Can I secure a worldwide patent for my invention?

Blog Post 10 Jan 2017

 

Patents: First to File and First to Invent: What’s the Difference and Why does it Matter?

In today’s blog post I want to focus on a question which I have been asked on more than one occasion. Can I secure a worldwide patent for my invention?  To answer this question we need to understand three concepts and how they work together when it comes to contemplating patent applications in more than one country:

  • First to File
  • First to Invent
  • Priority Date

I will assume for the purposes of this post that your home jurisdiction is the UK.

Priority Date

To obtain worldwide exclusivity for an invention you will need to file your patent application in a country which is a signatory to the Paris Convention (which the UK is) http://www.wipo.int/treaties/en/ip/paris/. The date on which you file your patent application at the UK Intellectual Property Office https://www.gov.uk/patent-your-invention will then constitute your worldwide ‘priority date’ for your invention.  This means that you will have a priority over the invention for which you are seeking a patent over anyone else filing an application for the SAME invention AFTER this date. This is why patent attorneys are always advising clients to make an application for a patent as soon as practicable. http://www.cipa.org.uk

It is worth bearing in mind however that to take advantage of this worldwide priority you will need to ensure that you have submitted an application for a patent in each of the Paris Convention countries in which you want your invention protected; and this must be done within TWELVE MONTHS of the priority date. Alternatively you can file just one application at the Patent Cooperation Treaty Offices http://www.wipo.int/pct/en/filing/filing.html or the European Patent Office https://www.epo.org/applying/international.html

With all else being equal (in other words your invention meets the criteria for a patent; i.e. it is not already in the public domain in some shape or form and it is not ‘obvious’ to a person ‘skilled in the art’), you will be granted a patent in the countries you initially applied in.

 

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First to File

As a result of the priority date principle, first to file becomes the logical preceding step. In other words, in order to secure that all important priorty date you must be the first to file your patent application. It is worth noting that most of the signatories countries to the Paris Convention and the Patent Cooperation Treaty (PCT) http://www.wipo.int/treaties/en/registration/pct/ and the European Patent Convention (EPC) http://www.epo.org/law-practice/legal-texts/epc.html work on the basis of the first to file principle.

 

First to Invent

Historically the USA instead of first to file, based their patent granting system on the principle first to invent. In other words if two individuals applied for a patent for the same invention, unlike in the UK and most other countries, the determining factor as to which of these two individuals would be granted a patent would not be the date on which the application was filed but the date on which the invention was first CREATED and crucially which of the two inventors in our example could prove they were the first. However the USA moved across to the first to file system in 2011 by passing the America Invents Act https://www.uspto.gov/sites/default/files/aia_implementation/20110916-pub-l112-29.pdf. This Act applies to US patent applications made after 16th March 2013.

 

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So can I secure a worldwide patent for my invention?

The answer is a qualified YES. As hopefully this post has explained, a patent can be sought in numerous countries for the same invention. However the bigger question remains, have you made a strong enough business case to warrant expending significant financial and time resources to pursuing such an ambitious IP goal? Also have you factored in the cost of defending your patent once granted?

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