Around the World in 365 days (or more)!

By Nur Anis Ahmad Burhan

Congratulations! You have taken a brilliant step by filing your patent application before the patent office to protect your invention and prevent others from commercially making or using it without your consent. Now that your patent application has been filed with your local patent office, you should consider protecting your invention in other countries too. Patents are territorial rights which means as the owner of the invention, you need to know that the exclusive rights of the patent are only applicable in countries where the patent has been filed. Hence, if you are thinking about protecting your invention in other countries where you want to market your invention, then it is best to file your patent application in those countries. Let us see the strategies on how to go about doing so.

WHAT IS PRIORITY DATE? WHY IS IT IMPORTANT?

Once you have completed the first filing in your home country, the date of filing is called “priority date”, that is the effective filing date for the applicant in claiming priority to file in other countries. If you are interested to file in other countries, you must file your application within 12 months from the filing date. The inability to meet the deadline will prevent you from claiming priority from the initial patent application. Let us say you have filed your first application on 1 June 2021 – this means 1 June 2021 would be the priority date and the final deadline to file in other countries should be by 1 June 2022 (12 months from the priority date).

PARIS CONVENTION AND PATENT COOPERATION TREATY (PCT)

There are two routes that applicants can take to file patent applications in other countries. It is either via the Paris Convention route or the PCT route.

Paris Convention

Applicants can directly file the patent applications in other Paris Convention countries within 12 months from the filing date of the first patent application, giving the benefit of claiming the filing date of the first application, in all member countries. As of now, there are 177 contracting states for the Paris Convention. To see the list of Paris Convention member countries, please refer to this link: Contracting Parties Paris Convention.

Patent Cooperation Treaty (PCT)

According to the World Intellectual Property Organization (WIPO), the PCT assists applicants looking at patent protection overseas for their inventions, helps patent offices decide on patent granting, and facilitates public access to an abundance of technical information relevant to those inventions.

By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in many countries. There are 153 contracting states, which can be referred to here: PCT Contracting States. Once applicants have filed for an international application, they can start pursuing their application at the patent offices in the relevant member countries within 30 months from the initial filing date.

What should you know if you decide to file a PCT application?

Filing: The applicant may appoint a local agent to file the application with the International Bureau, WIPO. If the applicant decides to file the application via the PCT route, the applicant must file the PCT application within 12 months from the priority date.
International Searching Authorities (ISA): The applicant needs to decide which ISA they would like to appoint to conduct a search of prior art and provide a Written Opinion of the invention. For Malaysia, there four ISAs to select from – the Korean Patent Office, European Patent Office, Japanese Patent Office, and Australian Patent Office.
International Publication: After 18 months from the earliest priority date, your international application will be published and made available to the public, searchable via Patent Scope.
International Search Report and Written Opinion: Within 16 months from the priority date, the applicant may receive a written opinion by the ISA on whether the invention meets patentability requirements. It is optional for the applicant to file a demand for international preliminary examination in response to the report.
National Phase: As mentioned above, the applicant can extend the protection to other PCT member countries up to 30 months from the earliest priority date at the respective patent offices. There are certain countries that accept filing up to 31 months from earliest priority date.

Comparison between Paris Convention and PCT route

(Image source: WIPO official website)

WHICH ONE TO CHOOSE?

If you are wondering or confused about which one is the better route to extend the protection for your invention in other countries, let’s look at the simple guideline below.

Timeline: The deadline to file via the Paris Convention is 12 months whereas the PCT route takes 30 or 31 months. Let’s say you already have your list of countries of interest, you may then choose to file directly via the Paris Convention route. However, if you are still figuring out where to market your invention and pursue your patent protection, then the PCT route is better since it will extend the deadline up to 30 months. The delay also buys you more time to decide and evaluate the commercial value of your invention before seeking protection in other countries. Besides that, the time extension would be significant for applicants to work on the financial side i.e., seeking more funding, grants, or investors for the patent.

List of countries: If you are targeting less than five countries or you have already finalized the countries where you wish to seek protection, it is advisable to go with the Paris Convention route as it is more cost-effective. If you choose the PCT route, you will need to pay the fees for the PCT filing and thereafter, you will also need to pay multiple filing fees for each country of interest during the national phase. However, the PCT route is advisable if you wish to seek protection in more than five countries, since it reduces certain formality requirements such as the submission of certified true copies of the priority document or recordal of changes to the applicant / inventor or bibliographic information. In addition, it will keep your options open for more than 12 months (as compared to the deadline to file overseas under the Paris Convention).

For a clearer understanding, we have compiled the differences between the Paris Convention and the PCT route in a table below:

KEY TAKEAWAYS:

To summarize, you have two options for seeking protection in other countries, which are the Paris Convention route or the PCT route. Both routes have different timelines, approaches, pros and cons. Nonetheless, the routes are meant to significantly help you protect your inventions around the world. If you wish to bring your inventions abroad, we at KASS are always available to make the process easier. Don’t hesitate to reach out to us at kass@kass.asia if you have any questions or concerns about filing your patent applications overseas.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.