Patents are national rights that grant the right to exclude others from using the patented invention. In general, a Swiss patent grants the patent holder the exclusive right to prevent others from using the claimed invention in Switzerland. More specifically, if your patent relates to a product, the patent comprises the right to prevent third parties from producing, storing, offering, selling, importing or exporting the relevant product.
To obtain similar protection for your invention abroad, you will need to file patent applications in other jurisdictions. There are several ways and strategies to do this, and in this blog post we will introduce a common strategy for obtaining patent protection abroad which works well for many of our clients.
The „Swiss Classic“
For many of our clients we suggest filing the first patent application in Switzerland as the official filing fees are low and the patent application can be filed in English, German, French or Italian. We often recommend requesting an international-type patent search at the same time. This patent search is carried out on behalf of the Swiss Federal Institute of Intellectual Property by the European Patent Office (EPO) and lists those prior art documents deemed relevant for the patentability of your invention. The international-type search report is usually received within 4-10 months of the filing date and allows you to re-evaluate your patent application in light of the prior art.
The 12-month period following the filing of the first application is called the priority period, in which you can file other applications in other jurisdictions for the same invention. You can also, and this is what we normally recommend, file a PCT application. The PCT application is an international application which effectively postpones the time point at which you need to decide in which countries you will ultimately seek patent protection.
We recommend filing the PCT application with the EPO. The EPO will provide a written opinion on the patentability of your invention. This gives you another good opportunity to re-evaluate your patent application.
After 18 months, the international patent application is published, along with the results from the international search and the Patent Office’s written opinion on the search report. Up until this point, your application has been subject to strict confidentiality on the part of the patent offices.
Only 30 months after the filing date are you required to make a final decision as to which jurisdictions you wish to continue in with your patent application. For example, you could file for a European patent at the European Patent Office (EPO), file for a US patent at the USPTO, etc.
As outlined above, one of the major advantages of the “Swiss Classic” is that it allows you to postpone the costly and strategically invaluable decision as to which countries you seek protection in to a later point in time. However, it should be noted that the PCT application does not result in a PCT patent: the PCT application eventually diverts into a number of national and/or regional applications. Therefore, the PCT application should be drafted to be highly compatible with different patent systems. Though the patent systems in different jurisdictions are broadly similar, there are formal as well as substantive differences which invariably impact the way both the priority founding patent application, as well as the international patent application are drafted. For example, the European requirements relating to claiming priority and amended subject matter are stringent, whereas the US patent system is more permissible in this regard. Another example relates to the requirement of sufficient experimental basis to support broad claims in life science patent applications, which tends to be particularly strict in several Asian countries. A patent attorney with a working knowledge of different patent systems is ideal, both for drafting the patent application as well as guiding the patent application through prosecution to grant.
Normally you would need to decide which countries you want to obtain patent protection in within 12 months of your first filing. By filing a PCT application you can push this out to 30 months. This has the following benefits:
- By receiving the international written opinion before entering the national phase you have a better idea of the patentability of your invention.
- You reduce the administrative burden for the initial phases of prosecution.
- It gives you more time to figure out which key markets you want to obtain protection in.
- The high costs involved with patent prosecution in multiple jurisdictions are pushed into the future for when funding may be more secure.
- Your competitors are kept in the dark for longer as to what your exact patent strategy is and what scope of protection your patent applications will ultimately receive.
This patent strategy works well for many of our clients that are active in different international markets. While popular and widely applicable, this strategy is obviously not a one-size-fits-all solution and other patenting strategies may be more suitable for your specific needs. Please reach out to us to discuss your specific needs in more detail with one of our specialists.