Understanding the legal requirements for a local region can pose numerous challenges for a business, especially when applying for a European patent. In some cases, the business may be located outside Europe and lack any experience or knowledge of EU patent validation. In other cases, a European business may need more resources or expertise for specific markets within the EU, such as Italy.
EU Patents vs Country-Specific Patents
When a business is based outside Europe, for example, in the United States, there are two potential scenarios it may encounter when entering the European market: register a patent in a specific country or obtain an EU patent through the Patent Cooperation Treaty (PCT). If the business is planning to file from a country that is a member of the European Patent Convention (EPC), it is worthwhile to consider an EU patent versus a country-specific patent. This would grant the same rights as a national patent, it may cost less, and the process may also be easier. However, a country-specific patent may also better suit the business needs, so consulting with a local IP firm can help you to determine the best course of action.
Why is a local partner necessary in Europe?
If a business sees Italy as a strong potential market for their product or service, it would be advantageous for them to register for a European patent using an Italian partner. In this way, the business will gain local insights into the legal requirements for the Italian market, both legally and commercially, since their local partner will have experience dealing with EU patent validation for businesses in similar industries.
Additionally, by choosing a local partner in Italy with a network of contacts and offices across Europe, the business can establish a hub for legal operations while still having access to resources in other European countries for future potential business activities. It is important to note that for businesses or applicants that do not have a principal address in Europe, following the initial filing, the business must be represented by a patent attorney based in Europe throughout the patent application process.
The Advantages for Businesses Outside Europe
Meeting deadlines for application filings is challenging since the application can take the European Patent Office (EPO) up to four years to grant the patent from when the application is filed. During this time, a legal representative must keep on top of any correspondence and requirements for the application in order to prevent any unnecessary stalls to the process. They will also help the business to prepare for any requirements to be met once the patent is granted to ensure it is legally valid in the region. Furthermore, a local partner can provide a variety of other services that can support the business growth as it scales in the region.
For businesses based outside Europe, it is generally advisable to work with a local partner in the EU to seek experience and knowledge of the processes and requirements for the local markets. Proximity to the market, knowledge of local and regional legislation, and the ability to provide services in English as well as local languages can greatly benefit a business, especially in cases where they may not have a physical European presence. A local IP firm can help to expedite the process while ensuring the patent covers the business needs in the desired regions.
In-Country Expertise for Businesses in Europe
For European businesses based in Europe that seek to do business in another European country, such as Italy, a local IP partner can provide guidance on the specific requirements for that market when applying for patents in Italy or Europe. Establishing a clear line of communication between target markets and the EPO is key to a speedy and efficient application. With a wealth of experience in EU patent validation, a local IP firm can foresee potential issues along the way that may be country specific. This is especially helpful when it comes to applications related to specific industries and requirements that need to be met to legally validate a patent in a country.
Knowledge of local legislation, processes, fees and timelines are also beneficial for the application and the overall costs to the business. A local partner can negotiate fees through their long-standing network of contacts to get the best rates. In addition, they will be able to provide a better rate through scalability since they process numerous applications locally on a regular basis. What’s more, they can provide any necessary translation or interpretation support, if needed, in the local language.
Applying for a European patent can pose challenges to a business, whether it is located in Europe or elsewhere. Country-specific requirements must be understood and considered as part of the application process. Likewise, experience with industry-specific challenges in EU patent validation can contribute greatly to legal and business strategy. Bearing in mind the lengthy procedure, from application to validation, a local partner can provide the knowledge and resources that help a business to save valuable time and money while securing a strong patent.
Sources "Jacobacci & Partners"