How to register an international patent step by step.

Registering an international patent is an essential process for inventors and companies who wish to protect their innovations in several countries. Through the Patent Cooperation Treaty (PCT), it is possible to apply for a patent in a unified manner, instead of filing individual applications in each country. 

The PCT system allows filing a single international application that covers all countries adhering to the treaty. However, the granting of patents remains the responsibility of national or regional offices, meaning that definitive protection is granted in the so-called “national phase.” For this, it is necessary to file an application in each country where protection is desired, within a period of 30 months from the international filing or priority date.

In Spain, the Spanish Patent and Trademark Office (OEPM) facilitates this process by acting as a receiving office and administrator of the international search and preliminary international examination, allowing all procedures to be carried out in Spanish.

Aspects to consider before registering an international patent

Before starting this process, it is essential to follow certain key steps to ensure that the application is successful and that the invention is duly protected.

1. Do not disclose the invention before filing. Certainly, novelty is an essential requirement to obtain a patent. Any prior disclosure, whether on social media, publications, or public presentations, could invalidate the application. For these purposes, if it is necessary to share the information with potential investors or collaborators, it is advisable to do so under a non-disclosure agreement.

2. Conduct a prior search. Before proceeding with the application, it is essential to investigate whether the invention has already been registered or disclosed previously. For this, specialized databases can be used, such as:

• INVENES
• Espacenet
• Patentscope

Another option is to request a Technological Patent Report (ITP) from the OEPM, which will allow obtaining a detailed analysis of relevant patent documents and scientific literature worldwide.

3. Determine the geographical scope of protection. Before opting to register an international patent, it is advisable to consider national protection. Filing an application with the OEPM allows obtaining a first patentability report quickly, which facilitates decision-making on the viability of international protection. Likewise, having filed a first national application can provide access to discounts and subsidies.

It is important to evaluate in which markets you wish to exclusively exploit the invention. Based on this evaluation, it is feasible to opt for different protection modalities:

• National patent
• Utility models
• European patent
• PCT international application

4. Review aid and subsidies. The international protection process can be costly, so it is advisable to check if aid or subsidies can be accessed. At the national level, the OEPM offers support programs to promote the protection of patents and utility models abroad.

First steps of the application process to register an international patent

Indeed, the process of registering an international patent under the PCT involves several phases aimed at evaluating the patentability of the invention. Within this procedure, an international search report (ISR) is carried out, accompanied by a written opinion that analyzes whether the invention complies with the fundamental requirements: novelty, inventive step, and industrial applicability. That is, that it does not fall into the categories of what cannot be patented. Subsequently, it is feasible to request an international preliminary examination to reinforce the evaluation of the application.

1. Filing of the international PCT application. Any Spanish natural or legal person, or with residence in Spain, can file an international PCT application through the Spanish Patent and Trademark Office (OEPM). The necessary documentation to formalize the application includes:

• Petition for the international PCT application, with the title of the invention, applicant and representative data, if applicable, and corresponding signature.
• Detailed description of the invention.
• Claims specifying the innovative aspects.
• Drawings related to the description or claims.
• Technical summary of the invention.
• Proof of payment of the corresponding fee.

2. Granting of the international filing date. Once the application to register an international patent has been filed, the OEPM reviews that it complies with the formal requirements to grant it an international filing date. If deficiencies are detected, the applicant has a period of two months to correct them. On the contrary, if the documentation is correct, the international filing date is assigned.

Second stage: Evaluation and international search

3. 3. Verification of fees and formal examination of the application. The OEPM reviews that the fees have been paid and that the application complies with the formal requirements. In case of irregularities, the applicant has two months to rectify them. Subsequently, the OEPM sends the original document to the International Bureau and the search copy to the International Searching Authority.
   4. International search report and written opinion. Indeed, the next step in the process of registering an international patent is the preparation of the international search report (ISR). It analyzes whether there are antecedents that may affect the patentability of the invention. Then, the applicant receives this report along with a preliminary written opinion on compliance with patentability requirements.
   5. Publication of the application. 18 months after the international filing date (or priority date, if applicable), the International Bureau publishes the application together with the ISR. From that moment, the file becomes publicly accessible.
   6. International preliminary examination (optional). By the way, if the applicant wishes, they can request an international preliminary examination, in which the OEPM re-evaluates patentability. Generally, this examination is based on a revised version of the application according to the written opinion of the ISR.
   7. Entry into national phase. 30 months after the international filing date (or priority date, as the case may be), the applicant must file a patent or utility model application in each country where they wish to obtain protection.

Procedures for patent registration via PCT

Specifically, applicants can manage the process in two ways: electronically or by submitting paper forms, with the possibility of changing modality at any time.

On the other hand, you can pay the fees for the international PCT application before or after filing the application. If paying beforehand, you must include the proof of payment in the documentation. In case of later payment, it is necessary to indicate the PCT application number on the payment form.

However, if you file the application electronically, you will get discounts on the fees established by the World Intellectual Property Organization (WIPO). This will depend on the format of the documentation (PDF or XML). Even better, OEPM fee-subjected procedures carried out electronically can benefit from a 15% discount if payment is made before or at the same time as the corresponding procedure.

In this regard, according to current legislation, some individuals and entities must communicate obligatorily with the Public Administration electronically. Specifically, these would be:

3. 3. • Legal entities.
      • Entities without legal personality.
      • Professionals who must be compulsorily registered with a professional association, such as Industrial Property Agents.
      • Representatives of individuals or entities that are obliged to carry out procedures electronically.

International patent registration is easier with ISERN’s support

With over a century of experience in the protection of patents, trademarks, and industrial and intellectual property rights in Spain and Europe, at ISERN Patentes y Marcas we offer expert advice at every stage of the process when you need to register an international patent. Our team of highly qualified professionals accompanies you from the preparation and filing of the application to the defense of your rights once the patent is granted. In addition, we monitor any possible improper use by third parties and act to protect your intellectual property. Consult with us at any of our twelve offices in the main cities of Spain and ensure the best protection for your innovations.