Basic Principles

The treaty entails in itself three main categories. The first one is that of National Treatment through which the Convention provides that the Contracting State must grant the same protection to nationals of other Contracting States that it grants to its nationals. The second principle is the Right to Priority which forms the base for the protection of an invention in various other contracting states. As compared to PCT, this convention gives the right, based on a regular first application filed in one of the Contracting States. The third principle is the common rule which the contracting states are expected to adhere to. For Patents, the common rule says that any grant of the patent must not be dependent on other contracting states' decision, and neither any refusal to grant the patent must depend upon other contracting states. Similarly, any mark filed by a national of a Contracting State will not be refused, or be invalidated, on the ground that filing, registration, or renewal has not been affected in the country of origin. Regarding Compulsory Licensing, the rule says that this must be granted only after a request has been filed three years from the grant of the patent or four years from the filing date of the patent application, and it must be refused if the patentee gives legitimate reasons to justify this inaction. 

Paris Convention Patent application

A Paris Convention application is an alternative to the PCT patent application that is filed in the non-PCT member countries or filed directly in convention countries within 12 months from the first patent application filed in the home country. The first patent application filed in the home country is commonly referred to as a priority patent application. The priority date of the Paris convention patent application is the date of filing of the first patent application in the home country. The Paris Convention patent application may be filed directly in the Contracting countries when the Applicants are very sure about the patentability of their invention and wish to secure a patent in the shortest possible time.

As soon the applicant file the patent application in the contracting state, it starts the 12-month period within which the applicant can file the application elsewhere and can claim the priority date of the priority application filed in the home country.  To the extent that the content of the Paris Convention application is disclosed in the earlier priority document, it will be backdated to the priority date which is beneficial for the applicant.

The common advantage of using the Paris Convention as discusses earlier in the 12-month convention period which helps the applicant to seek funds or to perform market research and turn an idea into a commercial product. All of such exercise can be done by filing a Convention Application without risking a loss of rights in other countries.

Advantages of Convention filing and comparing it with PCT filing

Paris Convention treaty is a much sought-after route that the applicant uses for seeking protection in multiple jurisdictions. PCT has various advantages but it can be very costly for the applicant who generally wants to seek protection in a limited country and not in multiple places. For one PCT application, an applicant can file two to three convention applications, excluding other charges.

If an applicant is confident regarding the invention, delaying the application for 18 more months will not be a good idea for the applicant. Direct filing rather than PCT filing can speed up the whole process. This filing would be useful to the Applicants wishing to have an earlier grant of a patent application in a specific country. The earlier grant will be helpful to the Applicants to enforce the patent in a specific jurisdiction against infringers and successful licensing or assignment of the invention to the interested party

Protection in Some countries that are not the member of PCT but are convention countries can only be sought by direct filing through convention route. E.g. Taiwan, Argentina, and some Middle Eastern and African countries are still not a member of PCT. 

If the applicant would have not got the option of the Convention route, coordinating simultaneous filing in various countries without the benefit of any priority would have to be complicated and costly.  

More importantly, the applicant can mix and match the direct and PCT filing which can help the applicant to consider the overall commercial strategy in the market. Eventually, both can help the applicant. The PCT application helps to keep the chance of patent rights available in other countries while the Convention route can help the applicant to get an expedited response by filing directly.

Filing strategies and coordinating the application is complex and costly, and one should consult a patent attorney before making any decisions. The highly professional team at GPF is there to solve all the queries of the clients. The team of GPF with all the support staff and attorneys has worked for various clients across the world to provide complete solutions while filing through the convention route. The team has years of experience in successfully providing the clients with service that has to lead to the final grant of the patent. For obtaining a cost estimate for direct filings, kindly REQUEST A QUOTE TODAY.  We will be pleased to assist you. Or email us at support@globalpatentfiling.com