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The Maxham Firm’s Information for Foreign Filing

There is no such thing as an international patent or trademark; however, there is an ongoing treaty, the 1883 Paris Convention, in which most countries around the world participate to cover international patent and trademark filings.

Under the Paris Convention, an applicant has one year after filing a patent application in their home country within which to file in other countries that are members of the treaty. The benefit of this treaty is that the home country filing date is the priority date in the foreign countries, so nothing which occurs within that year anywhere can negate a proper filing in the chosen countries. However, for trademarks, the priority value is six months, rather than one year.

This is where foreign filing gets interesting, and the decisions by the patent application owner become rather complex. Filings within the convention year may be accomplished country-by-country, or through countries and regions where some countries are grouped together for convenience and efficiency.

For example, a patent application is often filed under the Patent Cooperation Treaty (PCT), which has 156 members as of March 2017. The purpose and benefits of using the PCT will be further explored upon in next week’s article, “Patent Cooperation Treaty (PCT) Basics.”

One alternative, and the major regional grouping, is the European Patent Office (EPO), which provides a complete patenting system to all of the European Union (EU) countries and some adjoining countries, for a total of 38 covered countries. At the conclusion of processing through the the EPO, which typically takes at least four years, the applicant then chooses the specific countries in which to validate the EPO patent. At that time, filing and translation fees may be applicable.

Other regional filing routes include the Eurasian Patent Organization, which groups the Russian Federation with some, but not all, of the former Soviet Block countries; ARIPO, which includes about nine African countries; and OAPI, another about 15 African countries.

For a patent applicant, it is necessary to first choose the countries of greatest potential interest, then, together with counsel, determine the best route to employ.

Foreign filing of trademarks is somewhat less complex, but still not simple and straightforward, and should not be attempted without assistance from an attorney with significant international trademark experience.

The country-by-country route is generally available. A widely employed option is the European Trademark Office, which covers all of the EU countries. Additionally, the Madrid Protocol is sometimes  (definitely not always) appropriate, and that now includes at least 98 countries. Countries join these international treaties relatively frequently, so the totals change from time to time.

If you need assistance with foreign filing or just need an estimate, please call or e-mail us today so we can start the process of protecting your intellectual property abroad.  

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