In this article, Deepshikha Sarkar discusses how to obtain international Patent protection.
Does and Indian Patent give international protection?
All Intellectual Property Rights including Patents have territorial jurisdiction. The rights granted are only effective within the territory of India. The inventor reserves the right to file a corresponding patent in convention countries where he wishes to get protection within or before 12 months from its date of filing in India. There is no ‘global protection’ as such, protection needs to be obtained in every country individually.
This also means that if a patent is rejected in any one country it does not make any difference to its protection in other countries, and vice versa, as they are governed purely by national laws.
How can an Indian Inventor get a Patent in a foreign country?
An Indian inventor can choose to get a patent in a foreign country either by filing for patent in India too or by only getting protection in foreign countries. Whatever he chooses he would in any way need to inform the Patent office in India as no patent application can be filed outside India without that.
If the Indian inventor does not want protection in India, the Inventor (applicant)should take permission from Indian patent office for filing patent application outside India. Generally, patent office replies within 21 days.
This is mandated by the As explained in Section 39 of the Indian Patent act:
“Residents not to apply for patents outside India without prior permission
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) Either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
(2) The Controller shall dispose of every such application within such period as may be prescribed:
Provided that if the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.
(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Routes to Multi Country Protection
The Paris Convention for the Protection of Industrial Property was signed in Paris, France on 20th March 1883, making it one of the first treaties in Intellectual property. It was made with the objective of promoting trade and protecting industrial property among the member countries without any loss of priority date. India became a member in December 1998.
PROCEDURE UNDER THE PARIS CONVENTION
Inventor can directly file separate patent applications at the same time in all of the countries in which he would like to protect your invention (for some countries, regional patents may be available) or, having filed in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving him the benefit in all those countries of claiming the filing date of the first application.
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent Law treaty, concluded in 1970 and entered into in 1978. It provides a platform where procedure for patent filing is unified and protects inventions of all signatories.
A Patent application filed under PCT is called an international/PCT application. An Indian inventor can file an application under the PCT, directly or within the 12-month period provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT and, therefore PCT filing is much simpler, easier and more cost-effective than both, Paris route filings.
By choosing this method of registration an Indian inventor is bound to save in terms of costs towards filing fees, translation, attorney charges etc.
Also the PCT system provides much longer time for filing patent application in member countries. Under PCT the time ranges from 20-31 months.
Additionally, an inventor gets help from the search report and the Preliminary Examination Report the inventor gets a clearer picture of the novelty and the possibility of patentability.
PROCEDURE INVOLVED IN PCT
Filing: The inventor can file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and the inventor pays only one set of fees.
International Search: An “International Searching Authority” (ISA) identifies the published patent documents and prior art which defines the scope of an invention getting patented. It also furnishes a written opinion for the same.
International Publication: As soon as possible after the expiration of 18 months from the earliest filing date, the content of the inventors international application is disclosed to the world.
Supplementary International Search (optional): A second ISA identifies, at the inventors request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
International Preliminary Examination (optional): One of the ISAs at the inventors request, carries out an additional patentability analysis, usually on an amended version of the inventors application.
National Phase: After the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which the inventor claims priority, one can start to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which he wants to obtain them.
Comparison of the Routes
ADVANTAGEOUS FEATURES OF PCT
- It delays the need to make a firm decision about the countries where patent protection is to be pursued by up to 18 months.
- The PCT International Search Report helps applicants to determine how likely it is that the application will proceed to grant in individual countries after national phase entry.
- Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.
ADVANTAGEOUS FEATURES OF THE PARIS ROUTE
- It is beneficial for people who are looking for a fast grant of patent as opposed to a cost effective method. Paris Convention filing can often proceed to grant significantly faster than those going by the PCT route. As in this route an application is filed in an individual country sooner, hence examination is expedited.
- Notwithstanding the fact that PCT covers over 130 countries, countries like Taiwan and Argentina and a few others are not a part of it. If one wants protection in those countries, Paris route is required.
- If an Applicant wants to file different content in, for example, Europe and the USA (as approaches to information technology and pharmaceutical patents) then the PCT route is not feasible. As in PCT one must draft a single patent specification that takes into account the different legal requirements of all countries.
It can be said safely that these two routes are not alternatives. Both have advantages and disadvantages exclusive to each of them. In fact, they are complementary methods available to the inventor to choose as per his needs.