I'm busy working on my blog posts. Watch this space!
Blowing my own trumpet
September 30, 2016
A patent is a territorial right, and can only be enforced within the borders of it's territory - a US patent within the US, a UK patent within the UK, and so on. Most clients who are interested in markets outside their home territory tend to take a pragmatic approach towards overseas filings. The US is usually on the list, due to it's size and uniformity, which make it a potentially attractive place to sell stuff. Europe potentially also, for similar reasons, although generally speaking, gaining patent protection in Europe is a more expensive prospect than the US. China? Maybe, but although there have been significant improvements in recent years, counterfeiting is still a problem, and a lot of clients don't want the expense or hassle of potentially playing whack-a-mole with infringers in what might for them be a limited market.
The deadline for filing equivalent applications overseas is one year from the first filing. So, if a client has filed a first application in the UK, and then wants to file an equivalent application in the US, Europe, Australia, etc, they have one year to do so, while being able to claim the benefit of the original UK filing for their overseas filings.
A year is not a long time when trying to get a business off the ground. One way of 'buying more time' before having to spend thousands of pounds on filing individual national applications is to file a Patent Co-operation Treaty application, or PCT application. While this never itself turns into a granted patent, it's main advantage is that it buys another 18 months of time before individual national or regional filings are required. It also provides a centralised search and examination process, although most clients tend to see this as very much a secondary benefit, especially as the results are often ignored or merely repeated verbatim by examiners once the subsequent individual national applications are filed.
Although a PCT application is not cheap, it's certainly less expensive than anything more than two or possibly three individual overseas applications, making it an attractive option for clients who need the additional time. Filing an application is generally an encouraging sign that the client is making progress with their business, and is willing to invest, even if they haven't quite got if completely off the ground yet.
The application process itself is relatively straightforward, and usually the filing can be completed by submitting the relevant paperwork at the national patent office (for example, the UK patent office if you're filing from within the UK)
So, when a PCT application is filed, it's given a filing number. The number shows the country of filing, and a sequentially-allocated number showing how many other PCT applications have been filed in that country in that year. For example, PCT/GB2016/000034 would be the 34th PCT application filing in the UK in 2016.
A little earlier this year, I filed a PCT application for a client, the fifth or sixth one I'd handled in 2016. From the filing number, this was around the 120th PCT application filed in the UK in 2016.
I can't recall the exact figures, but I was curious enough to do a small calculation, based on the number of applications filed, and the number of patent attorneys in the UK (about 1,700). I recently stumbled across my back-of-a-beermat calculations while having a tidy-up.
As one attorney among about 1,700, I represent 0.059% of the profession in the UK, crudely speaking. My PCT filings represented roughly 3.5% of the total filings in the UK as of that date. That's sixty times the number you'd expect, given the numbers. I'm punching sixty times above my weight. Sixty. I thought that was worth a bit of a brag.
Anyway, if you want to know more about PCT application, or any other filing options, then drop me a line. Low prices, quality work, discretion guarenteed, etc.