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What Are the Different Patent Filing Options InvnTree

What Are the Different Patent Filing Options InvnTree

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What are the different patent filing options?

In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints. This articles attempts to provide an overview of the patent filing options you can use. (You may be also interested in reading the article “How much does it cost to get a patent in India”) I will attempt to explian the options in a less complex way without trying to be “politically correct”. The options can be broadly divided into 4 classifications: 1. Filing a provisional patent application 2. Filing a complete patent application in your country 3. Filing a patent application in a foreign country 4. Filing a Patent Cooperation Treaty (PCT) application

1.

Filing a provisional patent application

A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention. Normally, inventors/companies file a provisional application in two senarios. The first senario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second senario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same. The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention. It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abondining the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed. A provisional application can be filed in the patent office of your country or in a patent office of any convention countries (Annexure 1- list of contracting countries - Paris conventional).

2.

Filing a complete patent application in your country

A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date. A complete patent application in your country can be filed by using any one of the following options: a. File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date. b. File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date. c. Use the PCT route – Explained under option 4 3. Filing a patent application in a foreign country

If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below: a. File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date. b. File a complete application in any convention country (secure a priority date) and and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date. c. Use the PCT route – Explained in detail below 4. Filing a Patent Cooperation Treaty (PCT) application

Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31

months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country. A PCT application can be under the following senarious: a. File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, Annexure 2 - list of PCT contracting countries) you wish to protect your invention. b. File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention. c. File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention. It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors. I hope you found this article helpful. Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. Best regards - Team InvnTree
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

About InvnTree
InvnTree is a people and processes driven company that offers a wide array of patent services. We leverage our technology and patent expertise to provide quality patent services. InvnTree caters to a global clientele that includes technology companies ranging from large corporations to start-ups, individual inventors, academic institutes, in-house IP counsel, IP licensing and management companies, law firms, and investors. InvnTree has its delivery centre in Bangalore, India. Our location gives us the leverage to tap into the best talent available in India. From here, our team of experienced and dedicated professionals, work in accordance with lean processes to deliver high quality services at competitive prices. Our team includes professional having advanced degrees in science and engineering, from prestigious institutes; all of who have strong experience is delivering a wide array of patent services. We understand that no two clients are the same, and even for a single client, their needs may vary over time. Hence, we do not employ a rigid service pricing model. We have an array of flexible client engagement models that are mutually beneficial. We even offer free patent strategy consulting to our clients. Further, we believe that safeguarding information disclosed by our clients is of paramount importance. Hence, we have taken stringent legal, technological, process and physical measures to safeguard sensitive client information. India Contact person Designation Email Phone Address Kartik Puttaiah Co-founder and CEO kartik@invntree.com +91-80-42124165; +91 98863 34262 No. 93, 2nd floor, 21st Main, BSK 2nd stage, Bangalore – 560070, USA Vikas L Jayaram Client engagement executive vikas@invntree.com +1-917-207-9649 www.invntree.com

Annexure 1 - Contracting Parties > Paris Convention (Total Contracting Parties : 173)

Data sourced from WIPO website www.wipo.int CONTRACTING PARTY Albania Algeria Andorra Angola Antigua and Barbuda Argentina Armenia Australia Austria Azerbaijan Bahamas Bahrain Bangladesh Barbados Belarus Belgium STATUS DATE DETAILS

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

October 4, 1995 March 1, 1966 June 2, 2004 December 27, 2007 March 17, 2000 February 10, 1967 December 25, 1991 October 10, 1925 January 1, 1909 December 25, 1995 July 10, 1973 October 29, 1997 March 3, 1991 March 12, 1985 December 25, 1991 July 7, 1884

Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details

Belize Benin Bhutan Bolivia (Plurinational State of) Bosnia and Herzegovina Botswana Brazil Bulgaria Burkina Faso Burundi Cambodia Cameroon Canada Central African Republic Chad Chile China Colombia Comoros

In Force In Force In Force In Force

June 17, 2000 January 10, 1967 August 4, 2000 November 4, 1993

Details Details Details Details

In Force

March 1, 1992

Details

In Force In Force In Force In Force In Force In Force In Force In Force In Force

April 15, 1998 July 7, 1884 June 13, 1921 November 19, 1963 September 3, 1977 September 22, 1998 May 10, 1964 June 12, 1925 November 19, 1963

Details Details Details Details Details Details Details Details Details

In Force In Force In Force In Force In Force

November 19, 1963 June 14, 1991 March 19, 1985 September 3, 1996 April 3, 2005

Details Details Details Details Details

Congo Costa Rica Côte d'Ivoire Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea Democratic Republic of the Congo Denmark Djibouti Dominica Dominican Republic Ecuador Egypt El Salvador Equatorial Guinea Estonia Finland

In Force In Force In Force In Force In Force In Force In Force In Force

September 2, 1963 October 31, 1995 October 23, 1963 October 8, 1991 November 17, 1904 January 17, 1966 January 1, 1993 June 10, 1980

