Extension of foreign patents: European patents and PCT patents

A patent or a utility model processed by the OEPM only gives protection in Spain. If you wish to obtain protection abroad, it is possible to extend the patent or utility model application to other countries in the world by presenting the corresponding patent or utility model applications (where they exist — if they do exist, they do not have to have the same characteristics as the Spanish utility models, although the names may coincide).

In this case, any disclosure of the invention that took place after the submission of the initial application to the OEPM does not prejudice the novelty and/or the inventive activity of the corresponding application abroad, if it is presented one year from the date of the original Spanish application. This period of a year is called the priority period. It is possible to base a foreign utility model on a Spanish patent or a foreign patent on a Spanish utility model.

In addition, it should be taken into account that there are ways to obtain patents effective in various countries in the world through a single patent application (which is the case with European patents or what is called PCT patents — abbreviation of the Patent Cooperation Treaty). It is possible to request these types of patents based on a Spanish patent or utility model application, or by submitting a patent or utility model application applicable only in Spain and submitting a European patent or PCT application directly, effective also in Spain.

Regarding PCT patents, the procedure begins with a submission of a patent application, in Spanish, to the OEPM (there may be other options, in which the submission takes place in international offices). The application submission can be made when no priority period exists, or based on the priority period of a Spanish patent application (or utility model) previously submitted, no earlier than one year from the date of submitting the PCT patent application. Within a few months, the OEPM provides an international search report (equivalent to a report on the state of the technique, aforementioned, of Spanish patent applications) and an opinion on patentability. Within eighteen months from the priority date (or from the submission, if no priority period is claimed), the submission of the PCT patent is published. The applicant has the option to request the so-called international preliminary application, during which the applicant can modify the claims and defend the patentability of the invention, and culminates with an additional opinion on the patentability of the invention. Ultimately, at thirty months from the priority date (or from submission, if there is none) the application enters the so-called national phase, for the process to continue. This consists in submitting a translation in the official language of each of the countries in which the applicant wishes to obtain protection, in the Office of Patents thereof (including the European Office of Patents, to continue processing the European patent application, and other regional patent offices that exist in Asia and Africa). From this moment, the PCT patent application is transformed into different national patent applications, which are processed independently.

The advantage of PCT patents is that they delay the process, so that the applicant can continue with the process in desired areas when there are reasonable prospects for marketing them. Furthermore, the applicant then has a reasoned opinion about the patentability of the invention, allowing for the possibility of obtaining valid patents in those areas.

Currently, over 140 countries are members of the PCT. These include all the areas generally considered important. Perhaps the most significant exception is certain South American countries (particularly Argentina, Bolivia, Paraguay, Uruguay, and Venezuela).

This article is not considered as legal advice

Alexander Zuazo

Lawyer, Industrial Property Attorney and European Trademark and Design Attorney. Working languages: Spanish and English. For any further enquiries please Contact us