A patent application (WO2024183872) was published recently in the name of Plastometrex Ltd. (an AMUK member). The patent application relates to a portable apparatus for performing indentation plastometry – a technique for characterising the inelastic properties of materials by penetrating an indenter into a single sample of material repetitively and measuring the residual indent profile; iterative numerical modelling of the indentation process is performed in order to form an accurate structural assessment.
Plastometrex, have chosen to take advantage of the Patent Cooperation Treaty (PCT) system for so called ‘International Patent Applications’. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a large number of countries.
A common strategy for obtaining patent protection for a new product is to file a first patent application in your ‘home’ country (for example the UK) where the official fees may be relatively low, which secures a so-called “priority date”. The first filing secures this priority date, which provides a period of twelve months (the priority year) in which the invention can be disclosed without affecting your rights to file further applications outside your home territory.
Patents are territorial rights, which means that the exclusive rights granted by a patent are only applicable within the country or region where the patent was filed and granted, and do not automatically provide worldwide protection. Obtaining and maintaining patent protection in every possible jurisdiction is prohibitively expensive.
Consequently, at the end of the priority year many applicants will file a PCT application rather than file in all of the potentially desirable territories. This provides two benefits: the decision as to which territories to obtain patent protection can be put off to a later date, and the costs in filing and prosecuting those potential applications, can be put off for a further 18 months.
By filing the first application as a PCT application, the applicant has, in this case, brought forward the date on which the decision must be taken and fees paid for filing national and regional applications. One possible reason for this relatively unusual strategy is that the PCT application will be searched by the European Patent Office and the European Patent Office will issue an ‘opinion’ on the patentability of the invention claimed in the application. It is generally considered that the European Patent Office provides a more complete search of the prior art and the opinion provided tends to be more stringent than that provided by, say, the UK Intellectual Property Office (UKIPO).
This example shows that obtaining appropriate patent protection can be a complex endeavour, with many different possibilities for obtaining appropriate protection. Marks & Clerk has offices around the world, each with locally qualified IP specialists that can guide you through the process and make sure that you make the most efficient use of your IP. If you have any questions about patent filing strategies, or about any other aspect of IP protection, our team of attorneys are always happy to arrange a free, no-obligation chat.
Marks & Clerk advises on all aspects of IP, including patents, trade marks, designs, contracts and contentious matters, and is an associate member of AMUK.