Patent filing strategies
There are several strategies to choose from when filing patent applications in more than one State. However, the choice of strategy can have a considerable impact on costs and particularly on their distribution over time.
- Swiss patent application
- European patent application
- Unitary Patent
- Direct International application (PCT)
- Provisional application
- International Application (PCT) with priority
- National route
To be recommended if :
- Initial fees must be reduced
- The invention does not meet the stricter grant requirements of the European patent.
- An official EPO search report is required before deciding which states to protect.
- The invention could evolve considerably in the first 12 months; a final application should include these improvements.
- We would like to benefit from 21 years of effective protection.
- The Swiss market is important and it is essential to obtain the best possible protection in this market.
To avoid if :
- The total cost of obtaining a European patent must be reduced (the costs of the Swiss application are added to the costs of the European application, so that this solution proves, after 12 months already, to be more expensive than a direct European filing).
- It is almost certain that the invention will not evolve after filing.
To be recommended if :
- The total costs of acquiring the patent should be kept to a minimum.
- The risk that the application will be abandoned quickly is low.
- The probability of the invention evolving significantly during the first year is low.
- It is clear from the outset that a patent limited to Switerland will not suffice.
- Fast grant is an advantage.
To avoid if :
- Initial fees should be reduced
- The invention is likely to evolve afer the initial filing
- The invention does not meet the rather strict European criteria for granting a patent.
- 21 years of protection instead of 20 is an advantage.
To be recommended if :
- Patent protection is desired in a considerable number of EU Member States participating in the UPC, typically more than 4.
- Possibility of obtaining pan-European injunctions and damages.
To avoid if :
- Patent protection is desired in few states participating in the UPC, typically less than 4.
- The risk of a central revocation action before the UPC, in particular if the patent is potentially vulnerable to revocation actions.
- Tight budget, especially in case of a patent dispute involving the UPC.
To be recommended if :
- The main costs should be postponed as much as possible.
- One wishes to avoid significant expenses during the first 30 months, without giving up the possibility of protecting one’s invention in a large number of countries.
- The success of the product is difficult to predict.
- The risk of the invention being abandoned during the first 30 months is not negligible.
- One wants to wait as long as possible before deciding definitively on the countries in which the invention should be protected.
- One wishes to protect the invention in a large number of countries.
- It is important to be able to establish an accurate cost budget for 30 months.
- It is absolutely necessary to avoid rejection during the first 30 months.
To avoid if :
- Initial costs must be reduced.
- Total costs until grant must be reduced.
- The number of countries in which the invention has to be protected is limited.
- The invention is likely to evolve within 12 months after filing and the text may need to be completed.
- A fast grant is an advantage
- One is looking for 21 years of effective protection
To be recommended if :
- Initial costs should be kept to a minimum.
- The time provided does not allow for the preparation of a final application.
- It is likely that the invention will continue to evolve after filing.
- The risk of dropping the application is important.
- One wishes to benefit from a maximum term of protection of 21 years.
To avoid if :
- The total costs must be reduced (the cost of the provisional application is added to the costs of successive applications, so that this solution is
more expensive after 12 months already). - The invention is already well developed, and the markets to be protected are relatively well known.
- A formal search report is desired, before deciding on the final strategy.
- A fast grant is desired.
To be recommended if :
- All charges must be pushed back to maximum.
- Initial costs should be reduced, for example, by filling an initial application without fees.
- 12-month costs must be reduced.
- One wishes to avoid significant expenses during the first 30 months, without giving up the possibility of protecting one’s invention in a large number of countries.
- The success of the product is hard to predict.
- The risk of the invention being abandoned during the first 30 months is not negligible.
- One wishes to wait as long as possible before deciding definitively on the countries in which the invention should be protected.
- It is likely that the invention evolves after the filing, and a final filing after 12 months should include variants and improvements imagined in the meantime.
- The Swiss market is important and it’s essential to obtain the best possible protection in this market (only if initial filing in Switzerland).
- It is important to reduce costs during the first 30 months.
- One wishes an effective protection for 21 years
- One wishes to absolutely avoid rejection for 30 months.
- A high level of flexibility is essential.
To avoid if :
- Total costs up to grant must be reduced.
- One knows well the list of the countries in which to protect your invention.
- A fast grant procedure is an advantage.
To be recommended if :
- Protection in 2 to 4 European countries is sufficient.
- It would be difficult to obtain a European or international patent.
To avoid if :
- Protection in more than 4 European countries is required.
