What Is the Paris Route (Direct Filing)? | A Patent Attorney’s Comprehensive Guide to Differences from the PCT, Paris Convention Priority, and Practices in Major Countries

Table of Contents

1. What Is the Paris Route (Direct Filing)?
2. The Paris Convention and the Priority System
3. Differences from the PCT Route (Detailed Comparison)
4. Cases Where the Paris Route Is Chosen
5. Practical Workflow for the Paris Route
6. Key Points for Utilizing the 12-Month Priority Period
7. Points to Note in Major Countries
8. Cost Estimates for Paris Route Applications
9. Advantages and Disadvantages
10. Criteria for Choosing Between the PCT and the Paris Route
11. Utilizing INPIT Grants
12. Common Reasons for Rejection and How to Address Them
13. Case Studies
14. Frequently Asked Questions (FAQ)
15. Free Consultation & Inquiries

📌 Basic Structure of the Paris Route

• The Japanese parent application (the first application) serves as the starting point
• Individual applications are filed in each country within 12 months of the basic application (Article 4 priority under the Paris Convention)
• Prepare application forms and specifications in the local language for each country
• Appoint a local agent in each country to handle the proceedings
• Proceed according to each country’s unique examination process, official fees, and schedule
• Over 180 countries are members of the Paris Convention (applicable even to non-PCT member countries)

📜 Paris Convention (Concluded in 1883)

The Paris Convention for the Protection of Industrial Property, concluded in Paris, France, in 1883, is the world’s oldest international treaty related to patents. Japan acceded to the Convention in 1899. Currently, more than 180 countries are members, and it serves as the fundamental framework for the international protection of patents, utility models, designs, and trademarks.

⏱ Priority System (Article 4 of the Paris Convention)

Priority is a system that allows the filing date of the first application (the parent application) to be retroactively applied as the reference date for subsequent applications in other countries.

• Patents and Utility Models: Within 12 months of the basic application
• Designs and Trademarks: Within 6 months of the basic application

If an application is filed in another country within this period, it is deemed to have been filed on the same date as the basic application in that country, and the assessment of novelty and inventive step is based on the filing date of the basic application.

💡 The Importance of Priority: During the 12-month priority period, the novelty of your application in other countries is protected even if a third party files an application for the same invention or your company announces a new product. This system is essential for companies planning global expansion.

⚠️ The 12-month deadline is strict

The 12-month deadline applies worldwide and cannot be extended by even a single day. If the deadline is missed, you will lose the ability to claim priority, and there is a risk that novelty will not be recognized, resulting in the application being rejected. Our firm sends reminders 3 to 6 months before the deadline.

🇺🇸 United States (USPTO)

• Paris Route: Request for Continued Examination (RCE) and Continuation Application (CON/CIP) are available
• Utilizing a Provisional Application → Obtaining an additional 12-month grace period
• Mandatory filing of an Information Disclosure Statement (IDS)
• Be aware of fees for exceeding the number of claims (additional fees apply for 21 or more claims)
• Strict requirements for clarity of technical terms (35 U.S.C. §112)
• Examination can be completed within 12 months via Track One Prioritized Examination

🇪🇺 Europe (EPO)

• European Patent Applications can be filed directly via the Paris Route
• A single application can designate 38 member states (validation required in each country after registration)
• Restrictions on multiple dependencies
• Examination based on the Problem-Solution Approach
• The Unitary Patent and the Unified Patent Court (UPC) will become operational in June 2023
• Opposition period is 9 months from registration

🇨🇳 China (CNIPA)

• Separate applications required for Hong Kong and Macau (independent from mainland China)
• Chinese translation is mandatory (to be submitted at the time of filing)
• Strict disclosure requirements (Article 26 of the Chinese Patent Law) → Frequent rejections based on lack of support
• 2024 Amendments to the Implementing Rules of the Patent Law: Streamlined examination and expanded PPH
• Strengthened measures against malicious trademark applications
• Utility models may also be used in conjunction (earlier grant of rights than patents)

🇰🇷 South Korea (KIPO)

• Korean translation is mandatory
• Fast examination speed (1.5–2 years)
• 2024 Amendment: Partial introduction of the Letter of Consent system
• Many rejections under Article 32 of the Patent Act (prior similar trademarks) (trademarks)
• Early examination based on a Japanese patent is available via PPH (Patent Prosecution Highway)

🇹🇼 Taiwan (TIPO)

• Non-PCT member country → Paris Route required
• De facto mutual recognition under the Paris Convention since the 1990s
• Traditional Chinese translation is mandatory
• Key market in the semiconductor and electronics sectors
• Examination period: 1.5–2.5 years
• Early examination available via PPH (Japan-Taiwan)

🇮🇳 India (IPO)

• Based on English specification (reduced translation costs)
• Article 3(k): Computer programs as such are not patentable
• Section 3(d): New salts and polymorphs of pharmaceuticals are subject to limited protection
• Obtaining a Foreign Filing License (for inventors residing in India)
• Examination period: 3–5 years (somewhat long)

📌 Cost Comparison with PCT: The PCT route requires a basic PCT fee (approx. 300,000–400,000 yen) at the time of filing, but the costs for national phase entry are roughly the same as the Paris route. Generally, the PCT is more advantageous for three or more countries, while the Paris route is more advantageous for one or two countries.

