How Can You File a Patent In Multiple Countries? | IP Conversations

Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.

John’s network of friends (and friends of friends) have people in it who are aware of the market possibilities in countries that are not India. In an increasingly global marketplace, it becomes crucial to have your inventions protected wherever it is necessary. Wondering how to do this efficiently, John turns to IP Geek.

Hey IP Geek! One of my friends has a project that may have good markets in both India and Japan. Plus, she has tie ups with UK and US industries.

Now, I know patent rights are territorial, so does that mean she needs to file the application in India, the USA, UK, and Japan one after another?

If you do that directly, by just following the patenting procedure in each country, you may end up with a lot of problems. This is because once a patent is published, it is not patentable anymore.

However, you can use the Paris Convention method of filing to counter this, especially if you only plan to patent in a few countries.

What is the Paris Convention? Does it allow for multiple filings?

Not exactly. What the Convention does is this: once you’ve filed a patent in your home country and waited a specified period of time (in India, it is 6 weeks) you have 12 months to file the same patent in any country covered by the Paris Convention.

You can use your Indian application’s date as the priority date, which means that only published material before this date is counted when the examiner searches for similar inventions or technology.

For example, suppose you file a patent in India on Jan 1, 2022 and one in the USA on Dec 31st 2022, using the Paris Convention.

Even if the Indian patent application or any other related material was published before Dec 31st 2022, it would not disqualify your US Application, as the cutoff date for the search will be Jan 1, 2022.

And of course, this priority date also prevents competitors from patenting similar technology, in any of the countries you’ve filed in.

Oh, okay. That does sound useful, but individual applications are still very daunting. An international application sounds like it would be very convenient.

The closest thing we have to that is the PCT system, but that is usually recommended if you have a lot of countries you want to file in. It has a lot of advantages- a much longer timeline for filing, for example. I’m sure we’ll talk about that in detail too, and soon.

But utilizing the Paris Convention route is sometimes simpler and more cheap, depending on your invention and the number of places you want to secure your rights in.

I’ll definitely mention this to my friend, and I hope to learn more about the PCT system soon too. These talks we have are always giving me new things to look up- certainly keeps life interesting. Thanks, IP Geek!