The International Patent Classification (IPC), administered by the World Intellectual Property Office (WIPO), is a hierarchical system for use in relation to the uniform classification of patents and utility models.

The main objective of the IPC is to establish an effective search tool through which users can retrieve relevant patent documents such as applications and specifications of granted patents et al. Such documents may be used, for example, to assist in the establishment of novelty and assessment of an inventive step or non-obvious element of an invention.

Moreover, the IPC also facilitates selective dissemination of relevant patent and utility model information across users of the system, and provides a basis on which statistical analysis on intellectual property and technological development can occur.

Established by the Strasbourg Agreement of 1971, the IPC contains information on patent publications from all Contracting States privy to the system, as well as most other jurisdictions, making it the most widely used patent classification system worldwide. Each patent or utility model publication is assigned one or more classification symbols which indicate the subject, or technological area, to which an invention pertains, allowing users of the IPC to efficiently distinguish details of patent publications. By utilising language-independent symbols, the classification system allows for the multi-jurisdictional use of the IPC in a uniform manner.

The classification system is split into eight alphabetised sections of subject areas for patents and utility models, namely:

A. Human necessities

B. Performing operations and transportation

C. Chemistry and metallurgy

D. Textiles and paper

E. Fixed constructions

F. Mechanical engineering, lighting, heating, weapons and blasting

G. Physics

H. Electricity

Each of these sections is then divided into classes and subclasses, as well as groups and subgroups, each possessing its own alphabetical or numerical code. The corresponding letters and numbers come together to form an overall symbol to which patent publications can be assigned, for example in the format of A01B 1/00.

The "hierarchical" element is demonstrated by the tiered format of section, class, group etc. Typically, a patent examiner will assign the classification to a patent application at the most detailed level possible in accordance with their technical content and subject matter.

The IPC is reviewed annually to reflect relevant technical developments, with the newest version being enforced on January 1st of each year. At present, the classification system is in use in over 100 countries across the globe, and divides technology into almost 80,000 areas. The IPC also details a Catchword Index, which constitutes a list of 20,000 technical key terms in relation to the appropriate classification placement, provided in both English and French, the two main languages of the system. A detailed version of the index is also provided in English and German by the German Patent and Trademark Office, which contains over 100,000 terms.

Other patent classifications are also in operation, for example, the Cooperative Patent Classification (CPC), managed jointly by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO).

The International Patent Classification system, as well as other operational classification models used worldwide, can prove a vital tool for use in the retrieval and assessment of patent documents. If you have any questions regarding the IPC, or are interested in filing a patent or utility model application, please feel free to contact us.

Filing patent applications in more than one jurisdiction can prove to be a potentially complex process, but the PatentCooperationTreaty (PCT) provides for a simplified and streamlined route for the filing of patent applications internationally.

The PCT entered into force in 1978, and is administered by the World Intellectual Property Organisation (WIPO). The multilateral treaty currently incorporates 153 national and regional offices, including the IP 5; China, South Korea, the US, Japan, and the EPO.

Through the PCT, applicants can file one patent application, accompanied by the payment of one set of fees, designating any or all PCT member states for further filing. The PCT does not provide for an "international patent", since patent protection can only be valid within a given national/regional territorial jurisdiction. Rather, it serves as a basis for further national patent proceedings in the countries of the applicant(s) interest, meaning a patent obtained via the PCT route is still national or regional in nature.

The process of filing an application through the PCT begins with the international phase. Typically, applicants will first file a local patent application which establishes an earlier priority date. The PCT application should then be filed with a "Receiving Office" (RO) within 12 months of the filing of the priority application. However, the step of a first local filing is not obligatory and may be omitted.

The RO is either a national or competent regional office of the PCT contracting state which at least one of the applicant(s) resides in or is a national of. The International Bureau of WIPO also acts as the RO. Once received by the RO, the international application will be checked to ensure it has met the PCT formal requirements.

A PCT application will then be subject to an international search, undertaken by a competent International Searching Authority (ISA). This will result in an InternationalSearchReport (ISR) which is established within 3 months from the receipt of the copy of the international application transmitted by the RO to the competent ISA, or within 9 months from the earliest date of filing if priority was claimed, whichever time limit expires later.

The ISR will detail any prior art found which may impact the patentability of the subject matter contained within the international application. A preliminary WrittenOpinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet the criteria of novelty, inventive step and industrial applicability set forth by the Treaty. The same WOISA will later be used as the International Preliminary Report on Patentability (IPRP) if a demand for further International Preliminary Examination is not made.

Any amendments to the claims in the application may be made within 2 months of the establishment of the ISR or 16 months from the priority date, whichever time limit expires later.

Provided the application is not withdrawn by this stage, the international application is then published on PatentScope by the International Bureau of WIPO after the expiration of 18 months from the earliest priority date.

Applicants may further request an optional international preliminary examination either within 3 months from the date of transmittal to the applicant of the ISR and WOISA, or 22 months from the priority date, whichever expires later.

Requesting an international preliminary examination can be useful to applicants who wish to amend, or raise arguments in relation to, their application in light of any issues highlighted in the WOISA, as this may result in a more positive International Preliminary Report on Patentability (IPRP)/International Preliminary Examination Report (IPER). Moreover, requesting such an examination may also help to better estimate the applicant’s chances of success in further proceedings in the national/regional phases.

