Dipl.-Ing. Thomas Schwarz, Patentanwalt, European Patent Attorney

Dipl.-Ing. Thomas Schwarz, Charrier Rapp & Liebau

Patent law: “Is my patent valid in other states?”

B4B readers ask, our industry experts from the region answer: “What do we have to look out for when we acquire a patent that is registered abroad but not yet in the EU?” Dipl.-Ing. Thomas Schwarz, patent attorney at CHARRIER RAPP & LIEBAU, knows the answer.

In patent law, the so-called territoriality principle applies. This means that a patent is only valid in the country in which it is granted. A patent granted only for the USA, for example, cannot therefore be used to prohibit the use of the invention in the EU or in other countries outside the USA.

Subsequent registration in other countries

However, patent law offers the possibility of filing a subsequent application for the invention in other countries within 12 months of the filing date of the first application, using the priority of the first application. Such a subsequent application using the priority of a first application would be treated with respect to the examination of novelty as if it had already been received on the filing date of the first application.

Thus, if there is also a desire for protection in the EU for an existing first application outside the EU, it must be determined whether the priority period of 12 months from the filing date of the first application is still running or has already expired.

European patent application

If the priority period is still running, protection in all member states of the European Patent Convention could also be achieved with a European patent application. In such a European patent application, the priority of the foreign prior application would then have to be claimed. In addition to the European patent application, there is also the possibility of an international patent application. With a so-called PCT application, in addition to the EU states, other non-EU states, such as the USA, Japan, China, Canada or Korea, could also be named as designated states.

Subsequent application after priority period

However, if the priority period has already expired and the subject matter of the first application has already been published, the protection of the first application can no longer be retroactively extended to further states. A subsequent application filed after the priority period has expired would then be assigned the actual later filing date. This may result in the subsequent application being precluded from publication of the earlier application during patent examination in a manner detrimental to novelty.

The priority period is therefore an important criterion for the question of extending protection to further states.

Do you have any questions for patent expert Thomas Schwarz, or would you like more in-depth advice?

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