> Our Service > Intellectual Property Consultancy > Patent > Foreign applications
Our Service

Foreign applications

Patent application in a foreign country does not only relate to the legal system of patent in this country but also ordinarily involves considerable fees paid to foreign Patent Office and attorneys at law. Therefore the applicant should entrust an experienced agency to make thorough plans and arrangements according to the applicant’s business development strategy and financial status.
Routes for Foreign Patent Application
  1. Route of Paris Convention
    The majority of countries in the world are Paris Convention contracting states. In accordance with the stipulation regarding the right of priority in the Paris Convention, after filing for an application of invention or utility model in any contracting state, the applicant is entitled to a 12 months period of right of priority when filing an application in any other contracting states and a 6 months period of right of priority when filing an application for design. During this period, the novelty of the application will not be affected by the publication and utilization etc regarding this application. China is a contracting state of Paris Convention thus Chinese applicants can follow the regulation of Paris Convention regarding right of priority to request right of priority when filing a patent application in a foreign country after the application in China.
  2. Route of PCT
    The Patent Cooperation Treaty is a specialized treaty under the Paris Convention and administrated by WIPO. Its contracting states are all Paris Convention contracting states and currently there are 178 members of this Treaty. According to the stipulation of PCT, a patent application in any PCT contracting state is considered to be the concurrent filing of a patent application in other designated contracting states which achieves single country application but multi-country validity. The examination procedure of PCT application is divided into international phase and national phase. The international phase deals with acceptance, publication, search and preliminary examination while the national phase involves examination and authorization by the Patent Office in the specific country. The period of a PCT application entering specific national phase normally is within 28-30 months counted from the date of initial right of priority. Through the PCT route, the applicant can have more time to consider the final country for protection sought. The PCT route does not apply to design.
  3. In some countries and non-Paris Convention and PCT contracting states, the applicant has to file a patent application according to the national or regional laws, for instance, this is this case with Taiwan.
Brief Introduction of Patent Systems in Some Major Countries and Regions
  1. Untied States
    The patent system of the United States protects utility patent, plant patent and design patent. Generally, the term of a new patent is 20 years and term of a design is 14 years from the date on which the application for the patent was filed in the United States. The applicant shall be the inventor and a transfer procedure is required if a non-inventor wants to acquire patent right. Individuals and small enterprises (with no more than 500 employees) are entitled to a small deduction to the standard fee when filing an application. The patent for invention and design in the United States both implement a complete examination system. Under ordinary circumstances, patent right for invention can be obtained within one year and a half or two years and patent right for design can be obtained within one year or one year and a half.
  2. Design in European Economic Community
    The protection covers 25 European countries and implements a registration system. One application with more than one design is allowed as long as these designs fall within the same classification of Locarno classifications. The procedure takes 4-6 months and is simple and cheap. The scope of protection is very wide.
  3. the United Kingdom
    The UK implements comprehensive examination and protects invention patent and the term of protection is 20 years. There is separate law protecting design which implements registration system. The valid period for registration can be renewed to 2 years. Fairly propitious application for invention patent right can be obtained within one year and a half to two years, for design it only takes 3-4 months.
  4. Germany
    Patent (Invention), utility model and design are respectively protected by Patent Law, Utility Model Law and Industrial Design Law. Patent requires substantial examination and term is 20 years. Utility model does not require substantial examination and the term is 3 years which can be renewed for 10 years. Design as well, does not require substantial examination and the term is 10 years, through renewal, it can be prolonged to 25 years.
  5. France
    France protects patent and utility model respectively but an examination for novelty is required. Term for patent is 20 years and term for utility model is 6 years. Additionally, France also protects industrial design and implements a registration system; the term for industrial design is 25 years which can be renewed for another 25 years thus the protection term for design is 50 years.
  6. Japan
    In Japan, there are separate laws protecting invention, utility model and design. Invention needs to get through substantial examination and the term is 2 years. Utility model involves registration and the term is 6 years. Design also implements registration system and the term is 15 years.
  7. Patent in Europe
    EPO is a regional patent organization, and is founded according to European Patent Treaty. Its patent examination is comprehensive examination. The patent right authorized according to the Treaty is valid in all designated countries and is equivalent to the patent right authorized according to national law in the designated countries. The protection covers 25 countries and the term is 20 years.
  8. Singapore
    Singapore protects invention and design. The term for invention is 20 years and for design is 15 years, both having a registration system. A search report and a substantial examination report need to be submitted when filing a patent application for invention and a search report and a substantial examination report issued by other designated Patent Offices can be accepted. Patent right for invention can be obtained within two to three years while for design it only takes four months to half a year.
  9. Canada
    Invention and design are respectively protected by Patent Law and Industrial Design Law. Term for invention is 20 years and term for design is 10 years.
  10. Russia
    The patent law of Russia regulates invention, utility model and industrial design. Invention patent needs to go through substantial examination and the term is 20 years. Utility model patent only needs to go through examination as to form, and the term is 5 years which can be prolonged for 3 years. The term for design is 10 years which can be prolonged for 5 years.
Materials required
  1. An indication letter for filing a patent application in a foreign country. The indication letter shall indicate in detail: title (name) and address of the applicant, name and address of the inventor, classification of the applied patent, country and region of the intended application, the information about domestic and foreign applications for patent, whether there is a request for right of priority. Contact number and address of the attorney etc. Where the applicant has a formal English name, please provide the English name, where the applicant does not have a formal English name and English address please instruct our agency to translate them. Where the applicant is a natural person, please provide the pinyin of his name and the photocopy of his ID card.
  2. Application materials
Fee
The fee charged for patent application in a foreign country normally includes the foreign official fee, the foreign legal attorney’s fee and the home attorney’s fee etc. PCT application has an additional international phase fee.
With reference to invention and utility models, apart from the aforesaid fee, a translation fee will be charged as the documents need to be translated into the language of the country of the application. The specific amount of fee of a country is related to many factors such as the examination system of the country, type of application and the complexity of the case per se. However in general, the application official fee and attorney’s fee in developed countries are usually higher than the ones in developing countries; the fee charged in countries of strict and complex produces of examination and approval is higher than in other countries. The application fee for invention patent is higher than the ones for utility model and design. For specific complex cases of difficult patent technology, the workload of the attorney is great and some require more than one response to the official opinions, as a result the final fee may well increase. Please contact the patent department of our agency for any specific application enquiries and quotations.