To obtain patent protection internationally it is necessary to file a patent application and and to prosecute the application to grant of a patent.
Many medical device companies are wary of the process, but with the help of an experienced patent agent/attorney, the process can be completed relatively smoothly. Here are a few of the key issues companies should consider when obtaining patent protection in the BRIC countries, according to attorney D’vorah Graeser, Graeser Associates International in Chicago as quoted in EMDT.
Budgeting for international patent costs can be challenging, given the differences between the patent systems. But India is an exception among the BRIC countries. Patent applications are filed and prosecuted in English. Furthermore, filing and prosecution costs in India are quite reasonable, lower than costs in Europe or the USA and lower than Brazil, Russia or China.
Apart from the requirement to pay regular (typically yearly) fees, some of the BRIC countries also have post-grant requirements that must be fulfilled to avoid cancellation of the granted patent. India, for example, requires filing of a yearly post-grant statement of working, describing the commercial exploitation in India of the invention disclosed in the patent. If commercial exploitation does not occur within three years of receiving the granted patent, a third party could request a compulsory licence of the patent. Selling the medical device in India, directly or through a licensee, may be sufficient to fulfill this requirement.