Since an international application does not result in automatic national protection for an invention, it is required to enter the PCT national/regional phase in the applicant’s jurisdictions of interest within 30/31 months from the earliest priority date. The exact time limit depends on the designated states/organisations for entry. The applicant should pay the necessary national/regional fees, as well as file any translations of the application and other documents that may be required upon entry.

Thereafter, the application will be examined by each individual national or regional office of the designated states, and patents will be granted in each state respectively, depending on whether it meets requirements of patentability established by national law of the designated states.

Applicants may also be obliged or recommended to appoint a local patent agent in each of the respective designated jurisdictions.

Filing an international PCT application is an advantageous opportunity for applicants to prolong the time period for making a decision as to which jurisdictions to pursue protection in, estimate their inventions, and seek investor support for their filings from 12 months under the Paris Convention to 30/31 months. Furthermore, some national/regional offices provide a number of discounts for issued ISR/IPRP in respect of international applications, helping to reduce costs for obtaining a patent.

If you have any questions regarding the PCT, or are interested in filing, please contact us.

Like many forms of intellectual property, patents can be leveraged in several ways by owners for their financial gain. This can oftentimes be abused, and one widely utilised form of such abuse is so called patent "trolling" or "hoarding", committed by patent trolls, often referred to as Patent Assertion Entities (PAE's), and Non-Producing Entities (NPE's). These entities obtain patents with the sole purpose of holding them "hostage" over other companies for fiscal gain, or to beat out the competition. They threaten other businesses with the same or similar patent subject matter, forcing the victim to decide between potentially lengthy and expensive litigation, or paying the trolling entity a sum of money to settle the dispute outside of legal proceedings. Patent trolling can be hugely detrimental to businesses and the economy as a whole, so what are the routes to resolving the threat of a patent troll?

A large number of victim companies subject to patent trolling in the USA opt to pay a settlement or license fee to the trolling entity outside of legal proceedings. One reason for this lies in the US court fees. For example, an estimated 5 million USD is spent per US patent lawsuit involving large corporations, whilst patent trolls strategically place their settlement fee below litigation costs, at an average of 2 million USD.

Another potential reason for frequent out-of-court settlement is that in the event the patent troll does succeed in litigation, the victim business could potentially lose its place on the market, and it may cost them greatly if the threatened infringement proceedings result in an injunction.

An alternate option would be to design around the alleged infringed patent, which may be successful in avoiding both a settlement fee and legal proceedings. This may, however, pose the risk of lowering the quality of the product and damaging the victims reputation on the market, therefore it is important to weigh up the risks of altering the product.

If a victim company does opt to proceed with litigation and fight back against the troll, there are a few stances that could be considered. For example, the victim may choose to enlist legal expertise before making a decision on whether to engage with proceedings. The expert will take a preliminary look at the subject matter which is targeted by the trolls, with the aim of assessing whether it does, in fact, infringe upon the trolling entity's patent, as well as the overall validity of the victim's patent covering the subject matter, should they have one. Legal clarity on these points can provide a solid basis on which to confront the trolling entity in court, and be a considerable factor in opting to litigate instead of paying a settlement fee.

Aside from the possibility of succeeding in the legal battle, it may be effective for the victim to invoke cancellation proceedings against the troll entity's patent. Furthermore, the discovery phase of litigation may uncover useful information on the trolling entity's patent(s), which can be advantageous for the victim in terms of their strategy in the long-term fight against the troll.

In light of the risks posed, businesses should remain aware and prepared for the event of patent trolling and subsequent litigation. If you believe you are falling victim to a patent troll, it is recommended that you consult with a legal professional. Contact us, if you wish to discuss.

As a rule, a patent application has to be novel, industrially applicable and involve an inventive step in order to be registered. In turn, novelty requirement obliges the applicant to keep their invention undisclosed until the moment of filing, otherwise, this information could become a part of the prior art (the topic which we discussed earlier). If included in the prior art, such materials may destroy novelty and lead to rejection from a patent office.

However, don’t panic if you have disclosed your invention before filing. Fortunately, patent laws of many countries offer grace period – a specific period of time (usually 6 or 12 months before the filing date) during which said disclosure of the application materials does not disrupt the criterion of novelty. Countries such as the US, Australia, Canada and Japan provide for a 12-month grace period whereas a 6-month grace period is available in Russia, Eurasia, Albania among others.

Different countries have different conditions on which the applicant can take advantage of the novelty grace period. Some states allow for the authorized disclosure at an officially recognized event (an exhibition or a scientific presentation, for instance) within the prescribed time limit before filing. Others may exempt disclosure from the prior art if it was made in bad faith by a third party, provided that a corresponding proof is given.

Besides, some countries provide a novelty grace period for IP types other than inventions, such as designs and utility models.

In order to find out whether you can use the novelty grace period in a certain country and what is required to do so, we recommend consulting a patent attorney in the corresponding jurisdiction through IP-Coster, an easy-to-use and convenient platform connecting applicants and agents.