In our interconnected world, inventors often seek patent protection in multiple countries to safeguard their innovations from unauthorized use, production, importation, and sale. As highlighted in our earlier blog post (see “International Patent Protection Strategy” from May 2023), it is crucial for applicants to carefully evaluate where they plan to seek patent protection and to be aware of key legal differences that could impede or even block the patenting process.

The following considerations can help applicants navigate international patent protection effectively and minimize obstacles that might stand in the way of securing a granted patent.

1. Take steps to prevent a self-conflicting application. In China’s patent system, a “conflicting application” refers to an earlier-filed but not yet published patent application with an earlier effective filing date than the one under examination. If both applications claim the same invention, the later-filed one may be denied for lack of novelty. A conflicting application may include the applicant’s own earlier-filed Chinese patent application, known as a “self-conflicting application”. To avoid this, applicants should file related patent applications on the same day. Doing so prevents rejections based on lack of novelty, especially since amendments may not be enough to restore novelty.
2. Understand the process and deadlines for claiming priority in each country where the application will be filed. It is important to identify which countries belong to relevant intellectual property treaties to ensure applications are filed before the priority claim deadline expires. For example, Taiwan is not a PCT member, so an international application must be filed with the Taiwanese Patent Office within 12 months of the first-filed application’s priority date. Missing the deadline means the applicant cannot rely on a timely PCT filing to claim priority, forfeiting the earlier filing date. That is, the application will not be entitled to the benefit of the earlier filing date. After the 12-month window closes, the applicant’s later-published application could become prior art to the later-filed application in Taiwan.
3. Draft applications to meet patentability requirements in each target country. Support standards for claim amendments vary: some countries accept indirect (implied) support, while others require direct support (i.e., explicit disclosure or clear derivation from the application). Additionally, rules governing multiple dependencies differ across jurisdictions. To avoid rejections, the detailed description should include the claims drafted in multiple dependent form, ensuring each claim represents a specific embodiment or implementation of the invention. This strategy helps provide the necessary direct support for amendments in each country where the application is filed.

The above is a non-exhaustive list of aspects to consider when filing a patent application in multiple countries. Ultimately, if you want international patent protection, it is important to hire a patent practitioner familiar with international patent strategy.