Types of Patents (a guide for IP beginners)

Dear Patent admin,

I am sure you all have heard of a client, or a friend, who, at a particular moment, on a particular day, has a question about what a patent is, and what kind of patents exists. And maybe at that moment you became speechless, not knowing where to start. Well, you do no need to worry any longer: I am going to give you enough content so next time anybody asks, you can talk for hours about your favourite topic: yes, patents!

For this I would like to become your personal Carl Linnaeus today and talk about the different kinds of Patents available out there. And I will do this by classifying them in different categories, from bigger to smaller territorial scope.

Worldwide patent

So let's start with the biggest and by far most demanded kind of patent protection: the Worldwide patent!

Well, not to say it bluntly to clients or first-timers in Patent prosecution, but a Worldwide Patent does not exist; more precisely, there is not such a thing as a patent that gives worldwide protection to an invention. I know, this would save thousands of hours of prosecution and money spent, but we would not have so much FUN within the patent world, would we? (and probably we would not have a job either...).

One might ask her/himself why the worldwide patent does not exist. This is because protection rights for an invention conferred by individual countries with own territorial rules in patent protection. So if you want patent protection in different countries, you need to knock on each country's door (at least in principle).

The fact that different patent laws from different countries are similar is the result of hours and hours of legal and political discussions and the goodwill of policy makers in order to make the patent world (and IP as a whole) a beautiful place.

For instance, have you ever asked yourself why a citizen from one country can file a patent application in another completely different country? Or why does the right of priority even exist? Or why most of the countries have protection terms that are not so different between each other? Well, here you go. And thank you, Paris Convention!

Patent Cooperation Treaty (PCT) applications

Still, we are not left alone in the patent bewildering world. Even if a worldwide patent application is not possible, there are supranational organisations that are willing to make our patent life easier (at a moderated price).

Among these organisation, the one that covers the largest number of countries is the Patent Cooperation Treaty, with 156 member states right now. This treaty will allow what is called an International Application to be filed. However, it comes with a fundamental disclaimer: PCT applications are NOT patent applications. This is because the final goal of a PCT is not to provide you with a patent right (this must come from a specific country), but to make your life easier when you protect your invention in different countries.

"So, why should I file one PCT?" you might ask. Well, that is indeed a good question! PCT applications serve as an harmonisation tool for patent prosecution in the countries that are part of the PCT. This means that you request a patent application via PCT, and the conducted search and written opinion of an examiner can influence the grant of a patent application later. Say you file a PCT application and request the Search Report to be issued by a patent office such as EPO, US, KR, CN, JP.... It might be that, if positive, this search report will grant you a patent directly in some other countries in the world.

However, PCT applications are complex and a positive feedback from one office might not be binding in another. For instance, the EPO will always want to do their own search if they have not made it before.

But PCT is an interesting tool if we know beforehand that our patent is strong (here the importance of prior art search BEFORE filing a patent application) and important (we want to protect our invention in many countries).

Regional patent applications

There are also other supranational organisations based on some common approach or territorial scope:

ARIPO (African Regional Intellectual Property Organisation): African countries that have signed the Harare Protocol.

OAPI (organisation Africaine de la Propriété intellectuelle): African countries that have signed the Bangui Protocol.

GCC (Gulf Cooperation Country): mainly for Arab States of the Persian Gulf. This patent system has been discontinued since January 2021.

EAPO (Eurasian Patent System): mainly for countries with Russian as common language.

EPO (European Patent office): mainly European countries participating.

There is one important difference amongst these entities. Some of them issue a patent certificate that can be enforceable in the members states (GCC, EAPO, OPAI), while the others issue a patent that then needs to be designated or validated in the member states where you seek protection (EPO, ARIPO). This is of course broadly speaking, and each regional office has different requirements and rules as to how they are granting patent protection.

But at the end this is also an interesting option if your client wants to file many patent applications in countries of the same region.

National applications

This one is easy: you seek protection in the country where you manufacture, produce or sell your invention. Period.

However, patent offices spend quite some time in examining a patent application. And the number of months (or years!) that takes for a patent office to grant (or refuse!) a patent application is never the same.

Patent offices know that applicants might be in a hurry to get their patent granted, so they alwasy try to find ways to accelerate prosecution. One of this ways is called Patent Prosecution Highway: different patent offices have made deals between each other so, if you have a positive Search Report of your invention, maybe you can use it in another country to accelerate the grant of your patent there.

I just tell you that it is impossible to remember all these agreements between patent offices by heart. So if you see that a client has a positive search report and has applied for patent protection in multiple countries, it is worth to check if you can accelerate grant, or the client is interested in do so.

You can find more information here.

Divisional applications (and beyond)

Sometimes patent applications can be splitted in different parts, for instance when an examiner from a patent office finds that your patent application has actually more than one invention.

You will be able to file what is called a divisional application. Your divisional will have the same filing date as the parent, and you will have to pay renewal fees up to that point if neccesary (YES for the EPO, NO for the USA, CN, JP...). So this can be quite expensive for a client.

In the US there are other types of Divisionals. One is the Continuation (CON), that you file where no restriction requirement was found in the parent and does NOT add subject matter to your parent, and a Continuation In Part (CIP) which adds subject matter to the parent. I think CIP is super US specific, since normally Patent Offices does not allow to introduce new subject matter in your application or its familty, but the USPTO is one of a kind!

Be careful because you can only file divisionals while the parent application is pending, so beware of the date of grant. If you file a divisional in the date your patent is granted, maybe it will be too late!

Conclusion

Patent are DEFENSIVE tools with which you protect your invention from being exploited without your permission. And they are expensive tools. So, before filing a patent application, it is advisable to come with a plan to know in which countries you should protect my patent. As a rule of thumb, these countries are the countries where you manufacture or produce your patent (being it a device or a medecine, for instance) AND the countries where you are going to commercialise it. Once you have this clear, you are one step closer to succeeding in the protection of your invention.