International Arrangements under Patent Law

International Arrangements under Patent Law

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Introduction

An invention can be protected through a patent in multiple countries by filing an “international” patent application. In order to preserve and protect the international and global character of the invention, countries world over have become signatories to various international conventions governing the formal parameters within which international applications must operate. 

This international aspect of protecting inventions under the patent law has been introduced under Chapter XXII of the Patents Act, 1970 which deals with International Arrangements. The patent applications which are received under the aegis of the Paris Convention, 1883 and the Patent Cooperation Treaty (PCT), 1970 to which India is also a member are dealt with under the provisions of this chapter. 

India became a member of the Paris Convention in 1998 and the Paris Convention provides reciprocity in filing with the right to priority. In addition to these conventions, India is also a member of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent, 1977 which provides a mechanism for depositing biological material on the International depository recognized by authorities to supplement the description of a Specification.     

Who is a Convention Country?

Section 2(1)(d) of the Patents Act, 1970 defines a “convention country” as a “country or a country which is a member of a group of countries or a union of countries or an Intergovernmental organization referred to as a convention country in section 133. India is a member of the World Trade Organization, the Paris Convention and also a contracting state to the Patent Cooperation Treaty. Therefore, a convention country includes within its scope:

  • any country;
  • union of countries; or    
  • Intergovernmental organizations

which are members/contracting states to the above-mentioned convention, treaty or agreement.   

Therefore, “any country which is a signatory or party or a group of countries, union of countries or intergovernmental organizations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicants for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries.”  

Moreover, where the citizens of India are not accorded the same rights in respect of grant and protection of patent rights by any country which it gives to its own nationals, in such cases a national of such country shall not be entitled, either solely or jointly:

  • to apply for the grant of a patent or be registered as the proprietor of a patent;
  • to be registered as the assignee of the proprietor of a patent; or
  • to apply for a licence or hold any licence under a patent granted under the Act. 

Therefore, reciprocity is an essential feature under an international arrangement among the signatories or parties to an international convention or treaty dealing with patents. 

Convention Application

When a patent application is made by a person for an invention in a convention country known as the basic application and that person or his legal representative or assignee of that person makes an application under the Patents Act for a patent within 12 months from the date of the basic application, the priority date of a claim of the complete specification, is the date on which the basic application was made. However, where an application is made in two or more convention countries for the protection of an invention, the 12 month period will commence from the date on which the earlier or earliest of the applications was made. 

Moreover, a single convention application should be made in respect of those inventions where an application for protection is made in one or more convention countries for two or more related inventions or where one is a modification of the other, within 12 months from the date of the earliest applications for protection of those inventions. However, the fee payable would be the same as if separate applications have been made in respect of each of the inventions and the requirement prescribed under section 136(1)(b) will apply separately to the applications in respect of each invention.   

Requirements for a Convention Application

Section 136 of the Patents Act, 1970, prescribes special provisions with respect to convention application. Every convention application should be accompanied by:

  • a complete specification;
  • an abstract;
  • specify the date and the convention country in which the application for protection was made;
  • state that no application for protection in respect of the invention had been made in a ‘convention country’ before that date by the applicant or by any person from whom he derives title. 

The complete specification filed with a convention application may include claims in respect of developments or additions to the invention in respect of which the application for protection was made in a Convention country. Furthermore, the term of the patent of a convention application shall be for a period of 20 years from the date of filing the application in India.

Where the Controller requires, the applicant in addition to the complete specification must submit copies of the specifications or corresponding documents filed or deposited by the applicant in the patent office of the convention country which must be verified to the Controller’s satisfaction. Where the specifications or the documents are in a foreign language an English translation of the specification and the documents, verified by an affidavit which is to the satisfaction of the Controller should be provided when required by the Controller.   

International Application under the Patent Cooperation Treaty (PCT) 

When an international application is filed under the Patent Cooperation Treaty, such an application will have the effect of filing an application for a patent under section 7, 54 and 135 of the Act.  The title, description, claims, abstract and drawings which are filed in the international application are considered as complete specification. Moreover, the filing date of a patent application and the complete specification processed by the patent office will be the date of international filing accorded under the Patent Cooperation Treaty. 

There are three different ways for filing a PCT international application by an Indian applicant which are as follows:

  • filing is done in the Indian Patent Office which also acts as the receiving office. The application should be accompanied by permission for foreign filing which is granted by the Controller under section 39. If the permission is sought along with the application, for an invention relevant for defence/atomic purpose, the permission may be deferred and the application may be referred to the Department of Atomic Energy for further directions. 
  • an applicant can file an international application directly in the International Bureau of WIPO after permission is taken from the Indian Patent Office. 
  • after a patent application is filed in India, before the expiry of 12 months from the date of filing, an international application can be filed in the International Bureau of WIPO or in the Indian Patent Office which is a receiving office. However, if an application is filed before the expiry of 6 weeks from the date of filing in India, permission should be sought under section 39. 

Moreover, Any amendment which is proposed by the applicant for an international application that designates India or elects India before the international searching authority or preliminary examination authority must be taken as an amendment made before the patent office, if the applicant so desires. 

International Search 

Every international application is subjected to an international search.  The objective of the international search is to discover relevant prior inventions. The claims form the basis of an international search and due regard is given to the description and the drawings.  The international search of an international application is carried out by the International Searching Authority. 

The International Searching Authority may be a national Office or an intergovernmental organization, who are involved in establishing documentary search reports on prior art concerning inventions which are the subject matter of the applications. The International Searching Authority prescribed by the applicant in the international application prepares an International Search Report. This authority gives its written opinion on the patentability of the invention for which patent is being sought.

The International Search Report is available within 9 months from the date of filing the international application if the application has not claimed priority. However, where priority is claimed the report is available by 16th month from the priority date.   

Conclusion

Therefore, the provisions on international arrangements prescribed under the Patents Act, 1970 are in consonance with the Patent Cooperation Treaty (PCT) which makes it possible for applicants to seek a patent for an invention in multiple countries simultaneously by filing an “international” patent application instead of filing separate national patent applications. However, the grant of patent is at the discretion of the national patent office.

An international application must contain a request, a description, the claims, drawings where required and also an abstract. The application has to be in a prescribed language and it must comply with the physical requirements, unity of invention and is also subject to the payment of fees. Therefore, India became a signatory to several international arrangements to strengthen its domestic patent laws. 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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