„Columbus was not the first one to discover America, only the first to patent it.“ — Andrzej Majewski
A patent is an exclusive right granted for an invention, that offers a new technical solution to a problem. In addition to patents, intellectual property rights also include copyright and trademark, which are covered in a separate blogs. In American theory, it is disputed whether legal protection of software can be enforced through patent protection or through copyright protection. It is mainly asserted that software shall be protected as a copyright. When we think about patents, we usually assume a great scientific discovery, but it doesn’t have to be. Patents are the lightbulb, the telephone, the computer, but also the beerbrella (un umbrella that attaches to a bottle of beer to protect it from the sun) and banana suitcase (a case in banana shape that protects it in transport). They may have a great value, so it is important to patent your invention before someone else does it first. The first person or company to file a patent will have the right to a patent. Its owner decides who may or may not use it.
The most efficient way to register your Patent internationally is through Patent Cooperation Treaty (hereinafter: PCT). It is an international treaty that provides a system for filing patent applications. On the basis of one single patent application and one set of fees, the applicant can seek patents in 154 states (such as Austria, Canada, Switzerland, China, Germany, United Kingdom, United States of America, etc.)
It is important to point out that PCT simplifies the patent application procedure a lot (for example you don’t need to look for an intellectual property lawyer in each of the countries where you want to file a patent), but the final decision whether to grant a patent is on each national patent office where the applicant is seeking patents. Therefore, there is no “international patent”, only an “international patent application”, that after 18 months can become American, Chinese, etc. patent applications. World Intellectual Property Organisation (hereinafter: WIPO) coordinates the PCT system.
An international application contains the following elements: completed request form, description of the invention, claim(s), invention drawings (only if it is necessary for understanding the invention), and abstract.
What are the steps and the timeline if you decide to register your Patent through PCT?
Typically, the applicant would first file a local patent application at the Intellectual Property Office of the Republic of Serbia. An international patent application can be filed through the Intellectual Property Office of the Republic of Serbia if the applicant is a natural person who is a citizen and a resident of the Republic of Serbia or a legal person whose seat is in the Republic of Serbia. After that, you have up to 12 months to file an international patent application. It is advisable to stick to this deadline because it provides you with an option to claim priority from an existing patent application.
At around 16 months from the date of your local application, the applicant will receive an international search report and initial patentability opinion. This opinion will be based on the criteria of novelty, inventive step, and industrial applicability. Afterwards, the WIPO will publish your PCT application, in order to provide technical disclosure of your invention. Consequently, you will receive an additional patentability analysis, that will help you to evaluate your chances of granting a patent in the countries that you are interested in, and make a final decision before the national phase. Finally, at the end of the PCT procedure, you will take steps to enter the national phase, that is, to grant a patent in various countries. Applying for a patent is a complex procedure, however, Law Office Pekić provides assistance with intellectual property protection to its clients.
If the applicant decides not to use the PCT system, but the traditional system, which means that the applicant files separate patent applications in each country where he or she wants to have a patent granted, the costs would have to be paid much earlier (within 12 months from the date of local application). On the other hand, under PCT, the whole procedure lasts for around 30 months, which means that the applicant gets 18 months of additional time, as well as a potential patentability report, after which he or she can decide not to proceed and not to pay the costs related to granting a patent in various countries. The applicant may also decide not to completely refrain, but to seek a patent in fewer countries than originally planned. Thus, through the PCT system, you can gather valuable information about patentability without exposing it to national filing fees. Also, having in mind this timeline, the applicant gets additional time to further develop the invention, find investors, and consider commercial possibilities of the invention.
- transmittal fee (compensation for the Intellectual Property Office of the Republic of Serbia for carrying out the formality examination of the application)
If the applicant is a natural person, there is a 50% reduction.
- international filing fee (compensation for WIPO and its work on PCT)
The PCT provides a 90% reduction in the international filing fee for applicants from the Republic of Serbia.
- search fee
- national Office fees
It is essential to highlight that there is no such a thing as “international patent”, bearing in mind that they are restricted to a specific territory, but this international patent application enables you to protect your invention in up to 154 states. If you have plans to expand your business internationally, this kind of protection is crucial to assure your investors of your company’s intellectual property strategy. Moreover, it enables you to sell or license your invention abroad. Do not let your competitors exploit your invention abroad!
You can read more about the patent license agreement and other commercial agreements in a separate article on our website.
This blog is for informational purposes only and does not constitute legal service, as each situation requires a commitment to the specific circumstances of an individual case, which may be different from others.
For legal assistance, tailored to your needs, contact the Law Office Pekić at: [email protected]
Author: Sonja Pekić
The Patent Law