International Patent System

The international patent system facilitates the protection of inventions across multiple jurisdictions through harmonized frameworks and treaties. It aims to simplify the process of obtaining patents globally while addressing issues of enforcement, cost management, and strategic use. Below is a detailed exploration of its structure, requirements, procedures, and strategic considerations.

1. Key International Patent Treaties and Systems

1.1. Patent Cooperation Treaty (PCT)

Definition

The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO), enabling applicants to seek patent protection in multiple countries through a single international application.

Member States

Currently, 157 contracting states participate in the PCT system.

Procedure

Filing:

• The PCT application is filed with a receiving office (e.g., WIPO, national patent office).
• Requires a description, claims, drawings, and an abstract.

International Phase:

• Formal Examination: Ensures compliance with filing requirements.
• International Search (Art. 15 PCT): A search authority identifies prior art and issues a written opinion on patentability.
• International Publication (Art. 21 PCT): Application is published after 18 months from the priority date.
• Optional Preliminary Examination (Art. 31 PCT): Provides a detailed assessment of patentability.

National Phase:

• At the end of the international phase (30 or 31 months from the priority date), applicants must enter the national phase in desired countries or regions.
• Examination and grant are handled by individual patent offices.

Advantages

• Centralized filing reduces initial costs and administrative burden.
• Delays national phase costs, allowing applicants to assess the invention's commercial value.

Case Example

• EPO PCT Decision T 2311/19 ("Gene Therapy Product"):
• Demonstrated the use of a PCT search report to streamline national phase examination in Europe.

1.2. Paris Convention for the Protection of Industrial Property

Definition

The Paris Convention, adopted in 1883, ensures a harmonized approach to IP rights and introduces the principle of priority.

Key Provisions

1. Priority Right:
• Applicants can claim priority from the first application in any member state for up to 12 months for patents (§ 4, Paris Convention).
2. National Treatment:
• Ensures equal treatment of foreign applicants as domestic ones.

Strategic Use

• Filing in a single jurisdiction first and leveraging the priority period to assess markets before filing internationally.

1.3. Regional Patent Systems

1.3.1. European Patent Convention (EPC)

• Offers a single procedure for obtaining patents in 39 European countries.

1.3.2. African Regional Intellectual Property Organization (ARIPO)

• Covers 22 African countries under the Harare Protocol.

1.3.3. Eurasian Patent Organization (EAPO)

• Provides a centralized patent granting system for nine member states.

1.3.4. Gulf Cooperation Council (GCC)

• Regional patent protection for GCC states.

2. Requirements for International Patent Protection

To be eligible for patent protection internationally, an invention must meet the following criteria:

1. Novelty (Art. 33(2) PCT):
• The invention must not have been disclosed in prior art.
2. Inventive Step (Art. 33(3) PCT):
• The invention must not be obvious to a person skilled in the field.
3. Industrial Applicability (Art. 33(4) PCT):
• The invention must be capable of being used in industry.

3. Procedure and Timelines

Phase	Step	Timeline
Priority Period	Filing under Paris Convention	12 months from initial application.
International Phase	Filing PCT Application	Within 12 months of priority date.
	International Search	~4–6 months from filing.
	Publication	18 months from priority date.
	Preliminary Examination	Optional, requested by ~22 months.
National Phase	Entering National Phase	30–31 months from priority date.

4. Opposition and Appeals

PCT Opposition

• The PCT itself has no opposition process. Any invalidation or opposition occurs during national phase proceedings in individual countries.

National Appeals

• Appeals against examination decisions are handled by national or regional patent offices (e.g., EPO Boards of Appeal for European patents).

5. Strategic Considerations

5.1. Cost Management

• Staggered Costs:
• Delaying national phase entry reduces upfront expenses, giving applicants time to gauge commercial prospects.

5.2. Market Evaluation

• Using the priority year and international phase to assess the invention’s potential in various jurisdictions.

5.3. Geographic Scope

• Selecting countries based on market size, manufacturing needs, and enforcement reliability.

5.4. Alternative Strategies

1. Defensive Publications:
• Publishing an invention to prevent others from patenting it.
2. Trade Secrets:
• Protecting innovations unsuitable for patenting or requiring indefinite protection.

6. Enforcement of International Patents

Challenges

• Patents are territorial, and enforcement requires litigation in individual jurisdictions.
• Costs and timelines for enforcement vary widely.

Cross-Border Strategies

1. Parallel Litigation:
• Initiating proceedings in multiple jurisdictions simultaneously.
2. Customs Enforcement:
• Leveraging border measures to prevent infringing imports.

7. Key Case Law

EPO Decision G 2/10 ("Tomatoes II and Broccoli II"):

• Clarified the patentability of biological processes under the EPC.

CJEU, Case C-121/17 ("Teva v. Gilead"):

• Established principles for determining Supplementary Protection Certificates (SPC) eligibility.

8. Role of a Law and Patent Firm

An international patent firm provides comprehensive support for navigating the complexities of global patent protection:

Filing and Prosecution:

• Drafting applications that meet varying international standards.
• Managing PCT and regional filings.

Portfolio Management:

• Monitoring deadlines, renewals, and enforcement risks.

Litigation and Enforcement:

• Handling infringement disputes in multiple jurisdictions.
• Coordinating with local counsel for effective enforcement.

Strategic Counseling:

• Advising on optimal filing routes (e.g., PCT, direct filings).
• Developing IP strategies aligned with business goals.

Conclusion

The international patent system provides a structured pathway for inventors to secure global protection while managing costs and risks. Leveraging tools like the PCT, regional treaties, and strategic advice from our experienced law and patent firm ensures that innovations are protected effectively, enabling businesses to thrive in a competitive global market.