Paris Convention – FAQs

The Paris Convention is an international treaty that allows applicants who file a patent in one member country to claim the same filing date when filing in other member countries, provided the subsequent applications are made within 12 months.

Malaysia has been a member since 1989, which means a Malaysian patent application can serve as a priority basis for filing in over 175 other countries. For businesses planning international expansion, this priority right is a valuable strategic tool.

Yes. Malaysia acceded to the Paris Convention on 1 January 1989. This means inventions first filed with MyIPO can claim priority in other member states, and inventions first filed abroad can claim priority when subsequently filed in Malaysia.

Yes. The Paris Convention also covers trademarks and industrial designs, though with different priority periods. Trademarks and industrial designs have a 6 month priority window, compared to 12 months for patents and utility models. This is useful for businesses developing integrated IP portfolios.

A priority right preserves your filing date when you extend protection abroad. For example, if you file in Malaysia on 1 March 2026 and then file in Japan on 1 February 2027 claiming Paris Convention priority, your Japanese application will be examined as if it were filed on 1 March 2026.

This protects you against intervening third party filings and disclosures during that 12 month window.

Under the Paris Convention, you have 12 months from your earliest Malaysian filing date to file corresponding applications in other member countries while still claiming priority. Missing this deadline means losing the priority benefit, and any public disclosure during that period could affect novelty in countries you file in later.

If you miss the deadline, you lose the right to claim priority. You may still file abroad, but the new filing date will apply and any public disclosure during the interim period could be used against your application.

Some jurisdictions allow restoration of priority under limited circumstances, typically requiring proof that the delay was unintentional or despite due care.

Public disclosure after your first filing generally does not affect Paris Convention priority, provided you file abroad within the 12 month window.

However, disclosure before your first filing can destroy novelty entirely in most countries. We strongly recommend filing before any public disclosure, demonstration, or publication.

Yes. The Paris Convention allows priority claims from any first regular national filing, including provisional applications, utility models, and certificates of utility. The key requirement is that the earlier application is the first disclosure of the invention in a member state.

You will typically need a certified copy of the priority document from the original patent office, along with a declaration of priority specifying the filing date, country, and application number.

MyIPO and most foreign offices require these to be submitted within prescribed timelines, often within 16 months from the priority date.

You can include additional content in foreign applications, but only the subject matter disclosed in the original priority application enjoys the earlier filing date.

Any new matter will be examined based on the actual foreign filing date, which may affect novelty if there have been intervening disclosures.

No. The priority benefit only applies between member states of the Paris Convention. For non member countries, you will need to file directly and ensure no public disclosure has occurred that could affect novelty.

Our team can advise on alternative strategies for those jurisdictions.

No. Each country examines applications under its own laws, and outcomes may differ. The Paris Convention preserves your filing date but does not guarantee uniform grant.

Claim scope, patentability requirements, and procedural rules vary by jurisdiction, which is why working with experienced local agents in each country is essential.

The Paris Convention requires you to file separately in each country within 12 months of your first filing. The Patent Cooperation Treaty allows you to file one international application that defers national filings to around 30 or 31 months.

The Paris route is generally faster and more cost effective when targeting a small number of countries, while the PCT is preferred when broader international protection is intended.

The decision depends on commercial strategy, budget, and target markets. If you are filing in two or three countries with clear business plans, the Paris route is often more direct. If you need more time to evaluate markets or plan to file in multiple jurisdictions, the PCT may offer better flexibility.

Our consultants can help you assess the most cost effective approach based on your business objectives.

Costs vary significantly by country and depend on official fees, translation requirements, and local agent fees.

As a rough guide, filing in a single foreign jurisdiction can range from a few thousand to over ten thousand ringgit. We can provide tailored cost estimates based on your target markets.