IP Practice Vlogs: Claiming Foreign Priority – An Overview of Patent Cooperation Treaty, Paris Convention and Patent Prosecution Highway Practice

There are several ways to claim foreign priority for a patent application. The first option is filing an international application under the Patent Cooperation Treaty (PCT). In order to utilize this option, at least one of the applicants has to be a national or a resident of a country that is a PCT Contracting State. Upon filing, the applicant picks a receiving office, which is a national patent office designated for receiving the PCT application. A competent receiving office belongs to a location in which one of the PCT applicants is entitled to file a PCT application. Each PCT member state has a competent receiving office for its residents and nationals. The International Bureau of the World Intellectual Property Organization (WIPO) also acts as a receiving office in which all applicants are entitled to file PCT applications. In that case, the applicant can file directly with WIPO. Thirty to 31 months after initial filing, the application then enters the national stage and the applicant can select the countries in which it would like to file.

The second option is to claim priority under the Paris Convention. Here, the applicant’s initial filing is with a domestic national office of a country that is a signatory to the Paris Convention Treaty. The applicant then has 12 months to claim priority off of the initial filing to go to another country’s national patent office.

The third option is a bit like a hybrid of a Paris Convention/PCT filing. In this case, the applicant can file the initial application in a domestic national office, just like in option two. The applicant then has 12 months to file a PCT international application that claims priority to the initial domestic filing. But in this case, the applicant has 30 to 31 months minus 12 months to go national stage. For example, the applicant has 18 to 19 months from the date of the PCT filing to go national stage if the applicant filed the PCT application 12 months after the original priority date.  But if the applicant filed the PCT application only one month from the domestic priority application, the applicant then has 29 to 30 months from the PCT application filing date to go national stage.

It is important to remember that an applicant can file foreign priority off of a provisional application. Therefore, if the applicant is trying to claim foreign priority off of a domestic patent application, if that application has a provisional application, it is the date of the provisional application that sets the clock for these foreign filing deadlines, not the non-provisional application.

During the international stage of a PCT application, the first major event is that the applicant will get an International Search Report (ISR) from WIPO, which occurs at 16 months. Along with the ISR, the applicant also receives a written opinion (WO). In response to an ISR, the applicant can optionally file an Article 19 to amend the claims in view of the ISR. If the ISR provisionally allowed any claims, the applicant can use those claims to elect using the Patent Prosecution Highway (PPH) during national stage which expedites the national stage examination. Say if the ISR does not allow the independent claim but deems some of dependent claims as containing allowable subject matter, the applicant can file an Article 19 to accept the allowable subject matter to then go PPH upon national stage to pursue the scope of the amended independent claim. At this stage, the applicant is restricted to amending only the claims.

At 22 months after filing a PCT application, the applicant can elect for further examination and demand Chapter II. Imagine a scenario in which the applicant did not receive any allowable subject matter in the ISR but saw a path for receiving allowable subject matter via an Article 19 amendment; the applicant can then Demand Chapter II in an attempt to get allowable subject matter in the Office of First Filing (OFF) to be able to utilize the PPH when entering the national stage. Optionally, the applicant can file Chapter II with an Article 34 in order to further amend the claims and skip filing an Article 19 amendment altogether. Unlike Article 19, in which the applicant can only amend the claims, the applicant can amend the claims and the disclosure (that is the drawings and specification) with an Article 34.  Please see guidance on filing Article 19 and 34 amendments here.

Twenty-eight months after filing a PCT application, the applicant receives an International Preliminary Report on Patentability II (IPRP II), which takes into account the Chapter 34 amendments. The applicant can find out in the IPRP II if they received any allowable subject matter for PPH purposes that were not granted in the ISR.

PPH speeds up the examination process for an application that has corresponding applications filed in participating intellectual property offices. Under PPH, participating patent offices have agreed that when an applicant receives a ruling from an OFF allowing at least one claim, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. Keep in mind that accelerating prosecution also means accelerating due dates for fees – issues fees, maintenance fees, attorneys’ fees. So, make sure to prepare your IP budget accordingly.

To learn more, watch the latest IP Practice Vlog here.

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  • [Avatar for David Lewis]
    David Lewis
    May 23, 2022 06:02 pm

    Note that the Paris Convention is recognized by nearly every country in the world, whereas there are still a significant number of countries that have not signed the PCT treaty (and taking advantage of the Paris convention is a lot less expensive than filing a PCT). For example, if your application is bound for Taiwan, the Paris convention works, but the PCT does not.

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