Patent Application Procedure
There are several options for obtaining patent protection abroad. Patent applications can be filed individually for each country required. However, this will require separate patent applications to be prepared for each country and patent agents for each country to be instructed and paid. Alternatively, it is possible to file a European patent application under the terms of the European Patent Convention (EPC) or to use the Patent Co-operation Treaty (PCT) to file applications on a worldwide scale. The EPC covers about 23 European countries including the UK. A patent granted under the EPC will be valid in each of the designated countries. The PCT covers the UK and about 93 other countries. Filing under the EPC or the PCT may be cheaper than filing in individual countries, although there will be fees for each designated country and translations may be required. The option to proceed in designated countries does not have to be exercised immediately thus payment of fees and costs can be deferred. Whichever route is chosen, if a UK national application is made first its filing date can be used to claim priority for an application filed in most other countries, provided that the application is made within 12 months of the date of filing the UK application. It is important to note that if a UK national application is not made before filing abroad then permission must be sought from the UK Patent Office first. The estimated cost of applying for a patent in multiple countries, from filing to grant, is £60,000. In addition there will be annual renewal fees in each designated country for up to 20 years.
US Patent Laws
In the US the rules for patenting an invention differ from the UK and most of the rest of the world. Priority is given to the first to invent rather than the first to file a patent application. Also, publication of the invention up to one year prior to the application will not prevent a US patent grant. A US patent is not published until grant, which can be as long as 15 years after the filing date.
In 1996 US law changed so that it is now possible to prove a date of invention (swear back) for a US patent from evidence produced outside the US. To take advantage of this, the inventor must follow certain guidelines. Evidence will be required for the date of invention and this will be most likely to come from lab note books. For this reason it is now very important that care is taken in keeping lab note books. They should have permanent binding, numbered pages, permanent ink and entries should be complete with details of all experimental procedures. Each page should be signed and dated by both the author and a witness who should not be directly involved in the project but should understand the work.