In order to protect their intellectual property internationally without having to deal with the burden of filing in each country separately, applicants and inventors can benefit from a number of treaties that WIPO has established. The Patent Cooperation Treaty and Paris Convention Treaty are two significant international agreements that govern how an international patent is applied. In this post, we shall elaborate on the disparity in timelines reflected in these conventions.
Patent Cooperation Treaty (PCT)
The “priority date” of the application is used to calculate time limits under the PCT. The PCT Article 2(xi) defines the priority date as either the date of the priority claim in the international application or the date of the international filing.
0 months : Filing of application at national or regional level for Patent Protection.
12 months : To claim priority under PCT Article 8, this international application should be submitted within a year of the initial application’s filing date.
16 months : In accordance with PCT Rules 42 and 43bis, the deadline for establishing the international search report and written opinion is the later of three months following the International Searching Authority’s receipt of the search copy or nine months following the priority date.
18 months : According to Article 21, the International Bureau must swiftly publish the international application abroad after the lapse of 18 months following the priority date of that application. Also at this stage, applicant has the opportunity to make amendments under Article 19.
19 monhs : It could be essential to submit a demand prior to the expiration of 19 months from the priority date in order to benefit from a national phase entry time limit of at least 30 months from the priority date in reference to all States identified in the international application.
22 months : According to PCT Rule 45bis, the applicant may ask an additional International Searching Authority to conduct one or more extra international searches for each of them at any time before the 22-month period has passed. Furthermore, even though the international preliminary examination is optional, the applicant can request one before the lapse of either 22 months from the priority date in accordance with PCT Rule 54, or three months from the date the international search report and written opinion were transmitted to the applicant.
30-31 months : Deadline for National Stage entry.
In the PCT system, you begin to pursue the grant of your patents directly before the national (or regional) patent offices of the countries in which you want to obtain them after the completion of the PCT procedure in accordance with PCT Article 22(1), typically at 30 months from the earliest filing date of your initial application from which you claim priority.
When a Contracting State makes its choice by submitting a demand before the 19th month from the priority date has passed, the provisions of Article 39 take precedence over those of Article 22. The PCT Article 39(a) deadline for filing the national stage requirements is 30 months after the priority date, however any national law may set other deadlines that end later than the PCT Article 39 deadline.
One of the earliest agreements governing intellectual property was the Paris Agreement for the protection of industrial property, which was signed in Paris, France. With the purpose of protecting industrial property, it created a union. The substantive provisions of the Convention are separated into three groups: national treatment, the priority of rights, and common laws.
According to the procedure outlined in the Paris Convention for obtaining an international patent, the applicant must submit separate applications in each of the nations he plans to submit within a window of 12 months following the date of local filing in order to be eligible for priority. As a result, each contracting State’s formality requirements must be met by the Applicant alone.
The applicant may use the twelve-month convention cycle to look for funding, study the market, and turn their idea into a usable product. However, the PCT system allows a greater amount of time as well as some degree of standardization of the application, potentially increasing the chances of it getting approved.
Both PCT and Paris Convention methods are useful in different circumstances, and deciding which one to pursue depends not only on the invention but also the financial and marketing aims and constraints of the invention.
Author: Mahima Agarwal, Legal Intern at PA Legal.
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