Patent Applications : International and European Legal Regimes

1) 1. Who can file an international application? Who can file a European patent application?


Answer:

According to Article 9.1 of Patent Cooperation Treaty (hereafter as PCT), any resident or national of a contracting party may file an international application. In addition, pursuant to Article 9.2 of the PCT, the Assembly may decide to allow the residents and nationals of any country as a party to the Paris Convention for the Protection of Industrial Property, which is not party to this treaty, to file international applications. In accordance with Article 9.3 of the PCT, the concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.

More specifically, Rules 18.1 (b) (i) of Regulations under the PCT provides that, possession of a real and effective industrial and commercial establishment in a Contracting State shall be considered residence in that State. Also, Rules 18.1 (b) (ii) of Regulations under the PCT stipulates that, a legal entity constituted according to the national law of a Contracting Party shall be considered a national of that State. It means that, even you are not any national of a contracting party, either you have a real and effective industrial and commercial establishment in a Contracting State, or you create a legal entity in accordance with the national law of a contracting Party, then you are entitled to file an international application, pursuant to the PCT.

According to Article 58 of the European Patent Convention (hereafter as EPC), a European patent application may also be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it. Further, pursuant to Article 133 of the EPC, natural or legal persons not having either a residence or their principal place of business within the territory of one of the Contracting States must be represented by a professional representative and act through him in all proceedings established by the Convention, other than in filing the European patent application. It means that, even natural or legal persons not having either a residence or their principal place of business within the territory of one of the Contracting States, they can still file a European patent application.

2) International application claiming priority:

(a) In which article of the PCT is it said that an international application can claim priority from an earlier (patent) application “filed in or for any country party to the Paris Convention”?

Taiwan is not a Paris Convention State, but a member of the World Trade Organization (WTO).

(b) Can an international application claim priority from a Taiwanese patent application? If so, how?

(c) Do all PCT Contracting States recognize priority claims based on applications filed in WTO Members which are not party to the Paris Convention?


Answer:

(a) Article 8.1 of the PCT provides that, the international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the protection of Industrial Property.
(b) Article 2.1 of the Agreement on Trade-related Aspects of Intellectual Property Rights (hereafter referred to TRIPS) provides that, in respect of Parts II, III, and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention. Therefore, Taiwan, as a Member of the WTO, shall be bound by the abovementioned provisions of the Paris Convention.

Article 4.A.(2) of the Paris Convention provides that, 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

Since Taiwan is also bound by Article 4.A. (2) of the Paris Convention, an international application can claim priority from a Taiwanese patent application.

Furthermore, Article 4.D. (1) of the Paris Convention provides that, any person desiring to take advantage of the priority of a previous filing shall be required to make a declaration indicating the date of such filing and the country in which it was made.

(c) Rules 4.10 of Regulations under the PCT provides that, any declaration referred to in Article 8.1 of the PCT, may claim the priority of one or more applications filed either in or for any Member of the WTO that is not party to the Paris Convention. Therefore, if there is no PCT contracting States make a reservation in Rules 4.10 of Regulations under the PCT, all PCT Contracting States shall recognize priority claims based on applications filed in WTO Members which are not party to the Paris Convention.


3) An international application is filed by a German national at the European Patent Office (EPO) as receiving office in 25 August 2009 claiming priority of an earlier German patent application filed on 27 August 2008. The application as filed included a filled-in Request form (PCT/RO/101, 12 pages of description and 4 pages) with Drawings.

Upon invitation from the receiving Office, the applicant files on 11 September 2009 a set of claims identical to the set of claims in the earlier German patent application.

(a) What date will the receiving Office accord as the international filing date?

(b) Under what circumstances can the applicant maintain his priority filing claim?

(c) Would you answer to question (a) have been different if the applicant had filed a European patent application?


Answer:

(a) In principle, according to Article 11.1 of the Patent Cooperation Treaty (hereafter referred to PCT), the receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office found that, at the time of receipt, this international application fulfills the requirements listed in paragraph (1).

Due to the fact that the receiving Office found that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), in accordance with Article 11.2 (a) of the PCT, the Office, invited the applicants to file the required correction. Subsequently, pursuant to Article 11.2 (b) of the PCT, if the applicant complied with the invitation, as provided in the Rules 20 of Regulations under the PCT, the receiving Office shall accord as the international filing date the date of receipt of the required correction. In this case, the receiving Office will accord 11 September 2009 as the international filing date. It means the applicants will lose his priority claim since the international filing date he will obtain would be over 12 months, provided by Article 4 of the Paris Convention from his previous German patent filing date.

