Biomedical Engineering Reference
In-Depth Information
The reply from UIBM examiners is not mandatorily due
However it is necessary to send a reply to the UIBM notice if the search report
is negative, so as to avoid the rejection of the patent application.
Instead it is not necessary if the search report is positive: however, office
actions are always sent whether the search report is positive or not.
In any case, also when the search report is positive, it is recommendable to send
the UIBM a simple notice applying for the grant of the exclusive right title, high-
lighting that according to the search report and the written opinion the invention is
new and not-obvious [ 5 ].
3.2.4 The International Patenting Procedures
There are three main types of patent protection at the international level
• national ilings;
• the European patent system;
• the PCT procedure.
The first way to extend a patent application abroad is to file in each foreign coun-
try of interest, a national application corresponding to the original one.
The applicant of a national patent application can file any foreign applications
within 12 months from the national filing date. Every application will follow a
proper procedure. Actually, in some countries the patent is granted as a result of a
simple administrative procedure, in others the patent is granted after a substantive
examination of patentability requirements (e.g. in Germany, Japan, etc…).
A second way to extend abroad a national patent application is the European
patent system. It is a procedure that does not provide a single title with validity in
all contracting States of the European Patent Convention, but rather a bundle of
national patents. The advantages of the European patent system are the following:
it simplifies the stages of filing, substantive examination and grant and it allows
to obtain individual national patents, all examined in the same way and, conse-
quently, all with the same scope of protection.
The third way refers to the PCT procedure.
The PCT process does not provide the granting of a patent, but a patentability opin-
ion, which is not binding for the national offices: a national filing or a regional stage
(EPO, OAPI, ARIPO, etc.) must therefore be carried out in each country of interest.
The PCT procedure allows the applicant to exercise a filing option within
30/31 months from the filing date of the priority application in all the Contracting
States of the Patent Cooperation Treaty at a relatively low cost.
The PCT process is advantageous when the interests of territorial protection are
mainly overseas, when the number of foreign countries where filing is envisaged is par-
ticularly high and/or includes States where costs are particularly high (such as Japan).
The PCT procedure is also profitable when the invention is still at an experi-
mental stage and must still be completed or when a license agreement is being
negotiated, because it allows delaying the entry into the national phase.
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