The Paris Convention is an international treaty governed by the World Intellectual Property Organisation (WIPO). The Convention was established in 1883 to help inventors protect their inventions locally and internationally, and it is still in force today. The Convention applies to industrial property including patents, trademarks, industrial design, utility models, service marks, trade names, geographical indications and the repression of unfair competition.
Malaysia acceded to the Paris Convention for the Protection of Industrial Property on 23rd June 1988, thus becoming a member of the International Union for the Protection of Industrial Property (Paris Union). The Convention came into force in Malaysia on the 1st January 1989.
Direct Filings via the Paris Convention
The Paris Convention has 177 member countries as of January 2020, making the Convention one of the most widely ratified treaties worldwide. Under the Convention, patent applicants are able to file foreign patent filings in the 177 member countries within 12 months from the priority date.
The filing date of the first patent application (assumed to be a Paris Convention member) establishes the first priority date. Following patent applications filed under the Paris Convention will refer upon the first patent application, which can also be addressed as the priority document.
The grace period within which patent applications can be filed in other member countries varies depending on the type of patent. The grace period is six months for a design patent (e.g. trademark) and 12 months for a utility patent (e.g. inventions). The grace period starts on the date of filing of the priority document for the design or utility patent in question.
A single international association that is able to assign patent protection to all nations and regions with a single patent application does not exist. An ‘international patent’, therefore, is not possible – applicants must apply for patent protection in each country individually. International patent application through the Paris Convention, or the Patent Cooperation Treaty however, will enable applicants to seek patent protection in contracting states under the Paris Convention or the PCT. These routes are most relevant to applicants hoping to gain patent protection internationally.
Categories of the Paris Convention
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National Treatment
The Paris Convention is made up of 177 member states as of January 2020 and these member states are also known as Contracting States. The Convention determines that each Contracting State must grant the same protection to nationals of other Contracting States, meaning equal to the protection provided to its own nationals.
National treatment also applies to nationals of non-Contracting States if they are domiciled. The same applies to nationals of non-Contracting States who have real and functional industrial or commercial establishment(s) in a Contracting State.
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Right of Priority
Under the Paris Convention, applicants who file their first application (‘priority document’) in one Contracting State (usually in his or her home country) may have six or 12 months from priority date to file foreign applications in other Contracting States. The grace period of six months applies to industrial designs and trademarks whereas the grace period of 12 months applies to patent and utility models.
The foreign applications filed after the priority document will be regarded as if they had been filed on the same day of the first application. This means that applicants will have either six or 12 months to evaluate and decide upon which and how many countries he or she would like to seek protection in.
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Common Rules
There are a set of common rules outlined by the Paris Convention that all Contracting States must follow. Patent specific common rules:
1. Grating of a patent in one Contracting State does not guarantee the other Contracting States to grant a patent, meaning patents granted for the same invention in varying Contracting States are independent of each other.
2. The inventor has the right to be named as the inventor in the patent.
3. The grant of a patent may not be refused or invalidated on the grounds that the sale of the patented product or acquiring of the product by the means of the patented process is subject to the constraints of domestic law.
4. Only under specific conditions may each Contracting State take legislative measures providing for the grant of compulsory licenses to hinder the abuses that may result from the exclusive rights conferred by a patent.
The Paris Convention and the Patent Cooperation Treaty each has its own signatory members. Although there are overlapping members between the two treaties, several countries are excluded from the PCT system, such as Taiwan, Argentina and Pakistan. If the applicant wishes to be granted patent protection from these nations, they will be required to conduct international direct filings via the Paris Convention.
The Paris Convention will appeal to applicants requiring timely turnaround time for patent protection. The Paris Convention has a 12 month time period prior to filing for patent protection in designated countries. This contrasts directly with the Patent Cooperation Treaty’s prolonged time frame of 30 months prior to the National phase. Furthermore, the PCT delays entry to the examination queue by up to 18+ months. The Paris Convention may pose as a greater interest to applicants hoping for a quicker turnaround time.
Patent applicants with a limited budget may be inclined to file under the Paris Convention rather than the PCT as the latter has higher up-front fees. If the applicant wishes to file for patent protection in a small and select number of countries, the Paris Convention route may accrue less overall costs for the applicant, especially if translations are not needed for the designated countries. It must also be noted that the Convention allows applicants to defer foreign filing costs during the 12-month grace period.