(b) According to Rules 20.3 (a) (ii) of the Regulation under the PCT, only where the requirements concerned are those relating to an element referred to Article 11 (1) (iii) (d) or (e), to confirm with Rules 20.6 (a) that the element is incorporated into by reference under Rules 4.18, then the receiving Office, in accordance with Rules 20.6 (b), can accord the first received date to the applicants.

Hence, if those requirements concerned are relating to a description or a claim, and those requirements are not contained in the international application but are completely contained in the earlier application, subject to confirmation under Rules 20.6, those requirements can be incorporated by reference in the application for purpose of Rules 20.6.

In this case, if the applicants can fulfill the abovementioned requirements, his priority claim can be maintained by being accorded 25 August 2009, the first filing date, as his international filing date.

In addition, according to Article 13.2 of the Patent Law Treaty (hereafter referred to PLT), taking into consideration Article 15, a Contracting Party shall provide that, where an application which claims or could have claimed the priority of an earlier application has a filing date, which is later than the date on which the priority period expired, but within the time limit prescribed in the Regulation, the Office shall restore the right of priority. Pursuant to Rules 14.4 (a) of Regulations under the Patent Law Treaty, the time limit referred to in Article 13(2), introductory part, shall expire not less than two months from the date on which the priority period expires. Thus, the applicant still has chance to restore its priority by invoking Article 13.2 of the PLT.

(c) According to Article 87.1 of the European Patent Convention (hereafter referred to EPC), a person who has duly filed an application for a patent, in or for any State party to the Paris Convention, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.

And, in accordance with Article 88 of the EPC, an applicant for a European patent desiring to take advantage of the priority of a previous application, shall file a declaration of priority, a copy of the previous application. Further, pursuant to Rule 38.3 of Implementing Regulations under the EPC, the copy of the previous application must be filed before the end of the sixteen month after the date of the priority. Given the fact that the applicant files on 11 September 2009 a set of claims identical to the set of claims in the earlier German patent application, the applicant has filed the copy of the previous application before the end of the sixteen month after the date of the priority, the receiving Office will accord 25 August 2009, as the filing date.


4) An international application is filed on 11 September 2009 with the European Patent Office (EPO) as receiving office without claiming priority.

(a) To which fees does the filing of the international application give rise?

(b) By when must the fees on filing be paid?

(c) What is the consequence of failure to pay these fees?


Answer:

(a) Basically, the transmittal fee, the international filing fee, and the search fee are the fees you need to pay when filing an international application.

With regard to the transmittal fee, Rules 14.1 (a) of the Regulation under the PCT stipulates that, any receiving Office may provide that, the applicant pay a fee to it, for its own benefits, for receiving the international application, transmitting copies to the International Bureau and the competent International Searching Authority, and performing all the other tasks which it may perform in connection with the international application in its capacity of receiving office.

With regard to the international filing fee, Rules of 15.1 of the Regulation under the PCT stipulates that, each international application shall be subject to the payment of a fee for the benefit of the International Bureau to be collected by the receiving Office.

With regard to the search fee, Rules of 16.1 (a) of the Regulation under the PCT stipulates that, each International Searching Authority may require that, the applicant pay a fee for its own benefit for carrying out the international search and performing all other tasks entrusted to International Searching Authorities by the Treaty and these regulations.


(b) With regard to the time limit for payment, Rules 14.1 (c) of the Regulation under the PCT stipulates that, the transmitting fee shall be paid within one month from the date of the receipt of the international application.

Concerning the time limit for payment, Rules 15.3 of the Regulation under the PCT provides that, the international filing fee shall be paid to the receiving Office within one month from the date of receipt of the international application.

As regard the time limit for payment, Rules 16.1 (f) of the Regulation under the PCT provides that, the provision of Rule 15.3 relating to international filing fee shall apply mutatis mutandis.

Also, in accordance with Article 78.2 of the European Patent Convention (hereafter referred to EPC), a European patent shall be subject to the payment of the filing fee and the search fee within one month after the filing of the application.


(c) Rules 16bis.1(c) provides that, where the receiving Office has sent to the applicant an invitation under paragraph (a) and the applicant has not , within the time limit, paid in full amount due, the receiving Office shall make the applicable declaration under Article 14.3 and proceed as provided in Rule 29.

Rules 29.1 of the Regulation under the PCT provides that, if the receiving office declares, under Article 14.3 (a) (failure to pay the prescribed fees under Rules 27.1 (a)), that the international application is considered withdrawn.