The filing of a patent application is associated with numerous considerations. Should it be firstly filed as an international PCT application? Would it perhaps be better to directly enter one or more regional phases in combination with some selected countries of interest? Alternatively, should the application firstly be filed nationally before deciding how to proceed?
Obviously, there is no default answer to these questions. Instead, the patent application filing strategy must be decided on a case-to-case basis by considering factors such as geographical locations of clients, competitors, manufacturer sites, possible future markets etc., as well as the applicant’s financial allocation for the application. It is the duty of the patent attorney to analyze these factors and to protect the interests of the applicant, based on the conditions at hand, when deciding where and how to file.
By firstly filing a patent application nationally, the applicant may start the patent journey cautiously and avoid relatively high costs at an early stage. Seen from a local perspective, a patent application may be filed nationally with the Swedish Patent Office (PRV). A filing with the PRV is beneficial in that the filing fee is relatively inexpensive and that the search/opinion regarding the patentability of the application is issued relatively fast. These aspects may be of special interest for applicants desiring to keep initial costs low and/or being unfamiliar with the prior art in the field of the application. Furthermore, a relatively quick patent application procedure gives the applicant a further insight regarding the possibility of obtaining a Swedish patent and/or an indication when contemplating a PCT-route wherein priority is claimed from the Swedish application. In some cases, it is even possible to obtain a national Intention to Grant Communication (“slutföreläggande”) within the priority year, which may even further contribute to the evaluation of a possible PCT filing.
A national patent application may be filed with the PRV in English, followed by a later translation into Swedish. A first filing in English is advantageous in that a continuation into the international PCT phase may thereby be prepared. Furthermore, in a recent press release from 30 June 2011, issued by the Swedish Ministry for Industry, Employment and Communications, it was announced that the Swedish government has decided to investigate the possibility of abolishing Swedish translations of national patent applications filed in English. It will also be investigated if national patents could be granted in English similarly to the validation of European patents in Sweden. The mentioned measures, if put into practice, will lead to further procedural simplifications and translation cost savings for the applicant, and will moreover, as related to this context, influence the step of where/how to file the application.
To conclude, the above highlights several beneficial aspects of a first national filing. On the other hand, it should be noted that directly filing an international or regional patent application could be preferred, dependent on the case at hand. Although the way of filing a patent application hereby seems rather complex, the content of this text may, as a final remark, be summarized in one sentence: a sound patent application filing strategy, whether international, regional and/or national, is based on the interests of the applicant and the expertise of the patent attorney, aiming to protect these interests.
Love Koci, Patent Attorney, Awapatent