Details Details Details Details Details Details Details Details

In Force

January 31, 1975

Details

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

October 1, 1894 May 13, 2002 August 7, 1999 July 11, 1890 June 22, 1999 July 1, 1951 February 19, 1994 June 26, 1997 August 24, 1994 September 20, 1921

Details Details Details Details Details Details Details Details Details Details

France Gabon Gambia Georgia Germany Ghana Greece Grenada Guatemala Guinea Guinea-Bissau Guyana Haiti Holy See Honduras Hungary Iceland India Indonesia

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

July 7, 1884 February 29, 1964 January 21, 1992 December 25, 1991 May 1, 1903 September 28, 1976 October 2, 1924 September 22, 1998 August 18, 1998 February 5, 1982 June 28, 1988 October 25, 1994 July 1, 1958 September 29, 1960 February 4, 1994 January 1, 1909 May 5, 1962 December 7, 1998 December 24, 1950 December 16, 1959

Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details

Iran (Islamic Republic In Force of)

Iraq Ireland Israel Italy Jamaica Japan Jordan Kazakhstan Kenya Kyrgyzstan Lao People's Democratic Republic Latvia Lebanon Lesotho Liberia Libyan Arab Jamahiriya Liechtenstein Lithuania Luxembourg

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

January 24, 1976 December 4, 1925 March 24, 1950 July 7, 1884 December 24, 1999 July 15, 1899 July 17, 1972 December 25, 1991 June 14, 1965 December 25, 1991 October 8, 1998

Details Details Details Details Details Details Details Details Details Details Details

In Force In Force In Force In Force In Force

September 7, 1993 September 1, 1924 September 28, 1989 August 27, 1994 September 28, 1976

Details Details Details Details Details

In Force In Force In Force

July 14, 1933 May 22, 1994 June 30, 1922

Details Details Details

Madagascar Malawi Malaysia Mali Malta Mauritania Mauritius Mexico Monaco Mongolia Montenegro Morocco Mozambique Namibia Nepal Netherlands New Zealand Nicaragua Niger Nigeria

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

December 21, 1963 July 6, 1964 January 1, 1989 March 1, 1983 October 20, 1967 April 11, 1965 September 24, 1976 September 7, 1903 April 29, 1956 April 21, 1985 June 3, 2006 July 30, 1917 July 9, 1998 January 1, 2004 June 22, 2001 July 7, 1884 July 29, 1931 July 3, 1996 July 5, 1964 September 2, 1963

Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details

Norway Oman Pakistan Panama Papua New Guinea Paraguay Peru Philippines Poland Portugal Qatar Republic of Korea Republic of Moldova Romania Russian Federation Rwanda Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

July 1, 1885 July 14, 1999 July 22, 2004 October 19, 1996 June 15, 1999 May 28, 1994 April 11, 1995 September 27, 1965 November 10, 1919 July 7, 1884 July 5, 2000 May 4, 1980 December 25, 1991 October 6, 1920 July 1, 1965 March 1, 1984 April 9, 1995 June 9, 1995 August 29, 1995

Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details

In Force

March 4, 1960

Details

Sao Tome and Principe Saudi Arabia Senegal Serbia Seychelles Sierra Leone Singapore Slovakia Slovenia South Africa Spain Sri Lanka Sudan Suriname Swaziland Sweden Switzerland Syrian Arab Republic Tajikistan Thailand

In Force

May 12, 1998

Details

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

March 11, 2004 December 21, 1963 April 27, 1992 November 7, 2002 June 17, 1997 February 23, 1995 January 1, 1993 June 25, 1991 December 1, 1947 July 7, 1884 December 29, 1952 April 16, 1984 November 25, 1975 May 12, 1991 July 1, 1885 July 7, 1884 September 1, 1924 December 25, 1991 August 2, 2008

Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details Details

The former Yugoslav Republic of Macedonia Togo Tonga Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uruguay Uzbekistan

In Force

September 8, 1991

Details

In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force In Force

September 10, 1967 June 14, 2001 August 1, 1964 July 7, 1884 October 10, 1925 December 25, 1991 June 14, 1965 December 25, 1991 September 19, 1996 July 7, 1884 June 16, 1963

Details Details Details Details Details Details Details Details Details Details Details

In Force

May 30, 1887

Details

In Force In Force

March 18, 1967 December 25, 1991 September 12, 1995

Details Details Details

Venezuela (Bolivarian In Force Republic of) Viet Nam Yemen In Force In Force

March 8, 1949 February 15, 2007

Details Details

Zambia Zimbabwe

In Force In Force

April 6, 1965 April 18, 1980

Details Details

Annexure 2 - list of PCT contracting countries
Data sourced from USPTO website www.uspto.gov Name of State followed by Country Code Date on which State became bound by the PCT* 4 October 1995 8 March 2000 17 March 2000 25 December 1991 31 March 1980 23 April 1979 25 December 1995 12 March 1985 25 December 1991 14 December 1981 17 June 2000 26 February 1987 7 September 1996 30 October 2003 9 April 1978 21 May 1984

Albania AL Algeria DZ 1 Antigua and Barbuda AG Armenia AM 1 Australia AU Austria AT Azerbaijan AZ Barbados BB Belarus BY 1 Belgium BE Belize BZ Benin BJ Bosnia and Herzegovina BA Botswana BW Brazil BR Bulgaria BG

