Paris Convention vs. PCT

Patent applicants planning to file for patent protection abroad understand that timing is critical. For this reason, it is essential to evaluate the two avenues available for foreign filing: the Paris Convention and the Patent Cooperation Treaty (PCT). Both treaties accomplish the same goal of acquiring protection in chosen jurisdictions, but their deadlines differ in terms of timing available to acquire funds, determine where to file, etc.

In the below chart, you can see that both the PCT and the Paris Convention require an applicant to file 12 months from their earliest priority date. If it is important to push the invention fast, filing via the Paris Convention may be the safest route to ensure quicker examination (and hopefully, quicker grant).

Applicants work with their attorneys to determine which method is best-suited for their invention. Generally, direct filing via the Paris convention is the preferred method when filing into 3 or fewer countries because it tends to be more cost-effective. Direct filing allows the applicant to customize their application to each destination while, under the PCT, one uniform application is sent to all chosen filing destinations.


Patent Cooperation Treaty

Paris Convention

146 contracting states.  Notable exceptions include Taiwan and Argentina.

174 contracting states.

Deadline for filing a PCT application is 12 months from the earliest priority date.  Then applicant has 18-19 months before the application needs to enter the national stage.

Deadline for filing directly into a Paris Convention country is 12 months from the earliest priority date.

The same PCT application is filed into each desired PCT member country.

The application can be custom-tailored for each jurisdiction.

Examination of application can be delayed due to 18/19 month period before national stage entry.  This is good for applicants hoping to delay costs.

Examination occurs sooner, so this is good for applicants wanting quicker issuance of patent.

 

For applicants wishing to file into several countries or want to keep open the option of doing so, a PCT application is the more cost-efficient route.

For applicants who know they only want to file into 1-3 countries, filing directly via the Paris Convention is usually the less expensive route.

For inovia registered users:

You can get an instant direct quote for your patent; simply enter your patent number and use your provisional application to enter your specs. Our streamlined approach allows you to file into multiple countries with one single instruction, at a fraction of the cost. Try running a quote for yourself, or contact us to learn more about our service suite.

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