CHANG TSI
Insights
In the wave of globalization, it is crucial for companies venturing abroad to establish a robust intellectual property layout, especially patent layout. This not only helps maintain the core competitiveness of the enterprise, reduces operational and legal risks, but also gains market advantages and combats potential infringement by competitors. So, what are the routes for overseas patent applications? Below, we will introduce three main routes for overseas patent layout.
Companies can choose to submit patent applications directly to the patent management departments of the target countries. According to Article 19 of the Chinese Patent Law, Chinese applicants applying directly abroad for invention patents or utility model patents must first undergo a confidentiality review by the State Council Patent Administration Department. If no confidentiality review is conducted, the same technology applied for a patent in China will not be granted patent rights. Even if granted, the lack of confidentiality review can be one of the reasons for the invalidity of the Chinese patent rights (Implementation Rules of the Chinese Patent Law, Article 69). Violating Article 19 of the Patent Law by applying for patents abroad and leaking state secrets will result in administrative sanctions by the applicant's unit or higher authorities; if a crime is constituted, criminal responsibility will be pursued according to law (Chinese Patent Law, Article 78).
Considering that patents applied for and registered at different times may constitute conflicting applications, we recommend submitting design patent applications for the same product or design to different countries or regions on the same day.
The advantage of this method is that it can directly obtain patent protection in the target countries. However, the disadvantages include the need to understand the specific requirements and procedures of each country, potential language and legal barriers, and the need to coordinate the submission of applications to various national patent agencies on the same day. Chang Tsi & Partners has its own offices and professional teams in Mainland China, Hong Kong, Macau, Taiwan, and Singapore, which can help clients directly apply for design patents. Additionally, Chang Tsi & Partners has cooperative patent agencies in most countries in Europe, America, Asia, and Africa, providing clients with one-stop global patent application services.
The Paris Convention, formally known as the Paris Convention for the Protection of Industrial Property, was signed in 1883 and is one of the earliest international treaties in the field of intellectual property. Its purpose is to ensure that industrial property rights of member countries are effectively protected in all other member countries. As of 2023, the Paris Convention has 177 member countries. The scope of protection under the Paris Convention is broad, encompassing not only industrial designs but also inventions, utility models, trademarks, service marks, trade names, geographical indications, and the suppression of unfair competition.
The most important principle of the Paris Convention is the right of priority. After filing a formal application in one of the contracting states, the applicant can, within a certain period (6 months for industrial designs), apply for protection in any other contracting state for the same subject matter. In this case, the filing date of the subsequent application will be regarded as the same as the date of the first application. This principle provides applicants with temporal flexibility, allowing them to protect their innovations in multiple countries and avoid the risk of patent invalidation due to time differences.
Applying for design patents in target countries through the Paris Convention route requires completing the procedures in the target countries within 6 months after submitting the prior domestic application. The timeline is relatively tight, which can easily lead to the expiration of the priority period and the inability to apply for patents in other countries. Additionally, due to the different patent systems in various countries, multiple application document formats and different languages are required when entering multiple countries. Therefore, it is recommended that applicants thoroughly understand the patent requirements of target countries and collaborate with professional intellectual property agencies before submitting the initial application to ensure a smooth application process.
The Hague Agreement: China joined the Hague Agreement in 2022, allowing innovative entities to submit an international application through the Hague system to seek design protection in multiple contracting countries or regions. This method simplifies the application process, requiring only one application to obtain protection in multiple countries. The application process involves paying certain fees, including international registration fees, publication fees, and possible individual designation fees.
The advantage of this method is that it simplifies the application process and saves time and money by submitting an international application through the World Intellectual Property Organization (WIPO) International Bureau and designating the contracting countries. The disadvantage is that it requires paying international registration fees and possible individual designation fees. We usually recommend this method for clients applying for design patents in four or more countries simultaneously.
Different application methods have their respective advantages and disadvantages. For applicants needing to layout design patents in multiple countries simultaneously, it is recommended to choose the Hague system for patent layout. For applicants who are well-prepared and have fewer target countries, the Paris Convention route can be chosen. For clients needing to obtain design authorization in the target countries quickly, we suggest applying to the target countries on the same day. Of course, applicants should also make their own judgments based on their specific circumstances and needs to maximize the protection of their rights and interests.
