By LADAS & BARRY
"The Paris Convention is a treaty which first came into force
in more than 100 years ago and which most industrialized countries
have joined (the most notable exceptions are possibly India and
Taiwan). In very broad terms, this treaty offers to parties filing
patent applications in a member country a grace period within
which patent applications can be filed in other member countries.
In the case of a design patent (and a trademark, for that matter),
the grace period is six months. In the case of a utility patent
(also known as a patent of invention), the grace period is one
year. Thus, this treaty affords an individual or a corporation
a grace period within which to file foreign patent applications
in member countries, the grace period being measured from the
date of filing the first patent application in a member country
directed to the invention (or design) in question. Since most
major countries are members of the Paris Convention, the individual
or corporation can usually file a patent application in its home
country and then later (within the grace period) file corresponding
patent applications in other member countries.
Claim to Priority
When a foreign application is filed under the Paris Convention
in a country which has ratified this treaty and within the applicable
grace period, it is filed with a claim to "priority".
That is, the application in the foreign country will be treated
as if it had been filed on the same date as the first application
filed in another Paris Convention member country. Another way
of expressing this concept is to say that the foreign patent application
has an effective filing date which is the same as the actual filing
date of the first application. The benefit of this claim to priority
is readily apparent to Intellectual Property lawyers. If you are
not an Intellectual Property lawyer, consider an invention
which the owner has maintained in secrecy prior to filing a
patent application in their home country (which is assumed to
be a member of the Paris Convention). After the patent application
has been filed, the owner may make the invention public (for example,
by selling a product embodying the invention or by other promotional
activities). The owner can still obtain patents for the same invention
in other countries which are members of the Paris Convention,
provided the other patent applications are filed within the grace
period noted above and a claim for convention priority is made.
You may find an example helpful to understand these concepts better.
Non Paris Convention Countries
While many countries have ratified the Paris Convention,
there are a number of countries which have not done so. One such
country is Taiwan. Since Taiwan follows the general rule noted
in "Patents are of National Origin" regarding the required
novelty of inventions, Taiwanese patent applications must be filed
(as a general rule) before the invention is made public in any
way anywhere in the world. However, just because a country is
not a member of the Paris Convention, that does not necessarily
mean that there is not some other alternative way of making a
priority claim. In the case of Taiwan, the government of Taiwan
has passed legislation allowing for a priority claim based on
a patent application filed in a foreign country which provides
the same privilege based on mutual reciprocity. The United States
and Taiwan have negotiated a Memorandum of Understanding, which
came into effect April 10, 1996, concerning such priority claims.
Taiwian and the United States will honor priority claims based
on patent applications (for a one year priority period) and design
applications (for a six month priority period) filed on or after
that date in the other jurisdiction, but the priority right will
apparently be more narrow than it is in the case of a priority
claimed under the Paris Convention. For example, a non-U.S. national
who is the applicant of an U.S. patent application may well not
be able to claim priority to their U.S. patent application in
a subsequent application filed in Taiwan. There are a number of
other possible limitations which are too detailed to treat in
the context of this general article. Moreover, there are many
unanswered questions which may not be clarified for some time
with respect to not only how broad the priority coverage will
be, but also respect to the possibility of claiming priority to
an U.S. Provisional Patent Application or a PCT Application designating
the United States.
The position with respect to India is that India has for
many years granted priority to applications first filed in Australia,
Canada, New Zealand or the United Kingdom. The GATT-TRIPS agreement,
which India has signed, contains a most favored nations clause.
To implement this provision, the Indian government has issued
a decree recognizing priority claims for applicants from all WTO-member
countries. As the reader can readily appreciate, the Paris Convention
offers a tremendous advantage to patent applicants. However, despite
this advantage, many inventors are still not prepared, even after
a one year grace period, to undertake the expense of foreign filings.
Fortunately, the Patent Cooperation Treaty, known as the PCT, offers the inventor yet another avenue to defer such expenses.
The Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) has been subscribed to by
a large number of countries. Many members of the Paris Convention
are also members of the PCT, but there are important exceptions.
The countries shown in red in the map to the right are PCT members.
The number of countries which are members of the PCT seems to
increase year by year, so do not rely on this map being the last
word on which countries are members of the PCT. But, as you can
see, most of the major countries of the world are PCT members.
Under the PCT one can file an "International Application"
which effectively buys a period of time within which to proceed
with a full program of national or regional (such as the EPO)
patent applications. The PCT offers a 20 month phase known as
Chapter I, and an option for an additional 10 month phase known
as Chapter II. The countries which have ratified the PCT have
the option of ratifying only Chapter I of the treaty or of ratifying
both Chapters I and II of the treaty. Initially, many countries,
including the United States, only ratified Chapter I of the PCT.
Today, all countries which have ratified the PCT permit an applicant
to take advantage of Chapter II. However, several countries which
have ratified the PCT permit their designations to be in terms
only of a regional patent application and not a national patent application.
