The Significance of The 12-Month Period Under The Paris Convention to Protect Patents in The Overall Global System

Introduction : Globalization has made innovation much more common. Now, technological advances do not just happen in one place, but are often created in one country, built in another, and sold in many others. So while businesses try to grow outside of their own countries, intellectual property protection has become a very important part of doing business globally. Within the different categories of intellectual property, one of the most important is patents which give inventors an exclusive right to their creations and encourage continued inventing.

The difficulty of obtaining patents in other countries is due to their territoriality. An inventor’s patent becomes valid in only the country where filed, i.e., a patent filed in the USA is valid in the USA and not in Canada. When an inventor has developed a new invention and desires to file patents in multiple countries, the inventor must have the understanding of each country’s individual legal processes and the differences between country’s applications, timeframes, and costs to file patent applications. The associated patent application costs taken together with the overall cost of filing multiple patents in multiple countries are often so great that many startups and inventors cannot afford to pursue patented protection in one or more foreign countries.

The Paris Convention for the Protection of Industrial Property ("Paris Convention") is one of the primary governing documents of the International Community that outlines both governing and regulating international Intellectual Property rights and was first established in the year 1883. The Paris Convention establishes a framework through which inventors can obtain international patent protection and retain control over the patents after they are issued. More than 150 years after its adoption, the Paris Convention continues to be a basis for international patent law. Its continued relevance is due not only to historical considerations but also to its role in promoting innovation and protecting IP.. Three principles of IP were established by the Paris Convention; the principles of national treatment, the independence of patents, and the right of priority are still a foundation of how patent applications are filed on a worldwide basis. The article will provide an overview of the framework created by the Paris Convention, an analysis of how its principles continue to impact IP in today’s rapidly changing innovation environment and discuss how inventors and companies can use the Paris Convention to their advantage when seeking global patent protection.

Context and Motivation for Establishing the Paris Convention

Adopted on 20 March 1883, the Paris Convention came as a result of the growing trend of international trade and technological progress. Inventors had significant trouble prior to adoption, trying to protect their inventions in other countries. Patent systems were independent and there was very little mutual coordination between countries concerning IP protection.

One of the major issues was that inventors would not be able to obtain patent rights in other countries if they publicly disclosed their invention or filed for patent in their own country, but not in the other countries.

Administration of multiple jurisdictions was cumbersome and expensive, and there were many innovators who were unable to obtain sufficient international protection.

The Convention aimed to answer the question of how the member states can cooperate in order to solve these concerns. It was developed over time, and became one of the most accepted international intellectual property agreements. WIPO (World Intellectual Property Organisation) is in charge of the regulation and administration of the 170+ Contracts that are part of the Geneva Convention.

The Geneva Convention does apply only to patents (as previously stipulated in some cases); however, it also includes the trademarks, industrial designs, utility models, trade names, geographic indications and other types of industrial properties which are recognised under the Geneva Convention. However, it is a significant contribution to international IP law in its patent provisions.

The treaty rests upon three core principles:

• National Treatment;
• Right of Priority;
• Independence of Patents.

All three principles support and encourage the provision for international patents while at the same time respecting nations' rights to administer their own patent systems.

National Treatment: Equal Protection at the Borders

The concept of national treatment is provided in Article 2 of the Paris Convention. In accordance with this, nationals of one member state should enjoy the same protection and legal remedies in another member state than nationals of that other member state.

This is not a mere equality of procedure; it is also an equality of individuals. By providing national treatment, it builds confidence in international IP regimes by avoiding the discrimination of foreign applicants. An inventor from India who is seeking patent protection in Germany, Japan or the USA should have the same rights and be entitled to the same protection as local inventors in these jurisdictions.

This principle encourages the global community's development of new products and innovation, along with investment opportunities, through reduced legal risk exposure. A stable and non-discriminatory IP system makes it easier for businesses to enter foreign markets and to invest in R&D.

National treatment has also played an important role in the harmonisation of standards of patent protection. This principle allows foreign applicants to have equal access to the legal means they need (to achieve and protect their rights and interests) as domestic applicants; however, rules differ regarding patent ownership across national borders.

In a knowledge-based global economy, innovation often requires transnational partnerships and multinational strategies and the concept of national treatment is essential.

The Right of Priority: Paris Convention's greatest contribution.

The right of priority in the Paris Convention, as contained in Article 4, is considered to be the most significant achievement of the Paris Convention in international patent law.

Most patent systems are based on the first in, first out principle. This is known as first to file, and usually means that the patent owner is the first person to apply for a patent on an invention, subject to satisfying other legal requirements. Thus, the dates for filing become hugely significant.

