Securing intellectual property (IP) protection in multiple countries is often a complex and time-consuming task. Since each country has its own IP laws and procedures, navigating the international patent system can be overwhelming.
To make this process more manageable, two major international treaties have been established: the Paris Convention and the Patent Cooperation Treaty (PCT). Though different in structure and scope, these systems help inventors and businesses protect their innovations across borders.
The Paris Convention
Established in 1883, the Paris Convention is one of the oldest international treaties concerning intellectual property. It provides two key benefits to applicants:
National Treatment – This ensures that each member country must offer the same IP protection and legal remedies to foreign applicants as it does to its own nationals. This prevents discrimination and ensures a level playing field.
Right of Priority – Under this rule, if an applicant files a patent application in one member country, they have 12 months to file corresponding applications in other member countries. These subsequent applications will retain the original filing date, known as the priority date. This is critical for preserving the novelty of an invention across multiple jurisdictions.
The Paris Convention does not create a centralized application system. Instead, it offers a procedural advantage by allowing applicants to spread their filings over time while maintaining the original priority date.
The Patent Cooperation Treaty (PCT)
In contrast, the Patent Cooperation Treaty, established in 1970 and administered by the World Intellectual Property Organization (WIPO), offers a more centralized approach. It allows applicants to file a single “international” application that is recognized by over 150 PCT member countries.
However, the PCT does not grant a global or international patent. Instead, the international application serves as a unified first step. After the initial international phase, the application must enter the national or regional phase in each country where protection is sought. At this point, the application will be examined according to each country’s specific laws.
The PCT process unfolds in two main phases:
International Phase: This lasts up to 18 months from the filing date. During this time, a formal examination is conducted, including an international search and the publication of the application.
National Phase: Around 30 to 31 months after the initial filing, the applicant must enter the national phase in each country of interest. This involves translating the application (if necessary), paying national fees, and complying with country-specific rules.
The PCT system also gives applicants the opportunity to identify and correct potential flaws in their application early on, thanks to feedback from the International Searching Authority (ISA) and, if requested, the International Preliminary Examining Authority (IPEA).
Both the Paris Convention and the PCT offer strategic advantages, depending on the applicant's needs. The choice between them typically depends on the number of countries involved, time considerations, and budget.
The Paris Convention is often more suitable for applicants who:
· Intend to file in only a few countries.
· Have budget constraints and want to avoid high upfront fees.
· Need faster national processing and are ready to comply with each country’s requirements soon after the initial filing.
In contrast, the PCT is advantageous for those who:
· Plan to file in multiple jurisdictions.
· Want more time (up to 30 months) before deciding where to pursue protection.
· Prefer a more structured and centralized process in the early stages.
Another critical difference lies in cost structure. The Paris route generally has lower upfront costs but becomes more labor-intensive and costly if filing in many countries. The PCT route consolidates early costs, which can be higher, but it simplifies administration and can be more economical if multiple filings are expected.
Typical PCT costs include:
· An international filing fee (approx. 1,330 Swiss francs)
· A search fee (which can vary from 150 to 2,000 Swiss francs depending on the searching authority)
· A transmittal fee, which varies depending on the receiving office
Despite these costs, the PCT route may still save money and effort for applicants pursuing protection in numerous countries.
Both the Paris Convention and the PCT play vital roles in supporting international patent protection. They are not competing systems but complementary tools that cater to different needs. The Paris Convention offers flexibility and is ideal for smaller, quicker filings. The PCT, on the other hand, is better suited for applicants who need more time and aim to secure protection in many jurisdictions.
Choosing the right path depends on your filing strategy, business goals, budget, and the geographic scope of protection you require. Understanding the advantages of each system can help ensure that your invention receives the protection it deserves in the markets that matter most to you.