Filing under the PCT is typically done at one's home country patent
office. In PCT parlance, the filing of the application is done
at the "Receiving Office" and the filed application
is called an "International Patent Application". Under
PCT Rules, the Receiving Office which an applicant may use depends
upon the party's nationality or country of residence. Fees must
be paid when the application is filed and those fees are based
on a number of factors, including the length of the application
and the number of countries which are designated. The Patent Cooperation
Treaty only is effective for patents of invention. Unlike the
Paris Convention, the Patent Cooperation Treaty has no impact
on design patents (or trademarks, for that matter). Thus, you
cannot use the PCT to prolong the relatively short six month grace
period for filing foreign design applications provided by the
Paris Convention.
The International Patent Application
An International Patent Application is treated as the effective
filing of separate patent applications in each PCT member country
designated in the Application. The International Application can
often be filed in your native tongue. Thus, for United States
applicants the International Application is filed in the English
language. It is to be noted that the International Application
does not mature into some sort of international patent. Quite
to the contrary, it acts primarily as a delaying vehicle. This
is because eventually action must be taken before patent offices
of the member PCT countries designated in the International Application
in order to secure patents. These patent offices are referred
to as "Designated Offices" in PCT parlance. Failure
to take such action causes the International Patent Application
to lapse in the country where no action was taken. However, an
International Application may pend for up to 30 months (assuming
the applicant can and does take advantage of both Chapter I and
Chapter II procedures). Thus, instead of having only a twelve
month time period within which an inventor must file foreign
applications in order to claim priority,
with the PCT, the inventor can gain an additional eighteen
months before having to incur the
relatively large expenses of completing the applications
at each of the Designated Offices (entering
the "National or Regional Stage" in PCT parlance)
which entails translating the International
Application into the official languages used at the Designated
Offices, paying the requisite official
fees, etc. Those additional months can be crucial to the
exploitation of an invention. They may give
the inventor additional time to raise the funds required
to file patent applications in a large number of
countries, or provide additional time within which to gage
the economic importance of the invention,
or to find licensees or even partners in the enterprise.
The reader may find that some examples will
assist the reader in appreciating the foregoing. You should
review at least the second example since
it describes a trap for the unwary.
An International Application follows the general form of
patent applications in that it must include a
technical description of the invention, drawings depicting
the invention and claims setting out the
meet and bounds of the subject matter for which patent protection
is being sought, in addition to
certain formal documents which must also be submitted when
the International Application is filed.
Qualified PCT Applicants
A party may file an International Application only if the
party is a citizen, resident or domiciliary of a
PCT member country and also provided that the applicant file
at the Receiving Office designated for
their country. The applicant may be a corporate entity, although
if the United States is a designated
country, then the applicant for the purposes of the United
States must be the inventor or inventors.
Typically, the Receiving Office for a given PCT member country
is the local national patent office
although all qualified applicants now have the option of
filing an International Application with the
World Intellectual Property Organization (WIPO) in Geneva
if they wish. A qualified party, that is, a
party that is a domiciliary, resident or citizen of a member
PCT country, may file their International
Application initially at their Receiving Office or at WIPO
(that is, without first having filed a regular
domestic patent application at the patent office in their
home country) or they may wait to file at that
the Receiving Office or WIPO near the end of the one year
grace period provided by the Paris
Convention if they started out by filing a regular national
patent application. Countries which join the
PCT must also be members of the Paris Convention, and thus
the International Application can be
filed within the one year grace period provided by the Paris
Convention. Often the applicant elects
initially to file a patent application at their home patent
office as a regular domestic patent application
rather than as an International Application. Then the Applicant
files an International Application,
designating the countries of interest, at their Receiving
Office close to expiration of the one year
grace period provided by the Paris Convention. A majority
of the International Applications filed
follow this latter route and are filed at the applicant's
Receiving Office rather than at WIPO.
Chapter I
All members of the PCT adhere to the first phase of that
treaty which is referred to as Chapter I.
Chapter I enables one to file an application at the PCT Office
and have it pend for twenty months
from either (i) the filing date of the International Application
(if no priority date is claimed under the
Paris Convention) or (ii) the claimed priority date. A priority
date would normally be claimed to the
home country filing date if the International Application
is filed at the Receiving Office within one
year of the home country filing date. As such, PCT Chapter
I gives the applicant an additional eight
month time period beyond the twelve month grace period provided
by the Paris Convention before
the substantial expenses associated with entering the National
(or Regional) Stage must be incurred.
Also, a search of the prior art is accomplished during Chapter
I. Applicants often have the choice of
using a different patent office for doing the search than
the patent office which serves as the
Receiving Office for the applicant. The prior art search
is reported in an International Search Report
which is discussed more fully below.
Chapter II
Most PCT member countries have also subscribed to Chapter
II of the treaty. Chapter II provides
a further extension of time enabling an International Patent
application to pend for thirty months (and
in some countries even a bit longer) from the priority date,
if claimed, or from the international filing
date, if no priority was claimed. To take advantage of Chapter
II one must pay an additional fee,
called a Chapter II Demand Fee, to the PCT Receiving Office.
