Chapter 10 - PCT And Foreign Patent Practice & Procedure
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Hong Kong, Taiwan and Singapore

Hong Kong is not a member of the PCT, but Hong Kong filings can be secured through a European Union Filing (EPO). One very significant pitfall is that the EPO application must be kept alive until the Hong Kong patent actually issues. Abandoning the EPO application before issuing of the Hong Kong patent will cause the Hong Kong patent application to go abandoned.

Taiwan is not a member of the PCT, but it is a signatory on the Paris Convention. As such a patent application in Taiwan can claim priority to a U.S. patent application (provisional, utility, or PCT) filed with the preceding year. One caveat, however, is that the priority claim must be to the earliest filed application in the family. Thus, a Taiwanese patent application filed March 2006 cannot claim priority to an April 2005 U.S. utility application (11 months earlier) if that U.S. utility application claimed priority to an April 2004 provisional.

Singapore has been a member of the PCT since 1995. Singapore is, however, a non-examination country, similar to South Africa. Since they won't examine the claims, it is better to wait until the claims issue in another country, and then conform the Singapore claims to those issued elsewhere. That way the grant fee will pay for claims that are more likely enforceable.


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