1) General Considerations for protecting inventions... Flashcards
When did the Paris Convention come into force?
• Came into force 20 March 1883
How many member states are in the Paris Convention?
• 176 member states
Who are notable exceptions to the Paris Convention?
• Notable exceptions: Taiwan
Who are notable recent inclusions to the Paris Convention?
- Notable recent inclusion:
- Kuwait (2 Dec 2014)
- Samoa (21 Sept 2013)
- Brunei Darussalam (17 Feb 2012)
- Thailand (2 Aug 2008)
What are the key impacts of the Paris Convention?
Key aspects of the Paris Convention
• Foreign nationals are treated as nationals (Article 2)
- National treatment: when an applicant files an application for a patent or a trademark in a foreign country member of the Union, the application receives the same treatment as a national and receives the same benefits
• Right to priority (Article 4)
- Priority right: A first filing date (in one of the contracting States) can be an effective filing date in another contracting State, provided that the applicant, or his successor in title, files a subsequent application within 6 months (for industrial designs and trademarks) or 12 months (for patents and utility models) from the first filing
Recite Article 2 of the Paris Convention.
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Article 2 - [National Treatment for Nationals of Countries of the Union]
•(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
•(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.
•(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.
Recite Article 3 of the Paris Convention.
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Article 3 - [Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union]
• Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union.
Recite Article 4A of the Paris Convention.
Article 4 A.
- (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
- (2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.
- (3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.
Recite Article 4B of the Paris Convention.
Article 4 B.
• Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union
What does Article 4 of the Paris Convention relate to?
Right of Priority
Recite Article 4C of the Paris Convention.
- Article 4 C.
- (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
- (2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
- (3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
- (4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
Recite Article 4E of the Paris Convention.
- Article 4 E.
- (1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs
- (2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.
What are the effects of the Paris Convention on priority?
- As we have seen, priority can be claimed from Paris Convention country national filings [PC Art 4A(1)]
- In addition, EPC and PCT applications designating a PC country can be used as a priority basis [PC Art 4A(2)]
- Furthermore, under EPC2000, priority can be claimed from an earlier filing in a country that is a WTO Member. Remember WTO ≠ Paris Convention Countries. Thus, EPC2000 has overruled the G2/02 and G3/02 (“priority from India”) decisions and WTO only priority claims are therefore valid. Taiwanese priority claims are valid under the EPC
- Finally, many countries also have bilateral agreements which specifically allows priority claims in any event.
What are a number of initiatives designed to promote work sharing between patent Offices to simplify and accelerate examination?
- IP5 Patent Prosecution Highway (IP5 PPH)
- Global Patent Prosecution Highway (GPPH)
- Bilateral agreements
What is the purpose of the patent prosecution highway?
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• The initiatives allow an applicant who has claims deemed allowable by one jurisdiction to obtain faster grant in another by conforming the claims.
• The initiatives are also designed to allow patent offices to share information with each other to reduce duplication.
