The international patent: filing a worldwide patent is impossible
It’s a frequently asked question, and one that’s often misunderstood. We can assure you: there is no such thing as an international patent to protect your invention.
A patent is a national industrial property right
In France, patent applications are filed with theINPI. The Institut National de la Propriété Industrielle (INPI) examines the applications, and then issues the title to the applicant. Patent maintenance fees (annuities) are also collected by INPI.
Each country has its own patent office, since a patent is a national title. It involves an agreement with the state in which the application is made, to have a monopoly on the invention for a period of 20 years. This monopoly gives you the right, for example, to request an infringement seizure, or to enhance the value of your patent through licensing.
Protect your invention in France and abroad with your accredited IP advisor.
European patent or PCT?
Here are a few references from patent offices:
| Country | Office |
| France | INPI |
| United States | USPTO (United States Patent and Trademark Office) |
| Japan | 特許庁 (pronounced “Tokkyocho”) or JPO (Japan Patent Office) Japanese Patent Office |
| Germany | DPMA (Deutsches Patent und Markenamt) |
| United Kingdom | IPO (Intellectual Property Office Information Centre ) |
| Spain | OEPM (Oficina Española de Patentes y Marcas) |
| Brazil | INPI (Instituto Nacional da Propriedade Industrial) |
| Etc. |
Filing a patent abroad: what is the PCT?
To extend a French patent to a country other than France, you have two options:
- make a direct national filing (e.g. file a U.S. patent directly with the USPTO) no later than 12 months after the first French filing
- file an international patent application (PCT), at the latest 12 months after the first French filing, then choose the countries 18 months after the PCT filing (i.e. 12 months + 18 months = 30 months after the French filing),
The PCT (Patent Cooperation Treaty) is a procedure that gives you 18 months’ extra time to choose which of the 152 contracting countries (most of the world’s countries) you’re interested in. Under the PCT, you file an application with the international patent office (WIPO: World Intellectual Property Organization). The office provides you with a prior art search report and a written opinion from the examiner during an international preliminary examination.
Buy time to choose your countries abroad
The PCT application offers you nothing more and nothing less than the opportunity to file an option for the countries of the world covered by the treaty (i.e. the majority of countries), for a period of 18 months. You’re buying time that you can use to find investors, partners or licensees, who can then pay all or part of the international patent costs.
So after a total period of 12 months + 18 months = 30 months after the first filing in France, you will have to choose the countries for which you want protection. If at the end of these 30 months you do not exercise the option (i.e. you do not choose a country), you will only keep the initial French patent.
That’s why there is no worldwide patent.
In all cases, only the office in the country where the patent application is filed is competent to grant the patent.
Tip: Filing a PCT costs around €4,000 before tax.
If you’re sure you only want to protect your invention in Europe and the USA, it’s probably cheaper and quicker to file a European and US patent application directly, without necessarily going through a PCT. But there’s no going back! It’s impossible to add a new country once the 12-month period following the filing of the first French patent has elapsed!
Translation of your patent
Exercising the option or “entering the phase” in a country with an international PCT application is the equivalent of filing a patent application in that country: you need to translate the patent text, have a local patent attorney, and pay filing and examination fees.
In principle, the patent must be translated into the language of the country where the application is made. This means that to protect an invention in the United States, you will need to draft a patent in English. The translation phase is very important, and it is essential that it be carried out by an expert specialized in the technical field concerned. A mistake in the translation of the patent can complicate the granting process, and result in substantial costs.
European patents can befiled in any language. However, if the patent is not written in an official EPO language (French, English or German), you have 2 months from the filing date to submit a translation.
The European patent to protect your patent in Europe and beyond
The European patent is an international patent in the sense that it gives you protection in several countries at once. However, it is not a worldwide patent.
News: In 2021, European patent filings are still going strong!
The European patent application is filed with the EPO (European Patent Office), but must then be validated in the desired countries, sometimes with translation, fees and a local agent. The countries concerned are all those of the European Union, and even further afield (Albania, Switzerland, Liechtenstein, Monaco, The Former Yugoslav Republic of Macedonia, Norway, San Marino, Turkey).
Did you know? YesMyPatent is an online service provided by Touroude & Associates, a European patent attorney registered with the European Patent Office.
Patent law governs the procedures for filing patent applications, and the terms and conditions under which the title is granted. Understanding the framework in which your patent is valid is essential. Particularly when developing your business internationally, it’s important to anticipate your needs, so as not to be affected by the patent of a competitor operating in another country.
Choosing patent protection not only gives you a monopoly on your invention, but also legal protection against counterfeiting.
