Global Patent Protection
Intellectual Property Rights (IPR) of all types including patents have territorial jurisdiction. This means that the rights granted by any of these Intellectual Property protections are limited, restricted, and applicable only within the territory of the country where such protection or IPR has been issued and granted. However, every investor has a right reserved to themselves which allows them to file a similar type of patent application at any convention countries where he is willing to get the IP protection, provided that such application is filed within 12 months from its date of filing of the application in his own country. There is nothing called “global patent” or “international patent”. One must individually file a patent application with all the countries one is interested in getting protection at.
It is to be noted that this nowhere means that if a patent is rejected in one country it will cause a difference in getting or having patent protection in some other country or vice versa. This is because patent and other IP protections are governed solely and purely by the law of the land or the territorial laws of the respective country.
How can Indian inventors get patent protection in other countries?
An inventor from India can apply for a patent grant in foreign countries in the following two cases –
i. When the inventor wants a patent grant in India and countries abroad, both.
In this case, the inventor needs to inform the Patent Office of his willingness of being granted a patent in India and other countries abroad.
ii. When the inventor wants a patent grant in countries abroad but not in India.
In this case, the inventor must seek permission from the Patent Office for filing such a patent application abroad. Usually, Patent Office reverts within 21 days of such an application for permission. This has been mandated by the provisions of Sec. 39 of the Indian Patent Act.
Treaties and Convention
One of the first treaties for the subject of Industrial Properties, The Paris Convention for the Protection of Intellectual Property, signed in Paris, France on 20th March 1883, was made with an objective of promoting trade and safeguarding industrial properties within the countries having membership of the Convention without any loss of the priority dates. India became a member state of the Paris Convention in December 1998.
According to the convention, an inventor can file an application for patent grants in as many countries as he is willing at the same time. If he has filed an application for a patent earlier, he can further file a patent application to the member states within 12 months of filing the first patent application, providing him with benefit in all those countries of claiming the filing date of the first application.
Patent Cooperation Treaty
Patent Cooperation Treaty (PCT), a treaty on international patent law came into force in the year 1970. The treaty provides a uniform method of filing patent applications for the protection of their IPs in all of the member states.
A patent application that is filed under PCT is called the international patent or PCT patent. The plus point of filing a PCT application is that, by filing one such international patent application, one seeks protection with all the signatories of the treaty, simultaneously. In other words, the applicant seeks the protection of 148 countries across the globe by filing one PCT application.It should not be confused that the mere filing of the application, grants patent to the inventor per se. Granting or not granting a patent is the privilege of each nation separately and individually. However, one condition that must be fulfilled in order to file the international application is that the applicant or the inventor must be a resident or a national of any of the signatory states of PCT.
The procedure under PCT
Any investor who is eligible to file a patent application with a regional or national Patent Office or WIPO, complying with the formal requirements of PCT, in one language, and if he pays one set of fees, is eligible to file an international application for patent grant.
PCT applications are filed in the Receiving Offices (RO) of a few countries. For instance, USPTO acts as RO for the nationals or citizens of the United States.
An International Searching Authority (ISA) is established that identifies the already existing patent documents and prior art and thereby defines the scope of the invention that is being patented. And the report of the same is made in writing. Though it is to be noted that the opinion so catered over the patentability of PCT application is not binding.
The inventor has the privilege to request a supplementary search to expand the scope and increase the chances of prior art to be unveiled.
After 18 months of the filing of the application, the content and details of the invention and patent application are disclosed to the world at the earliest possible.
Once the procedure of PCT is completed, generally within 30 months from the filing of the first application, the inventor may start filing for a patent grant individually to the regional and national Patent Offices of the countries where the inventor is willing to get such protection.
Paris Convention v. PCT: Alternative options?
Advantages under Paris Convention
1. Though expensive, this method is best suited for those inventors who want a speedy and fast grant of patent. Filing under the Paris Convention can help one grant a patent comparatively faster than the route of PCT. This is because, in the Paris Convention, applications are filed in individual countries, and hence, the examination of such applications is fastened.
2. PCT applications are applicable only in the countries that are members of the PCT. Hence, for countries like Taiwan and Argentina who are not members of the PCT, one has to seek the option of the Paris Convention.
Advantages under PCT
1. It gives an ample amount of time to decide over the countries where the application for patent is to be filed, as it is, only after 18 months of the filing of the application that the patent application details are disclosed to the world.
2. The international search that takes place in PCT helps the inventor have an idea of the probability of the applications that will proceed to grant in different countries, after the national phase.
3. Publication of all the applications with a search report becomes an aid to third parties while evaluating the potential patentability of the invention in question.
On a brief study of both the methods possible for an international patent, it can be said that neither of them is an alternative to one another. They are two different methods having their own share of pros and cons. The two methods can be said to be complementary to one another, making available to the inventor two options out of which he may choose as per his interests and needs.
Author: Sonal Sodhani, Legal Intern at Global Patent Filing. In case of any queries please contact/write back to us at firstname.lastname@example.org.