GovWire

Introduction

A granted UK patent can stop others making, selling or using your invention in the UK, but has no influence elsewhere.

If you plan to sell or license your invention abroad, you should consider protection abroad. If you dont, anyone can legally make, use or sell your invention overseas.

In some cases, permission to file a patent application abroad may be required.

Professional help

Because of the difficulties associated with obtaining patent protection abroad, you should consider seeking advice from a patent attorney or other professional adviser. Assistance in finding a patent attorney is available from the Chartered Institute of Patent Attorneys (CIPA).

European patent protection

To protect your patent in more than 30 countries in Europe, you can apply using the European Patent Convention (EPC).

You can apply through us or direct to the European Patent Office (EPO).

Your application will be processed as a single application, but once granted it becomes separate patents in the countries you designate.

You can get protection in individual countries in Europe by applying to the national office of each country. This is advisable if you only want protection in a few countries. You should get advice from the national patent office of any country you want protection in.

You can claim priority from an existing patent application if you apply abroad within 12 months of your original application. Your later application will be treated as if you applied on the same date as the original application.

You can also get protection in Europe using the Patent Co-operation Treaty (PCT). This is available through us, the EPO or the World Intellectual Property Organisation (WIPO).

You may have to file translations of your patent application in order to obtain patent protection in certain countries.

Filing your European patent application through us

We are a receiving office for European patents. You can file one with us in 3 ways:

• online filing
• by post

The application is allocated an European Patent (EP) number and filing date before being securely despatched to the EPO.

Any fees are forwarded directly to the EPO.

Visit the European Patent Office website for further information.

International patent protection

You can protect your invention in many international countries using the PCT.

A PCT application is initially processed as a single application. You will receive an international search report and written opinion. Your application is published around 18 months from the earliest priority date. You then have to process your application separately in each country.

Using the PCT system has the following advantages:

• you get a single international search report, which can reduce the administrative burden and costs
• in the early stages, you process a single international application instead of multiple applications in multiple patent offices
• you do not have to designate which countries you want protection in until about 30 months from the date you applied

You can claim priority from an existing patent application if you apply abroad within 12 months of your original application. Your later application will be treated as if you applied on the same date as the original application.

Patent Cooperation Treaty

If you are a UK, Gibraltar or Guernsey resident or national you may file your international application with us or the EPO. You may also file direct to the World Intellectual Property Organisation, who administer the PCT.

If you file your application with us, we will forward it to a PCT international search authority which for us, is the EPO.

The international search authority will carry out a search and provide you with an opinion on the patentability of your invention. They will publish your application as soon as possible after 18 months from the priority date.

After publication you can file a request for an international preliminary examination.

The examination is optional, but it will give you detailed information about the patentability of your invention.

This should help you decide whether to pursue the patent granting procedure in each of the contracting states in which you wish to get protection.

You need to enter the national phase in the countries where you hope to secure protection before the expiry of a deadline. In the UK, this is 31 months from the priority date of your application. This usually requires the filing of a form, fee and, where necessary, a translation of the application.

Once granted in the individual contracting states, the patent will provide protection in the same way as a national patent and will be subject to national law.

You can therefore obtain a UK valid patent valid by filing an international application and pursuing it through to grant in the national phase. For PCT applications filed from 1 January 2021 a UK patent will also provide protection in Guernsey and Gibraltar.

Alternatively, you can use your international application to get a European patent which could in turn designate the UK.

Our PCT guide for private applicants provides further information.

PCT fees

A PCT Fee Sheet and information on the new PCT fees are also available.

Filing PCT applications electronically

PCT applications can be filed electronically using EPO Online Services or ePCT (see guidance How to file documents with the Intellectual Property Office). When using EPO Online Services, it is important that the latest version of the software is used to ensure that the request form and fees are current.