If the Demand is filed together with
the relevant fee, the International Application will then
pend for an additional ten months during
which time the International Application will undergo International
Preliminary Examination. Chapter
II adds significant additional delay before applicants must
incur the expense of foreign patent
applications thereby giving applicants more time to market
their invention.
Search and Publication of the Invention under Chapter I
While the Paris Convention serves primarily to enable one
to obtain a grace period for filing foreign
patent applications, the PCT offers more. Once a party has
filed an application at the Receiving
Office, a search of the prior art is conducted for the invention
to apprise the owner of what prior art
appears to be relevant to the invention. This search is made
under Chapter I and a report called the
International Search Report normally is made available to
the applicant (and to the public)
shortly before the Demand for Chapter II proceedings must
be filed. If it appears to the owner of
the International Application that the prior art disclosed
in the search renders the invention
unpatentable (or less important than first thought), the
owner of the application may then choose to
allow the International Application to lapse as opposed to
going forward with the expense of
entering the National Stage. Additionally, under Chapter
I of the PCT, a copy of the patent
application (together with the aforementioned search report)
is published 18 months from the
priority date (if claimed) or the international filing date
(if no priority is claimed). This publication puts
the public on notice that the applicant is seeking to protect
the invention and also effectively
precludes another party from obtaining a patent on that invention
in many countries since the PCT
publication will create a prior art bar to subsequent applicants.
Of course, in countries, such as the
United States, which have a grace period, that bar (due to
publication of the PCT application) will
occur one year later for inventors who had previously made
the same invention.
A negative aspect of the publication is that if the owner
of the International Application has not
previously filed in foreign countries which are not designated
in the PCT application, then the
applicant will be precluded from thereafter seeking patent
protection of the published invention in
those countries (unless the country in question has a national
grace period or the PCT publication is
not prior art in the country for some other reason). This
reiterates that which was noted earlier in
"Patents are of National Origin" that a publication
of the invention prior to filing a patent application
for the invention will preclude patent protection in most
countries. However, in many, but not all
PCT countries, this publication of the invention can enable
the owner of the International Application
to seek damages in subsequent patent infringement litigation
back to the date of publication of the
International Application. This ability to seek backdated
damages arises if a patent is ultimately
granted for the invention in countries which allow such backdating
of damages. It may also involve
translation of the claims of the International Application
or otherwise putting an unauthorized user on
notice in order for the backdating to occur.
Examiner's Review of the Invention under Chapter II
In Chapter II proceedings are called "International
Preliminary Examination" during which an
Examiner will review the prior art documents reported in
the International Search Report and issue a
Written Opinion regarding the patentability of the application.
This opinion will be based not only
on the prior art references mentioned in the search report,
but will also consider whether the claims
in the International Application meet other criteria for
patentability, including such matters as the
clarity of the claims. The owner of the patent application
then has the opportunity to respond to this
opinion and argue for the patentability of the claims as
well as make amendments to the claims
(assuming that the Examiner takes a negative view of at least
some of the claims in the application).
These arguments and any amendments made to the claims will
be reviewed by the Examiner and
may cause the Examiner to change their mind regarding the
patentability of the claimed invention.
Irrespective of whether the Examiner's initial opinion changes
with the subsequent submissions, the
Examiner will issue an International Preliminary Examination
Report (IPER) setting forth the
Examiner's position regarding the patentability of the claimed
invention. Ultimately the IPER may be
passed to the countries designated in the International Application
in order to assist the examiners at
the various national patent offices in reviewing the eventual
National Stage applications. This should
expedite the review of the applications in those countries
and give the applicant a higher degree of
confidence as to what will be the outcome of the national
examination process. Thus, there is a
possible cost savings for the applicant in that an initial
examination of the application under a single
authority occurs which examination can be used in the Designated
Countries hopefully to convince
the examiners in those countries to allow the applications
to mature into patents with no or little
additional amendment of the applications. In some instances,
if appropriate arguments and
amendments are made during Chapter II, this can result in
the applications being granted as patents
with a minimum of additional interplay with the examiners
before the Designated Offices. Thus, the
PCT may not only offer a welcome delay in deciding where
(and whether) to file patent applications,
but may ultimately save one money in securing foreign patents.
Other International Agreements
The foregoing has introduced the reader to two international vehicles
available to enable one to delay certain foreign filings. There
are other international treaties and bilateral agreements which
a practitioner will consider when counselling a client regarding
protecting Intellectual Property rights in foreign countries.
Some of these include the Eurasian Patent Convention, the European
Patent Convention, the OAPI (whose member countries are a number
of African nations), the Pan-American Treaty, ARIPO (whose member
countries comprise a different group of African nations) and certain
bilateral agreements.
Those interested in biotechnology will also be interested in the
Budapest Treaty on Deposit of Microorganisms. Many countries require
that microorganisms, which are the subject of patent applications,
be deposited at a national depository. This treaty permits the
deposit of the microorganism to be done instead at one of a group
of International Depositary Authorities.
Tomado de 1996 LADAS & PARRY: http://www.ladas.com, webmaster@ladasparry.com.