As United States patent law becomes ever less “exceptional” compared to other patent systems, and as our the U.S. economy becomes ever more intertwined with the world economy, U.S. inventors and companies think harder about patent applications outside the U.S., and non-U.S. inventors and companies think harder about patent applications in the U.S. and outside their home countries. For years, the Patent Cooperation Treaty (PCT) system has been growing in popularity, as well as direct filings based on other treaties and local laws.
The PCT has been around since 1970, and it has grown significantly. Over 200,000 PCT applications were filed in 2013, leading to over a half-million national applications. By comparison, 570,000 U.S. regular utility patent applications were filed in the same year, so the PCT quantity is a large number.
When a patent lawyer recommends that a client consider a PCT to preserve rights to apply for foreign patent protection, the lawyer typically tells the client that this will preserve rights in most important countries. And indeed, the PCT covers most countries, at last count, 151 of them. But there are a lot of countries around the world, and the PCT does not work everywhere.
It is easy to find a list of the countries in which the PCT is in force (e.g., http://www.wipo.int/pct/en/pct_contracting_states.html). Patent lawyers and patent agents who want to advise clients properly want to know, however, where the PCT does NOT apply. If a client is interested in one of those countries, the practitioner must make special efforts to avoid losing patent protection.
There are 151 PCT countries. One of those countries, Kuwait, does not accept national applications even though it is a member of the PCT since min-2016 (apparently in name only). Therefore, it is possible to obtain patent protection in Kuwait only through a Gulf Cooperation Countries application, which is also not available under the PCT.
How many non-PCT countries are there? The answer is that there are 44 countries that are generally recognized as sovereign states but not members of the PCT.1
For 25 of the 44 non-PCT countries, the Paris Convention is available as an alternative to the PCT to permit patent applications, but one must file a national utility patent application directly in any of those countries of interest, and there is a deadline of one year from the priority application date.2
What about the remaining 19 countries, where neither the PCT nor the Paris Convention apply?
Three of them have bilateral treaties or local laws that seem to permit priority applications, similar to Paris Convention regulations. They are: Taiwan, Cape Verde, and Ethiopia.
Five others have local laws that seem to permit re-registration of patents, after they are granted in certain key countries (including the U.S.). They are: Nauru, Kiribati, Tuvalu, Fiji, and Solomon Islands.
For the remaining 11 countries, it appears that an inventor cannot get a patent, because no patent laws are in force. They are: Afghanistan, Eritrea, Maldives, Marshall Islands, Micronesia, Myanmar, Palau, South Sudan, East Timor, Somalia, and Vanuatu.
Here is a table with the above-mentioned 44 non-PCT countries arranged by region:
|Countries for which patent protection is not available through the PCT|
|Regions||Can Rely on Initial Filing Via Paris Convention||Can Rely on Initial Filing Via Local Laws or Treaty||No Patent Laws|
|Africa||Burundi, Democratic Republic of the Congo, Mauritius||Cape Verde, Ethiopia||Eritrea, South Sudan, Somalia|
|Americas||Argentina, Bahamas, Bolivia, Guyana, Haiti, Jamaica, Paraguay, Suriname, Uruguay, Venezuela3||–||–|
|Asia||Bangladesh, Bhutan, Nepal, Pakistan||Taiwan||Afghanistan, East Timor, Maldives, Myanmar|
|Europe||Andorra, Vatican City||–||–|
|Middle East||Iraq, Jordan, Lebanon, Yemen||Kuwait||–|
|Oceania||Samoa, Tonga||Fiji, Kiribati, Nauru, Solomon Islands, Tuvalu, Vanuatu||Marshall Islands, Micronesia, Palau|
Although it is possible to obtain patent protection in nearly every country in the world, the cost of doing so would likely be prohibitive. Inventors and potential patent holders typically seek protection in the countries with the most economic activity. However, inventors should consider whether the nature of their inventions suggest focusing on specific regions. For example, one might seek protection for a semiconductor-related invention in countries where semiconductor manufacturing is likely to occur (e.g., Taiwan or Malaysia). Likewise, if the invention relates to an activity specific to a particular climate (e.g., de-icing or skiing technology), an inventor might focus on obtaining protection in cold-weather countries.
Returning to the reason for this investigation, what patent practitioners want to know is how to advise their clients on preserving foreign patent protection.4 The following questions are important:
Question #1: When filing an application in the United States, you want to advise the client whether failure to file immediately will cause loss of patent rights in any other countries. Are there any countries where, if one doesn’t file right away, later patent protection is impossible, because the country will not recognize the U.S. priority date?
It appears not. It is possible to gain patent protection and keep the U.S. priority date through use of a later PCT filing in 150 countries, through use of the Paris Convention in another 25 countries, through use of treaties or local laws in another 3 countries, and through use of re-registration of the U.S. patent in another 7 countries. The only countries left are the ten that don’t have any patent laws at all. So you don’t need to file in any other country immediately, it seems.
Question #2: One year after the U.S. application, if the client wants to file a PCT, a practitioner wants to advise where else must the client file direct national applications, and if they do not, later patent protection is impossible. Which countries require a national filing within one year of filing a U.S. application to claim priority to that U.S. application?
There are 29 countries where a PCT application is not enough and a filing at the 1-year mark is necessary. They are the 25 countries listed in the left column of the table above, plus the 4 countries in the middle column except for those in the Oceania region (because those can be addressed later through re-registration).
Question #3: If you file a U.S. application followed by a PCT counterpart, are there any other deadlines (before the 30-month date for national filing based on the PCT), where if missed, the client will lose the right to later patent protection?
Not really. There are three PCT countries, Luxembourg (LU), Tanzania (TZ), and Uganda (UG) that have issued “reservations” to the PCT Treaty, and if you wish to enter national phase in these countries, you must either file by 20 months from the priority date (the U.S. application), or you must file a PCT Chapter II Demand to defer the deadline to 30 months. However, patent protection in each of these countries can also be obtained via a Regional patent application – LU via an European Patent Office application (EPO) and the other two via an African Regional Property Organization (ARIPO) application. It is also possible to re-register an EU patent in Uganda. If you take no action before 30 months, your client can still have the right to extend protection through a different path. Thus, if your client files a PCT application plus any desired national applications in the 29 countries mentioned above by the 12-month date, no further national rights should be lost provided you are ready to act by the 30-month date.
Isn’t it amazing how patent protection can be obtained virtually anywhere in the world?
1 The list here is based on information found at http://en.wikipedia.org/wiki/List_of_sovereign_states. The definition of a “country” is surprisingly difficult. For purposes of this article, we have used the 193 countries listed as sovereign states in Wikipedia, plus Vatican City (which is a PCT member) and Taiwan (which is a Paris Convention country and has a significant economy). We have excluded (ignored) areas listed as disputed territories in Wikipedia: Patent protection in disputed regions may be obtained via the country claiming the territory, or it may not be available as a legal or a practical matter.
2 Hoffman Patent Firm has patent lawyers admitted to practice in the United States but not any other country. We work with agents in local countries when helping our clients obtain patents outside the U.S. Click here for a list of countries in which we have helped clients apply for patent protection. Please understand that the information here is general only, and the information here should not be relied on as legal advice. Local law governs questions like where a patent may be obtained, and we can assist you in finding the answers applicable to any individual situation. We do not warrant that this information is correct or current, and you should verify it by hiring a lawyer in any country of interest. This information was last updated in May 2017.
3 Although patent laws exist, the Venezuela patent system is effectively inactive.
4 This list of countries and rest of the concepts discussed in this article apply to U.S. utility patents only; design patents or other forms of intellectual property have different rules.