Are you an inventor with an amazing new idea? Or do you already hold a US patent and you’re looking to expand your protections to other countries? No matter the circumstances, you will come across WIPO and their patent search tools. Before any patent is granted, the patent office must ensure that the idea/invention is unique. Knowing how to and utilizing the WIPO patent search tools first is the best thing you can do. This tool can save you time, money, and heartache by helping to ensure the patentability of your invention.
What is WIPO?
WIPO stands for the World International Patent Organization. They are a global forum for intellectual property services, policy, information, and cooperation. They are a completely self-funded agency of the United Nations. Currently there are 192 member states. You can find a full list of member states here.
WIPO’s goal is to create a world with a much more balanced system of intellectual property (IP). They do this by holding global policy meetings and housing a world reference source for IP information. However, WIPO is most famous for the technical infrastructure they created to connect international IP systems. This is known as the WIPO patent.
The Patent Cooperation Treaty (PCT) is an international patent law treaty, which was concluded in 1970. The PCT created both WIPO and the WIPO patent search system. WIPO makes it possible for an inventor to seek patent protection simultaneously in many countries. This is known as the WIPO patent or international patent application.
Why Use the WIPO Patent?
If you have been through any country’s patent system, you know that it is time-consuming and expensive. And, in the end, all of that work only protects your invention in that particular country. So, if you have a US patent and someone in another country is infringing and copying your invention, you are out of luck. That US patent only protects your invention from US patent infringement.
That is the beauty of the WIPO patent. This patent allows you the chance to obtain protection in up to 120 member countries. You know that it’s quite an undertaking to get an international patent. But, rest assured, the work is definitely worth it in the end.
How to Obtain a WIPO Patent?
Actually getting a WIPO patent is one of the final steps in the patent application process. However, that does not mean that you cannot use the WIPO patent search tools before you are ready to file. The thorough inventor will interact with WIPO many times for just one patent.
Included below are the requirements to obtain a WIPO patent. This includes pertinent how-tos, tips, and the processes involved.
The Home Patent
Before you can file an application with WIPO you must either already have a patent under your home country’s intellectual property (IP) laws or have filed your patent application in your home country.
There are a number of articles on our blog that can assist in filing both the provisional and non-provisional patent applications in the United States. This article, in particular, provides a great overview of the process: Patent Applications: 7 Things You Need To Know.
Who Qualifies for a WIPO Patent?
The PCT is the branch of WIPO that handles the management and registration of international patents. It is this system that allows the inventor to file a single application and pay a single set of fees. Unfortunately, not every inventor will qualify for the ability to file under this system.
To meet the entitlement requirement, you must:
- have a business (i.e., a real and effective industrial or commercial establishment) in a member state, or
- be domiciled in a member state, or
- be a national of a member state
It is important to note that once your connection is established, this will be your home IP office as well. Therefore, when it is time to file your WIPO patent application you will file it with this country’s IP office or with WIPO directly. You can make this choice.
Additionally, if you have a connection with several members (for example, you may be a national of Mexico living in the United States of America), you can choose any one of these members to file your international application.
What’s the Point in Searching?
The key requirement to all patents is that your invention or process is a completely original idea or way of doing something. Therefore, we recommend doing your first patent search very early in the process. Before you spend any time or money on an idea, make sure it’s truly unique. Plus, you don’t want to take the chance on infringing another product. This can be extremely costly.
Early on, you may only be concerned with the patentability of your invention in your home country. Can you sell your product legally and without fear of a lawsuit? However, if you feel like your invention is truly special or you have any interest in selling internationally, you may want to expand your search.
Conducting a detailed search, at any point in the process, also helps to gauge the profitability of your product. Are there lots of similar designs? Are there lots of failed patents in your area? This information is crucial in determining how much an inventor should spend on a given product.
Even though both your home country’s patent office and WIPO will conduct in-depth searches on your invention, you must still search first. Filing patents is not an inexpensive process. Save yourself both time and money by knowing that your invention is unique.
The WIPO Patent Search
We know that WIPO handles the filing and management of their international patents. So, it makes sense that they also have the best patent search tool available.
A WIPO patent search is conducted in the WIPO database. This database is called PATENTSCOPE. It is a free search service that holds tens of millions of international patent paperwork. It provides access to all PCT applications on the day of publication. There are additional patent documents that are provided by participating national and regional patent offices. Access PATENTSCOPE directly by following this link.
The search tool itself is fairly streamlined. There is a simple search text box on the front page along with headers for browsing and translating. If you need any additional assistance learning and understanding how to use PATENTSCOPE, WIPO does a great job of providing a number of video tutorials. They range from simple searches all the way to long and complex queries. The video tutorials can be found here.
The WIPO Patent Application Process
Deciding to file a WIPO patent is the beginning of a long process. The WIPO website allows for an online patent application using e-filing. To do so, a patent applicant will need to create an account and download the software to assist in the filing from the WIPO website. The application will need to include the usual materials required for patent applications — drawings, photos, descriptions etc.
WIPO allows applicants to postpone the costs associated with international patent protection. You are simply filing a single international patent application at a single patent office.
Filing an application for any patent is expensive. Yes, the online system makes it easy. Sure, it costs less than filing a patent in multiple countries. But, it’s still expensive. The average cost to file an application with WIPO is $4000. USD. This fee includes the filing fees, international search costs, etc. These fees vary based on where you file and if you meet certain fee reduction criteria. A full description of the fees has been provided by WIPO here.
Receiving the right to apply for patent protection almost internationally is not a quick process. Patent applications regularly take 30 months to account for backlog, review, and a decision. If you have a priority date, the date that your home country issued your patent, you may be able to save some time. The filing date determines your place in line. Therefore, if you have the option to use a priority date it’s a good idea to use it. You can move up to 12 months ahead in line based on your priority date. If you do not have a priority date, the date of filing your WIPO patent application will be your filing date.
Those granted a WIPO patent have the ability to apply for patent infringement protection in any of the cooperating countries that you plan to do business.
Should I File a WIPO Patent Application?
If you are unsure about filing an international patent application, you may need to find someone to discuss this with. That is because, without the specifics of your invention, circumstances, etc, it is impossible for any article to tell you for sure. Don’t worry, there are people that can help. A skilled patent attorney can handle the entirety of this process for you. Plus, their experience means they are a great sounding board for advice.
LawTrades Loves Patents
If you need assistance in finding the perfect patent attorney for you, and at the best price, LawTrades can help. We will match you up a skilled attorney ready to help you obtain international patent protection.