Patent application

This article is written by Preeti Pallavi Jena, from the School of Law, KIIT University, Odisha. This article talks about the filing of patent applications internationally.

Introduction

International patent filing is a right given to the owner or inventor of the patent application which makes it sufficient enough to restrict others from selling, using, or copying their own patent invention in any other nation. A single patent cannot provide protection to an invention in each and every nation. For seeking patent protection in every country the money which is required is approximately 2 million rupees. This amount of cost is required for the filing of the patent application and for maintaining it. The only way in which you can apply for patent protection for inventors in many countries is when the countries take part in the PCT (Patent Cooperation Treaty).

All about IPR

Property means the relationship between the owner of the property and the members of the society. Intellectual property is the creative work of humans. The main objective of Intellectual Property is for promoting growth in the field of science and technology, arts, literature, and all other creative works. In recent years, Intellectual Property Rights have played great importance throughout the world. Intellectual property is the subject matter of the WIPO (World Intellectual Property Organization) which became a part of WTO (World Trade Organization) in 1995. 

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Types of IPR

There are basically four major types of Intellectual property rights.

Copyrights

Copyright protects expressions and not ideas and also the creativeness of a work. The objective of copyright has always been the protection of the interest of a creator. Under Intellectual Property, copyright is a form that is given to the creators under the Indian law for the original works of the author such as computer programs, databases, literary, dramatic, musical, artistic works, cinematographic films, and sound recordings.

Trademarks

It is a mark that is capable of being represented graphically and it should be capable of distinguishing the goods or services of one person from those of others. It also may include the shape of goods, their packaging, and a combination of colors. A trademark in India can be registered even before it has actually been used in India. Once the trademark is registered it will be valid for a period of 10 years. After that, the registration expires and you have to renew it for your benefit and once you renew it, it will be again valid for a period of 10 more years from the date it has been renewed. Any individual or legal entity or any person who is claiming to be a trademark owner can apply for the application of trademark.

Patents

A patent is an exclusive right that is given for 20 years to the owner who created a new product or invented something unique and novel. This right gives the right to the owner that no one else can use once it is patented, for selling in the market or producing it in any place or manufacturing the product without the permission of the patent holder. The patent right is not only given for products but also for the process by which a product is obtained. But the product or the process has to be new or consists of some inventive step in it.

Trade secrets

For being a trade secret, it needs to be kept secret, very few people should know it. The protection of such trade secrets is on the owner. He has the responsibility for the protection. These trade secrets are kept confidential, hidden, secreted. For the protection of the competitive advantage of the business, we always relied or were dependent upon secrecy. Trade secret means something which is happening in the company and should not be known outside the company. Since it is a secret, hence the information needs to be commercially valued, it should contain some information. Here commercially valued means which give an advantage over competitors in a business.

How to file an international patent 

For filing a patent application internationally there are 2 ways in which you can do it.

  1. File the patent application directly internationally in any foreign country without filing the application of patent in India.
  2. Or else first file the patent application in India and then go for international filing of that patent application in any of the foreign countries.

In both the filing of the patent applications, it is mandatory before filing to inform about it in the Indian Patent Office. The patent office replies within a period of 21 days.

Section 39 of the Indian Patent Act mentions that if a person is a resident of India, then he cannot file a patent application outside India without taking prior permission from the Indian patent office. It also says that the permission has to be in written form which should be given by the controller. 

The outside foreign patent applications are given to the patent application of national patents. All patents are limited to a particular region. If you want to protect your invention in other countries you can do that through the Paris Convention Route or the PCT route (Patent Cooperation Treaty), or even directly. You can directly protect your patent by filing numerous applications at the same time in those countries where you want to protect your invention.  You can seek protection on the basis of the type of your invention.

The applicant needs to think and then decide where he should file patent applications and utilize them in the marketplace. An applicant can directly file for a patent grant in international countries. Like Indian organizations can file a patent application in the US directly, they do not need to file an application in India first and then file in the US. The only thing that the applicant must-see is whether the national law of the country requires prior permission to file a patent directly outside the resident country. In India, this approval is a must.

