Three patentability phases: from national to international level

Author: Dr. Jacekas Antulis, Associated Partner, Head of the Patent Division

images-3If an invention has been positevely received in a commercial arena, its prototype has been released, and the preliminary list of the interested countries has been formed, an inventor should think about its patenting. There are three patenting phases: national claiming priority, international and national or regional after international, all of which should be implemented in a certain period of time. A patenting process is not easy, yet you can consult a patern attorney on any important matters.

The first phase of the patenting (at national level)

Firstly, you should have your invention assessed whether it can be patented as an object. This type of assessment can be done by patent attorneys for free. This particularly concerns computer inventions when attempting to patent a software, which is difficult to do in Europe due to certain restrictions. In addition to this, you should make sure that your invention meets at least the industrial applicability requirement.

Another step is an international patent search. If your invention is not identical to other patents in Lithuania, but is in other countries, it cannot be patented. Yet, you can adjust your object which consequently will allow you to apply for its patent and have it assessed again. During the patent search, an invention is analysed in detail and assessed in light of three patentability criteria: novelty factor, the inventive step and industrial applicability. Results and a report are sent to the inventor. During the meeting on discussing the patent search results, you can be consulted and advised on the subsequent actions. You can also be recommended to amend your invention again, if patenting it is seen as risky. The solutions could differ depending on the circumstances.

Another step is the drafting of patent application, a process which requires a lot of attention and responsibility. The main point to remember is that the patent claim cannot be amended after the patent application, therefore, it must be done with no rush considering all technical details, all circumstances and implementing ways. From experience, claims written by the inventors themselves tend to be with flaws and are often rejected by international patent offices. It is almost impossible to amend the claims after the filing of the patent, since neither new invention aspects, nor implemention ways can be added, the scope of invention must remain the same. Corrections by experts are accepted with difficulties and restictions. A patent claim can be sent to a patent office after it has been prepared and written and shown to an inventor with whom all the details have been discussed.

The initial application claiming priority can be filed not only to the State Patent Bureau of the Republic of Lithuania (SPB), but also to any other patent offices in the world. You can also file European, Eurasian or any other regional application. Lithuanians usually apply to a Lithuanian patent office first and only later refer to other countries’ offices, simply because it is faster and cheaper. Lithuania lacks a substantive patent examination, therefore, you can get  your patent  in 8-9 months after the filing date of patent application if you accelerate the process  of granting a patent.

The second patentability phase (international level) 

After the filing of the initial patent application, a lot of important terms and deadlines will follow that you cannot afford yourself to miss. After you have filed an application claiming priority, you have 12 months to decide whether you wish to commercialize your product  solely in Lithuania or also in other countries. If you miss the deadline, your patent will never be able to be extended in other states. The deadline cannot or almost cannot be renewed, thus it is recommended to have your patent attorney to take care of the time limits, as they know best how the deadlines should be followed. A 12 month period is not long, especially if you wish to licence your invention, since then you must find both potential clients and investors. In this case, we advise you on using national funding schemes, since looking for funding privately requires a lot of time and money. In addition to this, during these 12 months, market analyses of different countries should be done in order to find out which countries could bring successful commerce. This will determine further expenses.

If you cannot manage to do a market analysis on time and your invention is still at the manufacturing stage, you still participate in various funding projects or conduct different research, but believe your invention could attract not only local, but also international clients, we stongly recommend you to file an international application which will give you extra time (almost 2 years). Within this application experts will run the patent search and submit the written opinion.

Yet, if the market is clear to you, then appropirate steps should be done  in relevant countries without opting for international application. Usually designated countries are the members of some international groups forming regions (e.g. Europe or Eurasia), under whose name you can file centralised applications which are simplier and can help save you money. To find the best way to extend your patent is crucial, since it determines the subsequent steps of procedures. Furthermore, you should be aware that concepts of Europe and the European Union are perceived differently in the patent world. Specifically, Europe encompasses 40, but not 28 countries here. Moreover, some countries do not belong to any regions, i.e. Ukraine. Thereby, whilst setting up the objectives, you should plan carefully and coordinate your steps discussing with your patent attorney. This type of consultation is free, but valuable.

The third patentability phase (national and regional extensions after the international phase)

During the patentability process of this application, you are likely to experience  the first sales of your product, complete the investigation of the market, establish your first relationship with the representatives abroad, run product’s amendment procedures, conduct additional research and look for new investments abroad. Thus, before this you should decide in which coutries you wish to protect your patent. Also, you ought to coordinate your work with the representatives considering the peculiarities of each country as well as not forget to prepare the relevant agreements. This phase causes more expenses, but view this philosofically: if your invention is profitable, more investments should be done and if not, then you should invent something else and cease concentrating on your current invention.

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