When an "international patent" is not what it seems...

I enjoy learning about new technological developments - particularly those having chemistry at their core - as it seems there is something to read almost every day. An article entitled, "Coty files patent on long-lasting scented lotus antiperspirant", in Cosmetics Design Europe most recently caught my attention.  

My patent attorney instincts soon took over, however, as I began reading the article which refers to Coty's "international patent".  

At Marks & Clerk, we firmly believe that a key part of our role as IP attorneys is education about all things patent, trade mark, design, etc. Now seems an ideal opportunity, therefore, to publish a reminder (or lesson!) to readers of this post regarding "international patents".  

To start with, there is no such thing as an "international patent"; rather, what is applied for is an "international patent application", which describes in detail an invention for which the applicant would like to be granted patent protection.  

"What's the difference?", I hear you ask.  

Well, a patent must be granted before it can be enforced, so knowing whether or not you are dealing with a pending patent application or a granted patent is important.  

International patent applications are quirky because in and of themselves, they simply cannot lead to "granted international patents". On filing, a single international patent application is equivalent to filing over 150 separate patent applications in countries or regions (we will focus on countries for the purpose of this post) that have agreed to the international treaty governing the existence of such applications (known as the Patent Cooperation Treaty, with international patent applications often being referred to as 'PCT applications').  

The single international patent application is subsequently published (as with the Coty application) and, typically about a year later, has to split into separate National/Regional Phase applications in the applicable countries ('PCT Contracting States') of the applicant's choice. Once so split, each National/Regional phase application is (usually) subject to examination by a Patent Examiner, with the aim of achieving granted patents in each country.  

It is worth remembering that the claims of a patent application (the numbered statements that define the scope of the invention; usually found towards the end of the patent application) may well be amended (usually by narrowing their scope) during the examination phase. So a published patent application, such as the Coty application in the article, may well cause consternation when it is first encountered, but could become less relevant if and when it is granted as one or more patents.     

A guide as to what might occur during the examination phase of a patent application can be found in the published Search Report, which is a list of potentially relevant 'prior art' documents that a Search Examiner has indicated might prevent a patent from being granted, or at least might require the claims of the application be amended before grant. For the Coty application, the Search Report was published at the end of the application document. It will be interesting to see which countries the international application splits out into in due course, and from there, what scope of claims is ultimately granted. We should know the answer to the first part in about a year's time...so watch this space!