International Patent Application

By an international patent application one central proceeding is initiated via the World Intellectual Property Organisation (WIPO) for almost all states of the world. Such proceeding is divided into an international phase at a so-called international search authority (Chapter I) for searching prior art and optionally at an international preliminary examination authority (Chapter II) for preliminary examination. Thereafter, national or regional phases commence in those countries in which patent protection is sought.

General Information

An international patent application can be filed as a first filing or by claiming a priority of an earlier national patent application or regional patent application within 12 months after the filing date of the earliest patent application whose priority is claimed. It is possible to claim the priority of more than one application.

For applicants having their registered office in one of the member states of the European patent convention it is advisable to first file a European patent application and to file an international patent application as a second step, since the search fee for a European patent application is lower than the search fee for an international patent application, the search fee for the European patent allocation can be refunded when filing an international patent application, and the invention can be enhanced or undergo a further development during the term of 12 month for filing an international patent application after filing the European patent application, what can of course be additional subject matter for the international patent application.

By filing an international patent application all states are designated, in which protection by an international patent application can be sought.

International Search

For each international patent application the so called international search authority draws up an international search report. For applicants having their registered office in a contracting state of the European patent convention, the European Patent Office (EPO) is, besides exceptions, the international search authority. Upon request the EPO can act as international search authority for companies having their registered office in the USA, India, Japan, Brazil, Mexico and further countries. The European Patent Office generally provides search reports having a comparatively high quality, such that at an early stage of the proceeding the available prior art is known to the applicant and the risk for further steps is reduced. Further, if patent protection is sought in Europe, the search fee for the European phase at the European Patent Office is reduced, if the EPO acted as international search authority. Thereby, the high costs incurring by selecting the EPO as international search authority can be partly compensated. The international search report also includes a non binding written opinion on the patentability of the invention.

Preliminary International Examination

Internationale Patentanmeldung

Within 19 months starting from the priority date of the first application or the filing date of the international application, if no priority has been claimed, an optional request for preliminary international examination can be filed. Such request is particularly recommendable, if patent protection is sought in states having no formal examination proceeding.

National or Regional Phases

Besides exceptions after approximately 30 months (GPTO) to 31 months (EPO) after the priority date or after the filing date of the international application, if no priority has been claimed, the national or regional phases must be commenced in those states in which patent protection is sought. The requirements for the regional phase in Europe at the European Patent Office (EPO) and national phase in Germany at the German Patent and Trademark Office are summarized in the section foreign filing in Europe and Germany. When entering regional phase, translations of the international patent application in the respective official languages of the states in question have to be provided. The proceedings now switch from a centralized proceeding into a decentralized proceeding at the national or regional patent offices in those countries where patent protection is actually sought. Thereby, results of the international search and international preliminary examination are considered during national or regional phase.

Advantages of an International Patent Application

Internationale Patentanmeldung
  • The decision in which states patent protection is actually sought can be postponed approximately 30 months from the priority date or the filing date of the international patent application, if no priority is claimed.
  • The translations into the official languages of those countries in which patent protection is sought have to be provided only 30 months after the priority date or the filing date of the international patent application, if no priority is claimed.
  • The invention can be delimited over the prior art in a central proceeding and thus in a cost efficient manner.
  • The patent offices of some states consider the results of the international search and international preliminary examination such that patent protection can be obtained in these states in a cost efficient way. Examples of such offices are the State Intellectual Property Office of the Peoples Republic of China, the Canadian Intellectual Property Office and the Patent Office of the Russian Federation. The USPTO and the Japanese Patent Office consider the results of the international search and international preliminary examination generally to a smaller extent.