The what, how, where and when of re-registration of patents
13 Sep 2019
Having a proper patent filing strategy for an invention is crucial to an inventor or applicant. An ideal filing strategy would involve filing patent applications in the countries and jurisdictions where a commercial potential of the invention is high, and at a time when the applicant has had the opportunity to obtain finance for the expenses associated with the invention, in order to be in a position to cover the costs associated with filing patent applications. Taking cognisance of the possibility of re-registration may therefore be of great value to the applicant. The patent attorney plays a major role into providing his or her client with advice on a well-considered filing strategy to ensure maximum benefit accrues to the patent holder in return for his ingenuity.
Re-registration allows an applicant an opportunity to obtain patent protection in certain countries after obtaining a granted patent in another country or jurisdiction. This process is called the re-registration of a patent or a ‘Patent of introduction’.
Several countries allow for the re-registration of a patent, but the re-registration has to be based on a granted patent in the United Kingdom (UK). Granted patents from certain other jurisdictions may also be used as a basis when re-registering a patent, but only in a few countries (a list of these counties follows later in the article). As one would expect the opportunity of re-registration is not available indefinitely and the time within which the re-registration must be applied for is limited to three years after the grant of the UK patent (in most instances).
Further, a re-registered patent will only be valid until the base patent expires. The list of countries in which a UK patent may be re-registered include the following: Hong Kong, Anguilla, Bermuda, Brunei Darussalam, British Virgin Islands, Cayman Islands, Cyprus, Falkland Islands, Fiji, Gibraltar, Grenada, Guernsey, Guyana, Jersey, Kiribati, Montserrat, Nauru, St Helena, St Lucia, Seychelles, Sierra Leone, Solomon Islands, Turks and Caicos, Turkish Cyprus and Tuvalu.
The countries in which different time periods apply for the re-registration of a United Kingdom patent are Cyprus, Guernsey, Hong Kong and Turks and Caicos. Also, in the following jurisdictions, certain other foreign granted patents may be re-registered with these differing for each of these countries: Cambodia, Macao, Haiti, Jamaica and Nepal.
In Ethiopia and the Democratic Republic of the Congo (DRC) the intellectual property offices accept what is termed as ‘Patents of introduction’. A patent of introduction can be obtained on the basis of any foreign granted patent and there is no deadline for the filing of a patent of introduction.
This opportunity to obtain patent protection in additional jurisdictions after a patent has been granted in another jurisdiction may be excellent news for patent holders who would like to expand their patent rights geographically. Lastly, re-registering a patent also has the benefit that the base patent will not be re-examined in the country where the re-registration is filed meaning that costs will be lower and the cost for prosecution will not be subject to the amount of office actions received.
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