Comprehensive patent consulting

It depends on the application date of the patent or utility model in Spain. The application date with the Spanish Patent and Trademark Office does not only grant national priority to that invention, but also allows it to be extended to many countries up to one year after this date. If this one-year period has elapsed and the application has not been extended to other countries, we can only enforce its exclusive rights in Spain.

Yes: you can and should if you want to claim priority. It must be noted that the date governing the right of priority is the date of patent application, not of patent grant, which usually takes much longer than a year. Furthermore, the registration authorities of other countries are not bound by the Spanish Patent and Trademark Office's decision to grant or deny the patent, meaning that a patent granted in Spain may be granted in some countries, but not in others.

Any of the following routes can be used, as long as they are used within one year of the priority date:

• The national route: applying to extend the priority patent application in each of the countries of interest. The patent application will be filed country by country (or region).
  



Applications that designate several countries can be filed using existing international agreements. Some possibilities include:

• The so called European route: Filing an application at the European Patent Office, claiming priority from previously filed patent application(s). This allows for a single prosecution process until grant. Once granted, the European patent can be validated in the member states of interest of the European Patent Organization, as well as in countries with validation and extension agreements. The member countries are: Albania, Austria, Belgium, Bulgaria, Czech Republic, Croatia, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom. Bosnia and Herzegovina and Montenegro are extension countries, while Cambodia, Morocco, Republic of Moldova, and Tunisia are validation countries.
  
  
  
  
  The European patent is not to be confused with the "Unitary Patent", which does not exist as of yet.
  


• The PCT route: while this is not a patent per se, since there is not an actual grant, this option can be used to apply for the extension of a patent application to over 150 countries. PCT is the acronym for the Patent Cooperation Treaty. This option is an interim step that allows the filing of the patent application in most countries or regions of interest to be delayed. For further information, please see the FAQs related to the international (PCT) application.
  

Both the European route and the international route (PCT) can be used for the first application (i.e. skipping the step of a national priority application).

The options are not mutually exclusive, but rather, in certain circumstances, complementary.

The decision depends on various factors. For example, the final number of countries to which the patent will be extended, the benefits or lack thereof of delaying or advancing those extensions, the wish to advance or delay some or all possible grants, geographic areas of interest for the patent, etc.

At UNGRIA, we will advise you, prepare all the necessary documentation, file your application or applications with the appropriate organizations, follow up on their prosecution, defend their viability against possible objections from the authorities or opposition from third parties, and constantly monitor your patent throughout its entire legal life.

It can be based on a Spanish patent or utility model application, by claiming priority from it; it can represent a phase entry of an international (PCT) application; or it can be filed directly as a priority application.

The application must be prosecuted in one of the three official languages of the European Patent Office (EPO): French, English or German. The EPO carries out a technical examination of the patentability requirements and resolves to grant or refuse a European patent. Its decision is binding for the registration authorities of the designated countries. For the granting to be effective, said patent must be validated in each one of the countries of interest.

This way, what started off as a single patent application becomes a bundle of national patents, the maintenance of which must be done individually, country by country.

Its maximum duration is 20 years from the application date, as long as the annuities are paid. These annuities are paid centrally to the European Patent Office while the patent application is being prosecuted, and to each one of the countries in which it is validated once the patent has been granted.

When the intention is to obtain a patent in several member states, extension countries and/or validation countries, the prosecution and resolution of the patent application is greatly simplified. The application is subjected to a single examination process, rather than to several independent examinations carried out by the national authorities of each country. This also implies a significant reduction in the final costs. The grant of o European patent can represent also a distinction to the applicant.

Since the examination carried out by the European Patent Office is binding for all designated countries, the result of said examination will affect all of the countries in question. If the European patent is refused, the patent cannot be validated in the designated countries and the applicant cannot reapply for it later on, not even country by country, since it would then lack novelty.

