As your business expands, it is important to secure intellectual property rights and protection for your patents in all the countries you operate in.
International treaties for foreign filings allow inventors to file patent applications in their home country while preserving rights in other countries. There are currently two major avenues available for foreign filings: Direct Filing or the Paris Convention and the Patent Cooperation Treaty or PCT.
Direct Filing/Paris Convention:
Applicants who rely on the rights granted under the Paris Convention are given a right of priority, which allows a resident of a member country to first file a patent application in any member country. Within 12 months of this initial filing date, the applicant may file the patent application in any other member countries it so desires. These later submitted applications are granted effective filing dates that are equivalent to the original filing date.
However, if the applicant files a subsequent application in a non-member country, the application will not receive the priority of their initial filing. Thus, in this circumstance, it is most beneficial to the applicant to file any applications in non-member countries on the same day as their initial Paris Convention application. A disadvantage of direct filing is the expense because applicants must pay the individual national government filing fees, local patent attorneys fees, and potential translation costs.
Taiwan and Direct Filing:
While Taiwan is not a member of the Paris Convention, a bilateral agreement between the United States and Taiwan exists which allows the patent application to be filed in the U.S. and still retain priority over applications filed in Taiwan.
Patent Cooperation Treaty:
Similar to direct filing, applicants preserve the priority date of the initial filing in any of the PCT member countries (including the United States). The applicant files a copy of the application with a PCT office and pays the filing fee.
Along with the application and the fee, the applicant also files a PCT request, which indicates the applicant desires to designate all available countries or regional offices. This reserves the applicant’s right to later file national or regional applications claiming priority to the initial filing. This designation is automatic and includes all member countries. Naturally, if the applicant requires patent protection in a non-member country, it must file directly in that country.
Taiwan and PCT:
Taiwan joined the World Trade Organization (WTO) and has agreed to comply with the terms of the Agreement on Trade-Related Aspects of Intellectual Property Rights. This means that an applicant can file an application in Taiwan within 12 months (6 months for design patents) of the earliest date on which any corresponding application has been filed in Taiwan or another WTO member country.
Additionally, while an application in Taiwan cannot be the base application to claim a right of priority for a PCT application, a PCT application can be the basis for a right of priority in Taiwan so long as it is in accordance with Taiwan’s criteria.
Hong Kong is not a PCT member country. As such, a PCT National Phase application cannot be filed directly into Hong Kong as a National Phase filing.
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