Entitlement to File an International Application

To be entitled to file an international application, an applicant must satisfy at least one of the following conditions:

  • be a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or
  • have a domicile in the territory of a State that is a Contracting Party or in the territory in which the treaty establishing an intergovernmental organization that is a Contracting Party applies, or
  • have a real and effective industrial or commercial establishment in the territory of a State that is a Contracting Party or in the territory in which the treaty establishing an intergovernmental organization that is a Contracting Party applies.

60 Article 399 Article 3

In addition, but only under the 1999 Act, an international application may be filed on the basis of a habitual residence in a Contracting Party.

The interpretation of “national”, “domicile”, “habitual residence” and “real and effective commercial or industrial establishment” is exclusively a matter for the laws of the Contracting Parties to determine.  This Guide can therefore only give some guidance in that regard.

The term “national” is intended to have the same meaning as in Articles 2 and 3 of the Paris Convention.  It is taken to be capable of including both natural and legal persons.  The question as to whether a natural person is a national of a particular country, and the criteria for deciding whether a legal entity is regarded as a national of that country (for example, place of incorporation or headquarters), are matters for the law of such country.

The concept of “domicile” can have different meanings, depending on national legislation.  It is for the law of a Contracting Party to determine the criteria for either a natural person or a legal entity to be regarded as domiciled in that Contracting Party.  Under some legislations a natural person can obtain domicile only by virtue of an official authorization.  Other legislations interpret “domicile” as more or less equivalent to “residence”.  It is generally believed that the Paris Convention did not seek, by using the expression “domicile”, to indicate a legal situation, but rather a more or less permanent situation of fact, so that a foreign national residing in a Contracting Party would, in most cases, be eligible to claim entitlement through domicile.  With respect to legal entities, their “domicile” can be considered to be the place of their actual headquarters.

The term “habitual residence” is taken from the Berne Convention for the Protection of Literary and Artistic Works.  It has been used in the 1999 Act in order to compensate for any excessively narrow interpretation that might be given to the concept of “domicile” under domestic laws.

The expression “real and effective industrial or commercial establishment” is taken from Article 3 of the Paris Convention, to which it was added at the first conference for the revision of the Convention which took place in Brussels in 1897 - 1900.  It was felt that the original provision, which referred simply to “an establishment”, was too broad and should be restricted.  The intention was that, by using the French term “sérieux” (“real” in English), fraudulent or fictitious establishments would be excluded.  The term “effective” makes it clear that, while the establishment must be one at which some industrial or commercial activity takes place (as distinct from a mere warehouse), it need not be the principal place of business (at the Brussels Conference, the proposal by one of the States party to the Madrid Agreement to narrow down the requirement of the establishment to the principal place of business was not adopted).

Determination of the State of origin (under the 1960 Act) and determination of the applicant’s Contracting Party (under the 1999 Act)

The “State of origin” under the 1960 Act and the “applicant’s Contracting Party” under the 1999 Act both correspond to the Contracting Party in respect of which the applicant derives his right to file an international application under the Hague Agreement, i.e., the Contracting Party with which the applicant has the required entitlement (through establishment, domicile, nationality or, in respect of the 1999 Act, habitual residence).

However, where an applicant has an entitlement with several Contracting Parties (refer to “Item 2: Entitlement to file”), the “State of origin” and the “applicant’s Contracting Party” are determined according to different principles under, respectively, the 1960 Act and the 1999 Act.

Determination of the State of origin under the 1960 Act

The State of origin is determined as:

  • the Contracting State to the 1960 Act in which the applicant has a real and effective industrial or commercial establishment;  or
  • if he has no such establishment in such a State, the Contracting State to the 1960 Act in which he has his domicile;  or
  • if he has neither an establishment nor a domicile in such a State, the Contracting State to the 1960 Act of which he is a national.

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Thus, where an applicant has multiple entitlements in different Contracting Parties, the State of origin cannot be freely chosen by that applicant; it is to be determined in accordance with the above described hierarchy.

Determination of the applicant’s Contracting Party under the 1999 Act

The “applicant’s Contracting Party” is defined by the 1999 Act in such a way as to permit the applicant to freely choose his Contracting Party on the basis of establishment, domicile, habitual residence or nationality.  For example, if an applicant indicates a domicile in Contracting Party A, bound by the 1999 Act, and the nationality of Contracting Party B, also bound by the 1999 Act, the applicant’s Contracting Party is, among Contracting Parties A and B, the one which is indicated as such by the applicant in the international application (refer to “Item 2: Entitlement to file”).

99 Article 1(xiv)

Plurality of entitlements

An applicant enjoying multiple and independent entitlements may cumulate these with a view to obtaining protection on a broader geographical scale. For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act and whose domicile is located in Contracting Party B, bound exclusively by the 1999 Act, could, as a result, designate all Contracting Parties bound by the 1960 and/or 1999 Acts.

A special case of plurality of entitlements arises in respect of States member of an intergovernmental organization that is a Contracting Party to the 1999 Act, where those States are themselves bound by the 1960 Act.  For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act, that is a member State of the European Union, could, as a result, designate all Contracting Parties bound by the 1960 and/or 1999 Acts, as the European Union is a Contracting Party to the 1999 Act.

Where an applicant enjoying a plurality of independent entitlements under the 1960 and 1999 Acts designates a Contracting Party bound by the same Acts, the designation of that Contracting Party will be governed by the 1999 Act, which is the most recent Act refer to “Determination of which Act is applicable in respect of the designation of a given Contracting Party”).

Several applicants

Two or more parties (whether natural persons or legal entities) may jointly file an international application, provided that each of them is in a position to establish an entitlement through a Contracting Party bound by the same Act or Acts.  It is not necessary that the Contracting Party concerned be the same in respect of each applicant, nor is it necessary that the nature of the entitlement (nationality, domicile, habitual residence or establishment) be the same for each applicant. For example, where Applicant 1 is a national of Contracting Party A, bound by the 1999 Act, and Applicant 2 has a domicile in Contracting Party B, also bound by the 1999 Act, these applicants may jointly file an international application.