever possible.

Worldwide Patent Protection

Entering the National Phase of a PCT. Well before the 30-month period from the priority of your PCT patent application, we can help you choosing which countries in the world would you or your company like to effectively file your patent protection, by advising you about the next national or regional phase entry as a Euro-PCT patent (EPO), in other regional Offices (EAPO, OAPI, ARIPO) or even coordinate the filing in individual national patent Offices with the assistance of our local associates, in view of the countries where you intend to exploit, manufacture or market your invention, and depending on the nature of your invention and budget.

The PCT application is subject to both search and examination process, which may consist of the following stages until it is concluded by the national and regional phase entry in each country where applying for effective patent protection is desired.

Chapter I. This phase will be performed without interaction between the applicant and the examiner.

Filing of the PCT Application

The filing of an international application must comply with the PCT formality requirements; filed in one required language, and one set of fees must be paid providing automatic coverage for all member states under this treaty.

International Search Report and Written Opinion

The International Searching Authority (ISA), that is, the patent Office of one of the world’s major countries, will conduct a search of the relevant prior art, and will prepare and issue both an International Search Report (ISR) and a Written Opinion with the relevantly influencing documents on your invention’s potential patentability for novelty and inventive step. It is possible to amend the claims and also file informal comments in reply to the ISR. The International Searching Authorities (ISAs) are the national Offices of Australia, Austria, Brazil, Canada, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden and the United States of America, in addition to the following regional Offices, the European Patent Office and the Nordic Patent Institute.

International Publication

The international patent application will be published as soon as possible after the expiration of 18 months from the priority date, disclosing the content of your application to public, which will include the ISR, whenever possible but if not, this shall be published separately. The published initial or amended claims will constitute the conferred “provisional protection” for many countries.

Supplementary International Search Report

Optionally, the supplementary international search report can be requested, which is generally similar in content and appearance to the main ISR, but documents which have already been cited in the ISR are not repeated, unless it is needed. The main advantage ofthe supplementary international search reportis that it may reduce the risk of new patent documents and other technical literature being discovered in the national phase as it may enlarge the linguistic and technical scope of the documents searched and the explanation on the relevance of these may be more detailed than those cited in the ISR.

Chapter II. This phase will be executed with interaction between the applicant and the examiner, where amendments and arguments can be submitted, and an interview with the examiner is also possible.

International Preliminary Examination

Within 22 months from the earliest priority dateand after international publication, an optional preliminary examination can be requested to one of the ISAs, which can be the Spanish OEPM or the European Office EPO, where an additional patentability examination will be conducted, usually on an amended version of your application and/or on the arguments addressing any objections raised in the written opinion, and ending with the subsequent preparation of the International Preliminary Report on Patentability (IPRP), which is not binding although its result should be considered by the national/regional Offices where the PCT is entered. Requesting the IPE is highly recommended if the PCT application has been negatively objected in the search and written opinion (ISR) so another opportunity is given to the applicant in order to obtain a more favorable result on its patentability. By demanding this IPE and/or by amending any possible remaining defects in the PCT application, can also help toreduce or eliminate the number of objections, that will be likely cited in the future, after the national or regional phase entry in each individual patent Office, particularly when the European regional phase has been entered, where EPO’s examination is in connection with and a continuation of the one conducted during the international phase by the WIPO.

After the end of the PCT International Phase, you must enter the national and regional phases on or before 30 or 31 months from the priority date to pursue the grant of your patents directly before the national or regional patent Offices of the countries where patent protection is to be sought. The requirements for entering the national and regional phase to be fulfilled can vary for each country or region, and usually can involve the appointment of a local patent agent, submitting specific formal documents, the payment of official fees and filing a translation of the application into a local language.

• The full name and address of the applicant(s)-holder(s).
• The full name and nationality of the inventor(s).
• The nationality or country of establishment of the applicant(s)-holder(s).
• VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
• Full details of the invention on how the given technical problem is solved by your invention.
• The details of the earliest filed patent application on which Convention Priority is to be claimed if any, within 12 months from the first patent application date, along with the Certificate of Priority.
• Your instructions on how we should proceed and approval of the likely costs.
• Your upfront payment of issued invoice by bank transfer.
• A POA signed by the applicant (no legalization) is required by the International Bureau.

The regional offices and conventions which cover multiple countries within a continent are as follows.

The member states covered by the GCC patent are: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (6 countries)

DISCONTINUED: On January 5, 2021, the Supreme Council of the GCC held its annual meeting and decided to discontinue the unitary GCC Patent. The GCC Patent Office does no longer accept filings for new unitary patent applications as of 6 January 2021, and the changes within the GCC law mean that this Office will no longer issue further unitary regional GCC patents covering this regional territory. However, previously granted patents by the GCC Patent Office will remain valid and in force although annual renewals must be paid to maintain the patent. For already filed GCC patent applications which are pending, will be examined but the decision to grant a patent will be subject to the approval of each of the National Offices and also the GCC patent will only have effect in the requested National Office of those six Member States.

Designation or Regional Phase Entry With the GCC in PCT Applications: Not possible. This regional Office cannot be designated by the Patent Cooperation Treaty (PCT) and even if all countries, except Kuwait, are part of the PCT individual national offices, these should be effectively protected using the national route in each, separately. The GCC patent is not party to the Paris Convention, nonetheless anyone claiming priority within one year from their first foreign application, can validly file a patent with the GCC Patent Office.

Type of Inventions: Patents.

Term of Patent Right: Twenty years from filing date.

Website: www.gccpo.org/defaultEn

There are some other territories and states which do not form part of any international nor regional convention for multiple designations of national patent applications or in some cases may not have their own Patent Office. This means that filing an individual national patent in each of the countries may be needed so they are covered, and/or where a patent must be applied for separately in some of them within twelve months from the earliest priority date of a patent. These particular jurisdictions and countries are as follows: