The protection afforded by a patent filed with the Office is valid in the Principality of Monaco.
It is possible to apply for patents in other countries where the invention needs to be protected, and this process is facilitated by certain international agreements.
Choosing the right protection overseas
It is essential to ensure your inventions are properly protected overseas. To ensure you have the right type and extent of protection in place, you must first identify your strategic and commercial objectives, and then choose between the various avenues open to you for filing patents.
Market research
What are you looking to sell? Which potential markets are open to you, and how can you access them? You also need a good idea of your commercial potential in the medium to long term. It is also important to identify your competitors’ protection strategies, either in order to enter the same market, or to take advantage of the absence of patents in countries where your product might be made. In both cases, economic and technology watch can be a valuable advantage.
Optimising investment
The investment made to secure overseas protection must be tailored to your financial capabilities. Wide-reaching protection can prove costly, and so some systems allow you better to manage the financial aspects, in addition to the administrative side. Centralised procedures (with organisations like the EPO or WIPO) can be used to designate - in an initial application and with relatively straightforward formalities -
most of the countries in a given geographical zone, while also allowing spending to be controlled. Take advantage of the cooling-off periods between filing the initial application and selecting the countries designated in order to fine-tune your choice, without committing to too many fees, according to the potential outlets or the costs of defending your patent. Conversely, since these procedures are often lengthy, they can delay the granting of patents in industrial sectors or countries where speed is key.
In this case, we recommend filing your application directly in the countries concerned.
Right of priority
The Paris Convention makes it easier to extend the protection of an invention to other countries, by granting the holder of an initial patent application a priority right to file subsequent patents in those countries. This right of priority can be exercised for a period of 12 months after the initial application has been filed in one of the Contracting States. This period is referred to as the “period of priority”. Subsequent patent applications will be treated as if they had been made on the same day as the initial filing for the purposes of the prior art search open to the public, for the parts common to subsequent filings and the application for priority.
If, during the period of priority, patents are filed by third parties for identical inventions, or an invention is disclosed or implemented, these shall be excluded from the assessment of the state of the art.
The following example shows how the right of priority works in practice.
“Nine months after filing a first patent application in Monaco, let’s say you also decide to apply for a patent in France, Germany and Japan. Any disclosures about your invention that occur during that nine-month period will have no impact on the validity of your patent application in those countries, which are Contracting States of the Paris Convention.
The filing date of a first patent application for an invention is therefore crucial, as it forms the starting point for the period of priority during which the patent can be extended to other countries. It is also a reference point for the state of the art when assessing patentability criteria for the first application and subsequent extensions.
Extensions of the first patent application can be sought directly from the national authorities which grant patents in their respective states (e.g. France, United States, Japan, Australia, United Kingdom, Germany).
Alternatively, it is possible to apply for extensions with regional authorities such as the European Patent Office (EPO) which, via a single procedure, grants a national patent in each of the Member States designated in the application.