This agreement allows the use of a unified process for a patent application which subsequently permits its extension to over 150 countries around the world. This extension is delayed up to 30 (or 31, depending on country) months from the priority date, instead of 12 months. The International Search Authority will issue a search report and a written opinion that will allow the applicant to assess the appropriateness or not of continuing prosecution in each country of interest. The application must be filed within one year of the priority date. It can be filed with the Spanish Patent and Trademark Office in Spanish, meaning that the initial costs will be low in comparison to the protection that it is expected to offer in most countries around the world. It can also be filed with the EPO in one of its official languages.

The prosecution procedure has two main phases:

• The international phase, which is centralized and allows the applicant to delay their decision as to which countries they will file an application for. In addition, a search report and a written opinion are provided in order to help make this decision.
  


• The national phase, in which the application becomes effective in each PCT member country or region of interest.
  

One of the International Search Authorities (ISA) designated by the World Intellectual Property Organization carries out an international search report to determine the patentability of the invention. It also expresses its preliminary opinion as to whether or not the PCT patent application fulfills the patentability requirements. Although said opinion is not binding, it can be used to give the applicant an initial assessment on which to base later decisions regarding the desirability of continuing, modifying or abandoning their application.

18 months after the earliest priority date the international application is published, making its content public.

Optionally, and given the aforementioned search report and preliminary opinion, an additional analysis of patentability, called an International Preliminary Examination, can be carried out. This examination, which is normally performed for modified patent applications, is carried out by one of the IPEAs (International Preliminary Examining Authorities).

The Spanish Patent and Trademark Office can act as an ISA and an IPEA, meaning both procedures can be carried out in Spanish. They can also be performed by the European Patent Office in one of its official languages.

After the international phase, normally 30 months after the first initial date of the application from which priority is claimed, the patent application must be entered in each one of the national and/or regional Patent Offices of the countries of interest.

The PCT application then becomes a series of national and/or regional applications that should be prosecuted independently. The result of a national phase is not binding for the different authorities, but it does constitute a qualified opinion.

It is a group of patents and patent applications for the same invention, filed in one or different countries, which claim the same priority. Ultimately, it is a single, initial patent application and all other applications that stem from it, extended to different countries in different languages. By knowing the patent family, we can know the degree of territorial extension and scope of protection for an invention.

Of course you can. You can extend your application outside of Spain, within six months of the application date of the industrial design, using a number of options:

• The national route: applying to extend it to each one of the countries of interest (country by country).


• The Community route: applying to extend it to all member states of the European Union, as provided for in the Regulation (EC) on Community Designs, through a single application.
  


• The international route: applying to extend it through the Hague Agreement, which has more than 60 member states.
  

These routes also can be used for the first application (i.e. skipping the step of a Spanish priority application).

The options are not mutually exclusive. Depending on the case, they can even be complementary. The most important factor is the countries of interest.

For example, if there is an incentive for European countries, the best option is to file for a Community design. Since the European Union Intellectual Property Office (EUIPO) issues a unitary property certificate for the European Union, countries can neither be chosen nor omitted.

A Community design can also be part of or the base to claim priority for an international industrial design that also includes other countries.

At UNGRIA, we will advise you, prepare all the necessary documentation, file your application or applications with the appropriate organizations, follow up on their prosecution, defend their viability against possible objections from the authorities or opposition from third parties, and constantly monitor your designs throughout their entire legal life.

Uniform protection in all European Union countries is obtained through a single application. Prosecution is simple and results in a single property certificate issued by the European Union Intellectual Property Office (EUIPO), to which third parties may file their opposition after the design has been granted.

The same as a Spanish industrial design: the initial application is for a period of five years and can be renewed for four consecutive five-year periods, such that its maximum duration is 25 years.

A single international application replaces an entire series of applications that otherwise would have had to be filed with different national or regional authorities.

It should be noted that the international registration system is only an agreement on international filing procedure. Once the international registration is published, each designated Office will carry out the in-depth examination provided for by its own legislation. In other words, all fundamental aspects of protection depend entirely on the national legislation of each country or designated contracting party.