When companies have a killer invention on their hands, they usually want to share it with the world. Under these circumstances, safeguarding a product in the UK alone may not be sufficient . Businesses may need global protection to propel market expansion, gain a competitive edge, attract investors, and prevent parallel imports. 

Granted patents have a national or regional jurisdiction;  unfortunately there’s no such thing as a granted worldwide patent. Enterprises must evaluate their options and approach the overseas patent application process with careful consideration. Applicants must consider what jurisdictions are most suitable to pursue patent protection to best suit their commercial interests. Here’s what you need to know. 

Is filing an overseas patent more complicated?

Without planning and preparation, the overseas patent application process can be complex, time-consuming and costly. There’s no single overarching patent to protect your innovation in every single country. Instead, businesses must choose the jurisdictions they want to seek protection in and file each patent individually. 

Most countries follow generally similar patent criteria and although patentability criteria can vary between jurisdictions, as a rule of thumb, patentable innovations must: 

  • Be Novel 
  • Be Inventive
  • Be capable of industrial application 

The overseas patent filing process gets slightly more complicated when you consider factors like language, cultural nuances, and examining office regulations. However, undergoing the international patent application process is always easier with a team of experts by your side.

Patent applications can be filed directly with national or regional patent offices. Regional offices, such as the European Patent Office (EPO), provide a centralised application process and offer an applicant the opportunity to designate which of the member states to extend patent protection to on grant of their patent, significantly reducing the cost of prosecuting a patent application across multiple countries. 

Jurisdictions to consider

Before you begin the overseas patent application process, you must consider several factors, including: 

  • Assessment of your product’s position and strategy in international markets 
  • Cost-benefit analysis of filing for overseas patents 
  • Resource allocation to maintain your patents over the years 
  • Risk management and mitigation of patent claims 

According to a 2023 WIPO study, the highest number of patent applications were filed at the following offices: 

  1. China 
  2. USA 
  3. Japan 
  4. Republic of Korea 
  5. EPO 
  6. India 
  7. Germany 
  8. Canada 
  9. Australia 
  10. Russia

Keep in mind that the jurisdictions with which you decide to pursue patent protection will undoubtedly depend on the unique circumstances of your commercial interests. 

Using PCT route

The Patent Cooperation Treaty, or PCT for short, is the most efficient way for companies to protect their inventions in a wide range of countries. Rather than deciding which jurisdictions to pursue patent protection in immediately, potentially wasting time and money applying for patents in jurisdictions that may not be necessary at a later date, businesses can file an international application with  the World Intellectual Property Organization (WIPO), affording them 18 months from filing to decide in which of the 157 contracting states to pursue patent protection with. 

Here’s how the process unfolds: 

  1. Applicants file a single international patent application, in one language, paying one set of fees. 
  2. A preliminary search report is prepared by the designated International Searching Authority (ISA), identifying prior art that may be cited against the novelty or inventiveness of the application. Issues relating to clarity, unity etc may also be raised in this report. 
  3. Your international patent application will be published and officially disclosed to the world. 
  4. Applicants may request an additional International Preliminary Examination (IPE), an optional substantive examination. This can give the applicant more confidence in the likelihood of success of their patent application before proceeding to national or regional jurisdictions. 
  5. 18 months after the filing date of the PCT application, you must decide on which jurisdictions, whether national or regional, to pursue patent protection in. 
  6. Once you enter the national or regional phases, the applications will be examined separately by the respective patent offices. You  must translate your patent documents where necessary, pay respective application fees, and prosecute the applications in accordance with the regulations of the respective patent offices. 

UK vs overseas applications: what are the main differences?

The main difference between UK vs overseas applications is the territorial scope. However, they also vary by: 

Filing procedure 

For a UK patent, applicants may file an application directly with the UK Intellectual Property Office (UKIPO) or designate the UK through the PCT or EPO channels. Overseas patent applications must be filed individually with each respective national office directly or regional office in which the overseas jurisdiction is a member, or select the respective overseas jurisdiction through the international PCT channel. 

Examination process

National or regional applications filed by applicants seeking to obtain patent protection in the UK are examined by the UKIPO or the EPO respectively. Overseas applications are examined by the respective national patent offices or the regional offices to which the overseas jurisdiction is a member. It is therefore important to consult a local patent practitioner when filing an international or overseas application. . PCT patent applications will undergo a centralised international preliminary examination before proceeding to the national or regional phases. International preliminary examinations may be used as the basis for national or regional examinations, however this is not always the case.. 

Costs and administrative burdens 

Filing a patent in the UK will involve fees and administrative processes outlined by the UKIPO. The overseas application may entail various fees specific to the respective patent office. It is important to consult a local representative for an estimate of costs before proceeding with an international or overseas patent application.  

At Bailey Walsh, we have the benefit of access to a global network of associates in all contracting states to the PCT. If you are considering the benefits of an international patent application, and how it may be relevant to your commercial interests, please contact one of our qualified attorneys.