How to Get Foreign Patents in Non-PCT Countries. Episode 37

(This episode first aired in 2018. Some of the countries listed in this episode have since joined the PCT.)

Introduction

In the last several episodes, I’ve discussed PCT international applications—what they are, how they differ from U.S. applications, how to file them, and the major deadlines associated with them.

As you may remember, a PCT application is a single application that can be used to enter various foreign countries. However, these countries must have signed onto a specific treaty called the Patent Cooperation Treaty (PCT) in order for you to use it.

Most major industrialized countries have joined the PCT, but some important ones have not. The most notable non-PCT country from a business perspective is Taiwan, but there are several others you should be aware of.

The Paris Convention as an Alternative

Even if a country is not a PCT member, it does not necessarily mean that you cannot use a PCT application or U.S. application to serve as a priority application.

There is another treaty, called the Paris Convention, which some countries have signed. This treaty allows you to use your earlier U.S. or PCT application as a priority document when filing in those countries.

What Is a Priority Application?

A priority application—such as your first U.S. application—establishes a priority date. This means that when you later file in a Paris Convention country, the patent examiner in that country cannot use anything against your application that was disclosed after the filing date of your U.S. priority application.

The 12-Month Limitation

Unlike the 30-month deadline that applies to PCT applications, Paris Convention countries only allow you 12 months from your U.S. application filing date to file a patent application in those countries.

List of Paris Convention Countries That Are Not in the PCT

Once a country joins the PCT, its Paris Convention status becomes irrelevant because PCT members get the 30-month deadline instead of 12 months. However, some countries remain part of the Paris Convention but not the PCT.

As of now, there are about 26 such countries. If you are interested in patent protection in any of them, you must be aware of the 12-month deadline.

Here is the list of non-PCT Paris Convention countries:

• Afghanistan

• Andorra

• Argentina

• Bahamas

• Bangladesh

• Bhutan

• Bolivia

• Burundi

• Democratic Republic of Congo

• Guyana

• Haiti

• Iraq

• Jamaica

• Lebanon

• Macau

• Mauritius

• Nepal

• Pakistan

• Paraguay

• Samoa

• Suriname

• Tonga

• Uruguay

• Vatican City

• Venezuela

• Yemen

If you plan to file a PCT application, make sure to also file a separate patent application in any of these 26 countries within 12 months of your U.S. filing date, since they do not offer the 30-month nationalization period provided by the PCT.

What About Taiwan?

You may have noticed that Taiwan is not on the list above.

That’s because Taiwan is neither a PCT country nor a Paris Convention country.

However, there is another way to file a patent application in Taiwan. Some countries allow you to claim priority to your U.S. application simply because they decided to allow it, even though they are not officially part of a treaty.

Countries That Allow Priority Without Being in the PCT or Paris Convention

There are about nine countries that are not part of the PCT or Paris Convention but still allow priority claims based on a U.S. application within 12 months.

These countries include:

• Cape Verde

• Ethiopia

• Fiji

• Kiribati

• Nauru

• Solomon Islands

• Taiwan

• Tuvalu

• Vanuatu

This means that if you want to file a patent in Taiwan, you must file within 12 months of your U.S. application.

Countries Where You Are Out of Luck

There are a few countries where you cannot file a patent based on a priority claim, either because they do not have a patent system or because they do not allow priority filings.

These include:

• East Timor

• Eritrea

• Maldives (common law)

• Marshall Islands

• Micronesia

• Myanmar

• Palau

• South Sudan

• Somalia

Most inventors do not seek patent protection in these countries anyway, so this rarely becomes an issue.

How to Find Current Lists of PCT and Paris Convention Countries

You should always check for updates on the lists of PCT and Paris Convention countries.

To find the most current information:

• Search for “PCT countries” on the WIPO (World Intellectual Property Organization) website.

• Search for “Paris Convention countries” on the WIPO website.

These lists may change as countries join the PCT or modify their patent laws.

Special Cases: Hong Kong and Other Exceptions

Some regions have special rules.

For example, Hong Kong is not covered by a Chinese patent, nor is it a PCT or Paris Convention country.

However, if you obtain a patent in China or the UK, you can file some paperwork and automatically receive a Hong Kong patent.

Different regions have unique requirements, so it’s important to research specific countries before filing.

How to File in Non-PCT Countries

If you want patent protection in a non-PCT country, you must:

1. Contact a patent attorney in that country to understand the filing requirements.

2. Check if the country is part of the Paris Convention or allows priority claims.

3. Ensure you file within the 12-month deadline if the country does not participate in the PCT.

Some companies specialize in handling international patent filings. Instead of individually finding attorneys in each country, you can use a single service that coordinates with local patent attorneys worldwide.

If you have a U.S. attorney, they can help you navigate this process. If you are considering international patent protection, you should work with an attorney, as these filings can become complicated and expensive.

Key Takeaways

Most countries—152 to be exact—are PCT members, which means you have 30/31 months to nationalize your PCT application.

If a country is not part of the PCT, check if it is a Paris Convention country. If so, you must file there within 12 months of your U.S. application.

For the nine countries that are neither PCT nor Paris Convention members but still allow priority filings, you also have 12 months to file.

For the nine countries where priority claims are not possible, you will need to check their individual laws or accept that patent protection may not be available.

I’m Adam Diament, and until next time, keep on inventing!