Burkina Faso BF Cameroon CM Canada CA Central African Republic CF Chad TD China CN Colombia CO Comoros KM Congo CG Costa Rica CR Côte d'Ivoire CI Croatia HR Cuba CU 1 Cyprus CY Czech Republic CZ Democratic People's Republic of Korea KP Denmark DK Dominica DM Ecuador EC

21 March 1989 24 January 1978 2 January 1990 24 January 1978 24 January 1978 1 January 1994 28 February 2001 3 April 2005 24 January 1978 3 August 1999 30 April 1991 1 July 1998 16 July 1996 1 April 1998 1 January 1993 8 July 1980

1 December 1978 7 August 1999 7 May 2001

Egypt EG El Salvador SV Equatorial Guinea GQ Estonia EE Finland FI 2 France FR 1, 3 Gabon GA Gambia GM Georgia GE 1 Germany DE Ghana GH Greece GR Grenada GD Guatemala GT Guinea GN Guinea-Bissau GW Honduras HN Hungary HU 1 Iceland IS

6 September 2003 17 August 2006 17 July 2001 24 August 1994 1 October 1980 25 February 1978 24 January 1978 9 December 1997 25 December 1991 24 January 1978 26 February 1997 9 October 1990 22 September 1998 (will become bound on 14 October 2006) 27 May 1991 12 December 1997 20 June 2006 27 June 1980 23 March 1995

India IN 1 Indonesia ID 1 Ireland IE Israel IL Italy IT Japan JP Kazakhstan KZ 1 Kenya KE Kyrgyzstan KG 1 Lao People's Democratic Republic LA Latvia LV Lesotho LS Liberia LR Libyan Arab Jamahiriya LY Liechtenstein LI Lithuania LT Luxembourg LU Madagascar MG Malawi MW

7 December 1998 5 September 1997 1 August 1992 1 June 1996 28 March 1985 1 October 1978 25 December 1991 8 June 1994 25 December 1991 14 June 2006 7 September 1993 21 October 1995 27 August 1994 15 September 2005 19 March 1980 5 July 1994 30 April 1978 24 January 1978 24 January 1978

Malaysia MY1 Mali ML Mauritania MR Mexico MX Monaco MC Mongolia MN Morocco MA Mozambique MZ 1 Namibia NA Netherlands NL 4 New Zealand NZ Nicaragua NI Niger NE Nigeria NG Norway NO 2 Oman OM 1 Papua New Guinea PG Philippines PH Poland PL 2 Portugal PT

16 August 2006 19 October 1984 13 April 1983 1 January 1995 22 June 1979 27 May 1991 8 October 1999 18 May 2000 1 January 2004 10 July 1979 1 December 1992 6 March 2003 21 March 1993 8 May 2005 1 January 1980 26 October 2001 14 June 2003 17 August 2001 25 December 1990 24 November 1992

Republic of Korea KR Republic of Moldova MD 1 Romania RO 1 Russian Federation RU 1 Saint Kitts and Nevis KN Saint Lucia LC 1 Saint Vincent and the Grenadines VC1 San Marino SM Senegal SN Serbia and Montenegro YU Seychelles SC Sierra Leone SL Singapore SG Slovakia SK Slovenia SI South Africa ZA 1 Spain ES Sri Lanka LK Sudan SD

10 August 1984 25 December 1991 23 July 1979 29 March 1978 27 October 2005 30 August 1996 6 August 2002 14 December 2004 24 January 1978 1 February 1997 7 November 2002 17 June 1997 23 February 1995 1 January 1993 1 March 1994 16 March 1999 16 November 1989 26 February 1982 16 April 1984

Swaziland SZ Sweden SE 2 Switzerland CH Syrian Arab Republic SY Tajikistan TJ 1 The former Yugoslav Republic of Macedonia MK Togo TG Trinidad and Tobago TT Tunisia TN 1 Turkey TR Turkmenistan TM 1 Uganda UG Ukraine UA 1 United Arab Emirates AE United Kingdon GB 5 United Republic of Tanzania TZ United States of America US 6, 7 Uzebekistan UZ 1 Viet Nam VN

20 September 1994 17 May 1978 24 January 1978 26 June 2003 25 December 1991 10 August 1995

24 January 1978 10 March 1994 10 December 2001 1 January 1996 25 December 1991 9 February 1995 25 December 1991 10 March 1999 24 January 1978 14 September 1999 24 January 1978 25 December 1991 10 March 1993

Zambia ZM Zimbabwe ZW

15 November 2001 11 June 1997

* 1 2 3 4 5 6 7

All PCT Contracting States are bound by Chapter II of the PCT relating to the international preliminary examination. With the declaration provided for in Article 64(5) With the declaration provided for in Article 64(2)(a)(ii) Including all Overseas Departments and Territories. Ratification for the Kingdom in Europe, the Netherlands Antilles and Aruba. Extends to the Isle of Man. With the declarations provided for in Articles 64(3)(a) and 64(4)(a). Extends to all areas for which the United States of America has international responsibility.

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