There are basically 2 routes in which one can file and they are:

Paris Convention Route

The Paris convention route means that you can file your applications in the Paris convention countries (member states which take part in the Paris Convention for protection of industrial properties). The Paris Convention was adopted in 1883. It is considered an international treaty. This convention allows the applicants for filing patent applications known as priority applications and it is filed on a particular date known as the priority date. Around the world, almost all the countries are a party to this convention and this makes it easy to file an application. The 12 months time period is given for filing applications in other countries but many applicants make use of this time period in their research work and look into the invention more thoroughly and try to understand the statistics of the market.

If the applicant wants to get a patent right in only one specific international country, then by taking the approval in that place, the patent application can directly be filed in such a country where he had the interest of filing. In this type of case, there is no rule of the Paris convention because there is no priority claimed. But if the applicant wants to file the patent application in several countries then the Paris convention route can be applied. The process of filing remains almost similar, the only difference is the application that can be first filed in the international country and within the time limit of 12 months, the applications can be claimed to be filed in the rest countries. If you go the Paris convention route, then you get around a 12 months time period from the date of the initial patent application to file patent applications in other countries. 

PCT route (Patent Cooperation Treaty)

This is where you can file your patent application in several countries at the same time. This treaty is also considered an international treaty which is managed by WIPO (World Intellectual Property Organization). PCT allows an application for filing in an individual country which is the applicant’s home country and meanwhile conserves the rights in other countries. The applicant gets a time period of up to 12 months for maintenance like the Paris convention route gets. But under the PCT, it allows a patent application to be filed in delay in another country. The delay time period is up to 30 months. It provides an additional time limit of 18 months than the Paris convention.

Under this route, a filing is done in the patent office of the applicant’s home country which is termed as the receiving office. And the application which is filed is called an International Patent Application. After this, the applicant gets a time limit of around 30 months for deciding and entering into the international patent application in the rest of the countries he wants to. This entrance is known as the National Phase Entry. Once he selects and an entrance is made under National Phase Entry, a normal patent application procedure is followed in every country as they want. This treaty also consists of an ISR (International Search Report). This report helps the applicant for accessing the kind of patentability objections the invention made by the applicant can face and it provides the opportunity to the applicant for rectifying it and overcoming the objections from the national offices after that.

International examinations are also done for defending such objections or amending the applications if necessary. Hence, the PCT application does not consider the direct filing process. With the help of this route, a patent application can be filed outside the home country without filing in the home country. In this case, an applicant taking approval from the authority to try to file the International Patent Office with the International Bureau in the receiving office.

Role of International organizations 

WIPO and its objectives

WIPO was established in 1967 by the WIPO Convention. WIPO is an intergovernmental organization and it became the specialized agency of the United Nations System in 1974. WIPO provided 2 main objectives:

  1. For promoting the protection of intellectual property.
  2. To make sure the administrative cooperation among the Intellectual Property Rights Unions which are established through treaties of WIPO.

For achieving these objectives, WIPO performs the administrative tasks of Unions. It performs activities like:

  1. Normative activities (For setting the norms and standards for the enforcement of Intellectual Property Rights through treaties.)
  2. Program activities (This involves the technical assistance to states in the area of Intellectual Property.)
  3. International and standardization activities (It involves the industrial property offices regarding the patent, trademark, and industrial designs.)
  4. Registration and filing activity (This is for registering marks and providing patents for the filed application by the applicant for his new inventions.)

WIPO has around 184 member states which consist of 90% of countries all over the world and these participate in WIPO for negotiating the treaties and make policy on the Intellectual Property Rights like Patents, Trademarks, Copyrights. WIPO is the most unique organization and its activities are hugely self-funded. Anyone from any state can get ownership in WIPO if they are a member of any Unions.

Conclusion

In general, inventors and creators protect their products against infringement through patents. Patents provide a way for these innovators to safeguard their intellectual property rights and protect the features unique to their products and services. The filing of a patent outside India needs a Foreign Filing License from the Indian Patent Office. This is due to various security reasons as mentioned in the article. Hence, before filing for a patent, the inventors should know about the rules and regulations related to the patents in India and the country in which they wish to file a patent. This not only gives them peace of mind but also gives them an assurance that their products are protected by the law and they can guard what rightfully belongs to them.

References

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