AMUK member Primetals Technologies (‘Primetals’) have recently been granted US patent 12233443. The patent relates to a ‘sexto’ (six-high) rolling mill stand.  that is suited for hot rolling an intermediate strip into a thin strip that is less than 0.8 mm thick. A combined casting and rolling installation that includes the six-high rolling mill stand allowing for hot rolling in long uninterrupted sequences, without any change of the work rolls to obtain a strip with good geometry due to moderate rolling forces.

Primetals 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 priority date 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.

In this case, the applicant has chosen to file the first application not in their home territory, but at the European Patent Office (EPO). The EPO provides a single patent grant procedure on behalf of 39 member states. Once the EPO grants a patent it issues as a bundle of national patents. The benefit is that the Applicant does not need to prosecute the patent application in each of the territories in which a granted patent is desired and the whole procedure is conducted in a single language.

However, the upfront costs of the European Patent Application are significantly more than the cost of filing a first application in, for example, the UK or, in this case, Austria. So why has the applicant chosen to file the first application at the EPO rather than in Austria?

One reason that the applicant may have chosen the EPO as the office of first filing is that the EPO has a very vigorous search and Examination, and all first applications filed at the EPO are treated as being urgent – the search and examination are effectively accelerated. A positive search result at the EPO may provide an early indication that the patent is likely to be granted everywhere and may provide investors with confidence. A positive search result at the EPO may give the applicant confidence to proceed with the PCT application and obtain patent protection more widely.

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, trademarks, designs, contracts and contentious matters, and is an associate member of AMUK.