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International Patent Agreements

There are several important international agreements in the field of intellectual property. Some important ones are cited here to help understand and clarify patents..

The Paris Convention

The first major patent agreement is known as the Paris Convention. A patent gives protection in the country in which it is granted only, although some dependent territories may also be included. It is therefore necessary to file patent applications covering the invention in all countries where patent protection is needed. These applications must be in the local language and meet the requirements of local patent laws with regard to what can be claimed and the physical format of the patent application. Preparing all this is obviously a major task and there is the danger that others may claim the same invention while the applications are being prepared. The Paris Convention, first agreed in 1883, allows the inventor 12 months to prepare the patent applications after the first patent application has been filed. This first application is usually filed in the country where the invention was made and the filing date of the first application becomes the ‘priority date’. This date is critical as it is the earliest date for testing the patentability criteria of novelty and obviousness.

The application number of this first application is known as the ‘priority number’. The ‘priority data’ for a patent application therefore consists of the filing date of the first application, the filing or application number of the first application and the country where the first application was made. The inventor now has 12 months to file related applications in other countries quoting these priority data. This allows the searcher to find ‘families of patents’ claiming the same invention, as far as local patent laws allow, by identifying patents with the same priority details. Patents in a family are referred to as equivalents.

An invention may be refined throughout the application process and so later application documents may also be filed after the first application. These may also be included as priority data. However, it is generally the earliest set of priority data that is the most important, with the date from which the 12 months is timed for Convention applications. If an inventor does not use the Paris Convention or wishes to file for protection in countries that are not members of this convention then the only way to identify the resulting patents as ‘family’ members is by studying the content of the patents found. These patents are referred to as ‘non-convention equivalents’.

The European Patent Convention

The European Patent Convention (EPC) of 1973 is another major international convention. It must be noted that the EPC is not a convention of the European Economic Union (EU); it was originally ratified by nine states some of which were not EU members, while some EU members initially did not sign up to the EPC. The EPC allows an inventor to file a single application for a patent at the European Patent Office (EPO) requesting that it covers all or a selection of the countries that have ratified the EPC. This selection of countries is knows as the designated states. As there are now some 18+ countries that have ratified the EPC, it condenses the preparation of up to 18 separate patent applications in as many languages. The application is processed at the EPO and, if granted as a European patent, it is then treated as a national patent in each of the designated states, ie the inventor has a bundle of national patents which are subject to the national laws of the designated countries. There are bilateral agreements with some states such as Albania and Slovenia which allow European patents to be extended to cover these territories.

A single EU patent that would be in force in all EU states could become a reality if the Community Patent Convention is ever ratified. The European Commission has issued a Green Paper on a revised Community Patent Convention, but this has still to be agreed.

The Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) of 1970 also allows for a single patent application to be filed designating all or a selection of PCT member states. There is no PCT patent office, but a number of patent offices throughout the world are allowed to accept PCT applications and to carry out initial searches to ascertain if the invention meets with basic patentability criteria. If, on receipt of the search report, the inventor wishes to proceed with the application, the application is sent to each designated state for further examination under the national patent laws of the designated state. The application is granted as a national patent if it proceeds to grant. There are therefore no granted PCT patents. Around 90 countries are members of the PCT, so once again, the treaty allows an inventor to go some way along the patenting process without having to prepare up to 90 separate patent applications. The PCT is monitored by WIPO, the World Intellectual Property Organisation.

Further Systems

Africa has two regional patenting systems, the African Regional Industrial Property Organisation (ARIPO) and the Organisation Africaine de la Propriété Intellectuelle (OAPI). In 1995, the Eurasian Patent Convention came into force, with the Eurasian Patent Office located in Moscow. Again, this allows the inventor to file a single application for a patent designating all or a number of the contracting states. In this case however, the granted patent is not treated as a bundle of national patents, but is a single patent in force in all the designated states.

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