Fumitomo Hide, Ph.D.

Non-US Patent Applications

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Introduction to Japanese Patents

How to Read Japanese Patents

How to Search Japanese Patents

How to Apply for Japanese Patents

How to Search US Patents

Non-US Patent Applications

How to Search Non-US Patent Applications

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An important rule you should remember is the one-year foreign filing rule.

One-year foreign filing rule: The Paris Convention is an international treaty that specifies that an applicant can file a patent application in any member jurisdiction (country) within 1 year of the applicant's earliest filing date.  For example, if you filed a PPA on November 13, 2002, you have 1 year to file US non-provisional and non-US (foreign) applications that claim November 13, 2002 as the priority date.  This priority date is used for determining the existence of relevant prior art during the examinations by the patent offices.

Most countries are signatories to the Paris Convention.  Notable exceptions are Taiwan (Republic of China) and Thailand.  However, the US has separate priority treaties with Taiwan and Thailand that mutually establish the one-year filing rule.

Another important international patent treaty is the PCT (Patent Cooperation Treaty).  The PCT is important to you because it enables you to delay having to file patent applications in individual countries by up to 30 months or more.  This is important for managing your cash outflow.

PCT (Patent Cooperation Treaty): The PCT is administered by the WIPO (World Intellectual Property Organization) in Geneva.  If you plan to seek patent protection outside the US, you should prepare and file a PCT application within 1 year of your earliest filing date (e.g. the filing date of your PPA).  Instead of preparing a patent application for each country of interest, you create one PCT application.  The PCT application may be in English.  Your US patent attorney can handle the filing of your PCT application.

The PCT application is sent to the US PTO, which acts as the receiving office of US originated PCT applications on behalf of WIPO.  At the time of application, the applicant must designate PCT jurisdictions (countries) in which the applicant plans to seek patent protection.  The PCT application is conveyed to the patent offices of the designated jurisdictions (countries).

Most countries in which you are likely to seek patent protection are signatories to the PCT with some notable exceptions.  Countries that are not signatories to the PCT include: Taiwan (Republic of China), Malaysia, Thailand, Uruguay, and Venezuela.  The People's Republic of China, which includes the Hong Kong Special Administrative Region, is a signatory to the PCT.  

This means that if you file a PPA on November 14, 2002, and would like patent protection in the US, certain PCT jurisdictions (countries), and Taiwan, you must submit 3 patent applications within 1 year: 1) A US non-provisional patent application; 2) a PCT application designating your desired jurisdictions; and 3) a Taiwan patent application.

One of the jurisdictions of the PCT is the European Patent Office (EPO).  A patent application to the EPO has important advantages over patent applications to the patent offices of individual European countries as explained below.

European Patent Office (EPO): The EPO covers the following countries: Austria, Belgium, Cyprus, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, Switzerland, Turkey, and UK.  Note that Norway and the former Warsaw Pact countries including Russia are not represented in the EPO.

In some ways, the EPO application functions like a "national" patent application.  The EPO application is examined by the EPO, not by the patent offices of the individual member states.

The EPO application may be submitted in English.  The applicant specifies the desired member states in the application.  If a European patent is granted then the applicant may register the patent in any of the countries that were originally specified in the EPO application.  At this point, it is necessary to provide translations into the languages that are required by the national patent offices. 

There are 2 possible methods of filing an EPO application: 1) File an application directly with the EPO; or 2) File a PCT application and designate the EPO (and other member jurisdictions) in the application.

Approximately 30 - 33 months (depending on the designated jurisdiction) after the priority date, the PCT application enters the national phase in which it is necessary for the applicant to provide national patent applications in the respective countries.

The next chapter is How to Search Non-US Patent Applications.