Prior to implementation of the Paris Convention, inventors with international protection interests were confronted with a difficult 'plight'. Filing in one jurisdiction sometimes causes problems for subsequent filings in other countries as the disclosures/publications made in the first country may negate novelty in other countries.

Concurrently, it was very expensive for many inventors to file in multiple countries at the same time.

The twelve-month patent priority period granted to applicants under Article 4 is aimed at solving this issue. In this period, an inventor who has filed a patent application in one member state can file applications in other member states, and rely on the date of the first application for the effective filing date.

The impact of this mechanism on law is huge. For purposes of priority, the later filed applications are considered to have been filed on the date of the first application. Therefore, intervening disclosures, publications, or competing applications, in general, cannot be used against the inventor for purposes of novelty or priority.

Patent Systems Create a Legal Link between Countries with the Right of Priority The Convention does not mandate that a patent application be filed in every country around the world, but rather enables the applicant to maintain the right to file and consider commercial possibilities as well as the international filing strategy.

The 12-month Priority Period is the most important period of time in the Strategic Plan.

The importance of the priority period goes well beyond legal formalities. It offers innovators a useful insight to help them decide on their business investing for international patent protection before investing considerable resources.

Patent protection can be quite an investment for startups and small businesses. There are fees, costs, translation fees and maintenance costs in connection with foreign filing. The priority period enables the applicant to delay the payment of such costs, without prejudicing his or her rights.

Within the 12-month period, applicants are able to:

• Assess commercial viability;
• Conduct market research;
• Identify target jurisdictions;
• Improve business plans; and
• Continue research and development activities.

Industries with rapid changes in technology, such as Artificial Intelligence, Biotechnology/Pharmaceuticals/Renewable Energy & Advanced Manufacturing, require ongoing investments and long commercialisation timelines; therefore flexibility of operations is critical within these sectors.

Let’s now consider an Indian Start Up developing a New AI-Based Medical Diagnosis System. The company can first file a patent application in India in order to get the earliest filing date. In the following year it can determine the commercialization possibilities of the invention in Europe, North America and Asia, and also look for investors and the necessary regulatory approvals.

If the priority system wasn't used, the start-up would have to spend big money filing patents abroad at the outset or lose its rights. The priority period is thus both a legal protection and a business planning tool.

Article 4bis of the Convention guarantees the independence of patents.

The third key concept of the Paris Convention is the independence of patents, as set out in Article 4 bis.

The principle is that patents from various MS are legally independent of each other. However, if a patent is granted, refused, revoked, expired or invalidated at one patent office, it does not automatically impact on patents in other patent offices.

This principle is the same one as the territorial nature of patent rights. The national patent offices have their own jurisdiction to consider the applications on their national laws and public policy bases.

Importance of the independence principle is especially relevant because Patentability Criteria may differ from country to country. An invention which is patentable in one country may be considered not patentable in another on the basis of differences in novelty and/or inventive step requirements or statutory exclusions.

This principle also presents challenges and opportunities to innovators. Even though rejection in one jurisdiction does not mean rejection in the other, they need to be careful about the legal requirements of each jurisdiction they wish to target.

The independence principle is therefore a compromise between international cooperation and the maintenance of national sovereignty, enabling the national patent systems to remain sovereign yet being part of a larger international patent system.

European Patent Office Decisions on Priority Claims

The European Patent Office ("EPO") has established a large body of case law on the interpretation of the concept of priority under Article 4 of the Paris Convention. In recent decisions, like G 2/98 and G 1/15, conditions have been established for valid claiming of priority from earlier applications.

Here are some decisions showing that priority rights do not exist without a "first-to-file" policy in place. When an application is filed after the initial filing, the applicant must establish a relationship between the two to the earlier application and the later application. Small errors in disclosure can lead to loss of priority rights!

The EPO approach is a wake-up call to already a very important lesson for patent applicants: although the Paris Convention provides a number of significant procedural benefits, the benefits are largely dependent upon careful drafting, strategic planning and legally correct procedures.

The Paris Convention and the TRIPS Agreement

The TRIPS Agreement (1994) also highlighted the significance of the Paris Convention Agreement. It is an extensive agreement regarding the protection of intellectual property rights internationally. TRIPS does not supersede the Paris Convention, but explicitly references certain of its substantive terms. The TRIPS Agreement requires WTO members to do certain things in accordance with Article 2(1) of the TRIPS Agreement, such as complying with Articles 1-12 and Article 19 of the Paris Convention.

This incorporation had the effect of raising into the general law of international trade many of the principles of the Paris Convention. This meant that such commitments as national treatment and "priority rights" were now binding in the WTO dispute settlement process.

The parallel between TRIPS and the Paris Convention shows that the Paris Convention is still relevant today. The Convention did not come to an end, but has become an integral part of the modern international intellectual property system.

