International Patents
Every year, Icelandic entities file numerous patent applications in other countries. One way to do this is to apply to the World Intellectual Property Organisation (WIPO). A single application is established in over 150 countries that are signatories to the Patent Cooperation Treaty (PCT). The PCT is an application and examination process, after which the application must be transferred to the states where protection is requested. The ISIPO can act as an intermediary in PCT applications.
Should I apply?
Before an international application process commences, it is important to investigate whether the invention meets all the conditions. It must be new on a global scale, original, and described in such a way that a person skilled in the art can replicate it. Other inventions can be researched in international databases, a collaborative search can be ordered from the ISIPO or the conclusions from the investigation of Icelandic base applications can be used, if available.
When can I apply?
An international application can be filed at any time. It is good to begin by filing an application in Iceland to get an assessment of the application and then use the priority right, i.e. the 12-month period from the filing date of the Icelandic application, going forward.
Priority right
If an application is filed within 12 months of the filing date of the Icelandic application, the application is recorded as having the same filing date as in Iceland. The international filing date then becomes the effective date. This means that no time is lost in getting an initial reaction to the Icelandic application before commencing the international application process.
How do I apply?
We recommend filing applications via ePCT-Filing, WIPO’s online application system. Care must be taken to ensure that all the formatting conditions are met, e.g. regarding text, line spacing, labelling, etc.
Costs
The costs of an international application can be estimated on the basis of the list of tariffs published on WIPO’s website. The fee is based on factors including the international application fee, the search fee, and the fee for the number of pages in the application, as well as the ISIPO’s administration fee and the fee for the priority document. The total application fee is paid to the ISIPO, which then forwards the payments to WIPO.
Formal review
When the application fee has been paid, the ISIPO reviews the application with regard to the formal conditions that the application must fulfill. If any comments are made, the applicant will receive a notification to that effect and a deadline for making improvements, after which WIPO takes over the review of the application. WIPO will give the applicant time to resolve any comments that they may make.
What happens once I have applied?
The application must specify the research body that will receive the application for examination. Options for Icelanders include NPI and EPO. First, an extensive search of what is previously known is carried out and the applicant is sent the resulting International Search Report (ISR). An International Preliminary Report on Patentability (IPRP) can subsequently be obtained.
The process takes several months, but, by 30 to 31 months after the initial filing, a decision must be made on the countries where the invention should be protected and applications must be sent to the countries’ patent offices, which will then decide individually on whether to grant a patent. If an application is denied, the applicant is notified and given a chance to respond. All the deadlines in the process must be carefully observed so that the application does not lapse.
How do I keep track of my application?
In the ePCT database and in Patentscope, applications can be monitored and all application data accessed.