"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:,