Understanding The History of “Patent Harmonization”: Part 2 (Paris Convention)

Historically, the sprouting of “Patent Harmonization” started from the Paris Convention. This treaty was enacted in the early 20th century, and since then it has been a historic treaty having undergone many revision conferences. It still forms the basis of the international protection of intellectual property, and therefore the Paris Convention is a vitally important treaty. 

This is a personal impression, but when we, the IP practitioners, are faced with the words “PARIS CONVENTION” when dealing with clients, the atmosphere becomes more solemn for a moment. Matters of important historical significance makes us feel this way, and for me, the “Paris Convention” is such. 

The PARIS CONVENTION was not a treaty aimed at so-called “Patent Harmonization”. In the 19th century, technological progress and foreign trade based on the Industrial Revolution in each developed country at that time. As a result of the increasing number of patents and another industrial properties, the international rules regarding the intellectual property protection system, which had been left to each country until then, were established. 

This is a treaty unlike any that came before, has a very large role and significance, and has greatly contributed to the protection of international intellectual property. It was enacted based on very solid legal ideology. 

The PARIS CONVENTION is an “alliance treaty” and the mutual connectivity between member states is very close and strong. Therefore, the member states of the Convention are mutually obliged to behave in accordance with the provisions of the Paris Convention. The treaty has 30 Articles. Of these, the provisions regarding the substantive protection of industrial property rights are Articles 1 to 11, which forms a simple treaty law, but the content is very rich. 

The Paris Convention has three most important principles. They are the “National Treatment” (Article 2), the “Priority System” (Article 4), and the “Principle of Independence of Patent” (Article 4-2). 

“National Treatment” refers to the basic concept of the international protection of industrial property rights. “When a foreigner asks for protection from the government of a foreign country, each country shall give the foreigner the same protection as its own citizen. It is a regulation that imposes the obligation on each country to other countries. 

The “Principle of Independence of Patent” means that the existence of patent in a country does not depend on local acquisition, transfer of the right, or termination of the right to the patent obtained for the same invention in another country. Therefore, this Article further emphasizes the principle of “National Treatment” in the field of patents, and Article 4-2 can be said to be related to the provision of Article 2. This idea of ​​”Principle of Independence of Patent” is cited in the 1997 “BBS case” decision (case concerning parallel import of genuine goods) by the Japanese Supreme Court. 

Article 2 of the Paris Convention is such a powerful provision that “protection of industrial property rights including patents is basically completed”. At the very least, this provision corrects the “the attitude of giving priority protection regarding the industrial property rights to the nationals who own them, which each government of the countries naturally have had”. 

The protection of foreigners in a foreign country and the nationals of that country are guaranteed to be internationally equal under Article 2. This is an idea based on territorial principle. Therefore, as long as this principle is followed, there is no discrimination between the foreigners and the citizens of each country when proceeding in accordance with the laws of each country and seeking protection. 

However, even if this “National Treatment principle” is followed, foreigners still have to use the language of the country and adapt to the legal system of the country, since “language barriers” and “legal information barriers” are still practically disadvantageous. That is, since each country conducts patent examinations in their own language and sets rights in that language, it is necessary to translate patent specifications filed in PTO of the home country into the language of the subject foreign country. In addition, when filing with a foreign country to obtain local rights, various procedures are carried out in the PTO in the language of that country, and the examination procedures of the foreign country is carried out based on local laws and practices. Even if you engage a local agent (patent attorney or patent agent) in the foreign country, there is still a substantive barrier to acquiring the right in that country. 

Therefore, a “Priority System” of Article 4 was established to alleviate these disadvantages for foreigners. That is, when a patent application is filed in the home country, one year from the filing date is set as the “priority period”. That is, if another person in the foreign country in question files a patent application for the same invention, the system allows the foreigner asking for protection to claim his/her own filing date in their home country in the foreign country also. This eliminates the potential interruption of the application by another person during that period, and the position of the forerunner can be secured. Behind this is the idea that the acquisition of industrial property rights is “first come, first served” worldwide. 

Resulting from this system, it is possible to secure time for translation, collecting foreign legal information and preparing conforming procedures with local agents. 

However, under Article 2 and 4, it is necessary for the foreigner to file patent applications in each country for which protection is needed. As a result, even if the above priority system is used, it is still a heavy burden for the applicant to prepare application documents in accordance with the law of each country and submit them to the patent office of that country.  

In particular, since the PTO of each country examines and sets rights in its own language, it is necessary to submit a translation of the application documents (particularly the patent specification) in that country’s language. This translation cost is not inexpensive, and it is a burden on the applicant in the early stages of foreign application procedures.

The PCT (Patent Cooperation Treaty) has solved this problem. We are reminded that the Paris Convention is a vitally important treaty.  In the next Article, we discuss the advantages and limitations of PCT. 


By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.