🎯 Route Selection Flowchart

1. Check the number of countries of filing → Consider PCT if 3 or more
2. Does it include Taiwan? → If so, the Paris Route is mandatory for Taiwan
3. Has market feasibility been verified? → If not, use the PCT (utilize the 30-month grace period)
4. Is early grant of rights necessary? → If so, use the Paris Route
5. Is the budget sufficient? → If limited, use the PCT (to spread costs during transition)
6. 1–2 countries in addition to key markets where business plans are finalized (e.g., U.S., China) → Paris Route is advantageous

💡 Hybrid Strategy: It is also possible to combine the Paris Route for the main country (e.g., the U.S.) with the PCT for secondary countries (multiple). Our firm will propose the optimal route design based on your business plan, budget, and deadlines.

💰 Paris Route applications are also eligible for INPIT grants

The INPIT Foreign Application Subsidy also covers the Paris Route (direct filing). Small and medium-sized enterprises (SMEs) and startups can cover up to half of their application costs (annual cap of 3 million yen, 1.5 million yen per patent application) through this subsidy.

• Our application handling fee: Flat rate of 50,000 yen (excluding tax)
• 100% Approval Rate in Previous Round
• Eligible for both the Paris Route and PCT
• Covers all types of intellectual property: patents, utility models, designs, and trademarks

→ Details on the INPIT Foreign Application Subsidy

1. Lack of Novelty or Inventive Step

The most common grounds for rejection. Address by amending claims or submitting a written argument based on prior art search results. Argumentation must align with each country’s criteria for assessing inventive step (e.g., non-obviousness in the U.S., Problem-Solution in Europe, and obviousness in Japan).

2. Insufficient Disclosure or Violation of the Requirement of Support

Requirements for claim clarity and enablement are particularly strict in the U.S. (35 U.S.C. §112), China (Patent Law Article 26(3)), and Europe (EPC Article 84). If support from the specification is insufficient, address the issue through amendments.

3. Lack of Unity

Rejection occurs when multiple inventions are included. This can be addressed through a divisional application.

4. Lack of Patent Eligibility

Rejections based on abstract ideas, standalone computer programs, business methods, etc., in the U.S. (35 U.S.C. §101 / Alice decision), India (Section 3), and Europe (EPC Article 52). Address this by amending the claims to emphasize technical features.

📊 Case 1: Semiconductor Startup (U.S. and Taiwan)

• Business: Technology venture in the semiconductor memory sector
• Strategy: Focus on two countries—the U.S. (primary market) and Taiwan (manufacturing base)
• Approach: Paris Route (direct filing in both countries)
• Reason: Taiwan does not accept PCT applications; in the U.S., Track One accelerated examination allows for registration within 18 months
• Result: Early registration contributed to increased corporate valuation during the IPO round

📊 Case 2: Healthcare IT Company (U.S. Only)

• Business: Medical diagnostic AI application
• Strategy: Focus exclusively on the U.S.
• Choice: Paris Route (U.S. provisional application → regular application)
• Reason: Since the target is only one country, the PCT base fee would be wasted; the provisional application secures an additional 12-month grace period
• Result: 60% reduction in filing costs; established exclusive rights in the U.S. market

📊 Case 3: Machinery Manufacturer (Multiple Countries → PCT Selected)

• Business: Industrial machinery manufacturer
• Strategy: Plans to expand into four countries: the U.S., Europe, China, and South Korea
• Choice: PCT route (4 countries is 3 or more → PCT is advantageous)
• Reason: Utilized the 30-month strategic window to assess market viability and proceed with all four countries
• Result: Built an efficient global portfolio by spreading costs and utilizing the strategic timeframe

Free Consultation on Overseas Patent Application Strategy

At our firm, patent attorneys well-versed in both the Paris Route (direct filing) and PCT international applications will propose the optimal route based on your business plan and budget. For small and medium-sized enterprises (SMEs) and startups, we also offer assistance with applying for the INPIT Foreign Application Subsidy (100% approval rate).

Business Hours: Weekdays 9:00 AM – 8:00 PM