FILING APPLICATION ABROAD
- FILING GUIDELINE
- FILING APPLICATION ABROAD
PATENT/UTILITY MODEL
How to file a patent application pursuant to Paris Convention
An applicant may file a patent application directly in foreign countries where the applicant would like to seek patent protection. It is referred to as filing through the “Paris route” as a patent application is usually filed claiming priority under the Paris Convention.
To claim priority, a patent application must be filed within the 12-month period from the filing date of the first application.
How to file an international application (PCT - International Patent System)
It is a system that allows an applicant to file an international PCT application with the patent office (receiving office) of the applicant’s country of nationality or residence, and then to enter the national/regional stage in the contracting countries where the applicant wishes to obtain patent protection within a prescribed time limit. The filing date of the PCT international application may be recognized as the same filing date in designated contracting states.
When claiming priority to a first (earlier) application, a priority claim can only be accepted if the PCT application is filed within the 12-month period from the filing date of the first application.
DESIGN
There are two main ways to file a design application abroad.
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1.
An applicant may file a design application directly in foreign countries where the applicant wishes to obtain design protection.
It is referred to as filing through the “Paris route” as a design application is usually filed claiming priority under the Paris Convention. The application must comply with the national laws and procedures of the country of filing.
To claim priority, a design application must be filed within the 6-month period from the filing date of the first application. -
2.
A single international application may be filed simultaneously in one or more countries of contracting parties under the Hague system according to the Hague Agreement, including the European Union (EU) and the African Intellectual Property Organization (OAPI) which are the intergovernmental organizations.
TRADEMARK
How to file a trademark application depends on the country in which the client(s) wish to register their trademark.
The options for filing a trademark application abroad are broadly classified as follows.
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1.
An applicant may file a trademark application directly in foreign countries where the applicant wishes to obtain trademark protection. It is referred to as filing through the “Paris route” as a trademark application is usually filed claiming priority under the Paris Convention. The application must comply with the national laws and procedures of the country of filing. To claim priority, a trademark application must be filed within the 6-month period from the filing date of the first application.
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2.
If there is no independent trademark office, but several countries share a Trademark Office or Intellectual Property Organization under a treaty, a trademark application may be filed through them, such as the Benelux Trademark Office and the African Intellectual Property Organization (OAPI).
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3.
If a nation has its own trademark office and trademark system, and is also a contracting party of a separate organization and trademark system covering a particular region, such as the European Union Intellectual Property Office (EUIPO) and the African Regional Industrial Property Organization (ARIPO), this can be used.
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4.
A single international trademark application may be filed under the Madrid System, which includes the Madrid Agreement and the Madrid Protocol.