Furthermore, TRIPS added to the Convention minimum patent protection, enforcement requirements and dispute resolution procedures. The two instruments together constitute the backbone of today's international patent law.

Paris Convention and the Patent Cooperation Treaty – complementary, not competing frameworks

One of the most prevalent misunderstandings by innovators is that the Paris Convention has been made redundant by the Patent Cooperation Treaty ("PCT"). This approach is misleading in understanding the different functions of these instruments.

The substantive rights, in particular the right of priority, are defined by the Paris Convention. The PCT is, instead, a procedure that facilitates obtaining patent protection in multiple jurisdictions.

In reality, the Paris Convention is the basis for the PCT's priority rights. The typical approach to international patent strategies starts with a national filing of a patent application, which will give the application a priority date under Article 4 of the Convention. The applicant then files a PCT application within a year claiming the priority.

The PCT is not used for granting patents worldwide. Rather it provides a simplified filing process, aids in international search and preliminary examination, and enables applicants to delay the national phase filing fees.

The process of a typical international patent strategy could proceed something like the following:

• The first registration in India.
• The establishment of a priority date according to Article 4.
• Filing PCT application within 12 months.
• Advancement to national phases in certain jurisdictions.

For this purpose it should be considered as an addition to, rather than a replacement for, the Paris Convention. The current functioning of the PCT system itself is proof of the Convention's priority system.

After analyzing the issues, several recommendations for future reforms are suggested.

The Paris Convention remains relevant and is a testament to its enduring success more than 140 years after it was adopted. There have been few international legal instruments which have had a similar lifespan or impact.

However, some provisions of the Convention are in need of review.

The one issue that's been discussed is the twelve-month priority period. Many practitioners consider that sufficient, but others say that the innovative companies in very regulated areas like biotechnology and pharmaceuticals might need more flexibility.

Another problem is harmonization. While the Convention allows for protection on the international level, the actual laws are quite a bit split. There remains uncertainty for applicants who are pursuing protection in multiple jurisdictions due to differences in patentability requirements, disclosure requirements, and examination practices.

This has led to calls for international harmonisation of patent examination procedures. The reforms may make the patent system more efficient, less costly and more predictable worldwide.

Any reform on this topic, though, needs to strike a balance with the state policy goals of individual states. In addition to promoting private commercial interests, patent systems promote general public interests in innovation, competition, and access to technology.

Prospective reforms should therefore aim to increase national flexibility, and at the same time increase the effectiveness of the procedures.

Conclusion

The Paris Convention has been over a hundred years old and is still one of the founding principles of international intellectual property law. The Convention established a system that promotes cross-border innovation through its principles of national treatment, priority rights and independence of patents and continues to foster international patent protection.

The most important contribution of its is the right of priority under Article 4 which is essential for innovation in protecting the IP rights of innovators in various jurisdictions. The Convention provides applicants with the flexibility to keep their early filing date and consider commercial opportunities, thus minimizing risk and supporting strategic decision-making.

The Convention continues to be influential today, as evidenced by its incorporation into the TRIPS framework and by the relation of the Convention to the Patent Cooperation Treaty. It is not being phased out; indeed it is the basis for much of the current international patent system.

The Paris Convention will continue to play a pivotal role in fostering legal certainty, encouraging investment and facilitating the protection of IP rights around the world, as innovation increasingly crosses borders and technologies continue to transform.

Author :- Shreya Sharma, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

Endnotes

1. Paris Convention for the Protection of Industrial Property, arts. 2, 4 & 4bis. The Convention establishes the principles of national treatment, the right of priority, and the independence of patents, which continue to underpin the international patent system.
2. World Intellectual Property Organization, Guide to the Application of the Paris Convention for the Protection of Industrial Property (WIPO Publication). The Guide explains the operation of Article 4 priority rights and the practical application of the Convention by member states.
3. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), art. 2(1). Article 2(1) incorporates Articles 1–12 and Article 19 of the Paris Convention into the WTO framework, thereby strengthening the international enforceability of the Convention's substantive obligations.
4. Decision G 2/98, G 2/98, OJ EPO 2001, 413. The Enlarged Board clarified the legal requirements for claiming priority under Article 87 EPC, emphasizing that the same invention must be directly and unambiguously disclosed in the priority application.
5. Decision G 1/15, G 1/15, OJ EPO 2017, A82. The Enlarged Board recognised the availability of partial priority for generic claims, reducing the risk of self-collision between European patent applications and refining the interpretation of Article 88 EPC in light of the Paris Convention.
6. Patent Cooperation Treaty, arts. 8 & 11. The PCT complements, rather than replaces, the Paris Convention by permitting applicants to claim priority from an earlier application filed under Article 4 of the Paris Convention while streamlining the international patent filing process.