Patent Cooperation Treaty v/s Paris Convention
One of the most asked question in the field of Intellectual Property is, “If I file my patent in India, is it protected in the US?” and “Is there such a thing as a ‘worldwide patent’?”
The answer to such questions is NO. There is no such thing as a worldwide patent, a global trademark, or an international design. In order to receive protection for your intellectual property, you must file an application for the same in each country you want protection in.
Sounds cumbersome? Yes, it does. While applicants are always welcome to file their applications separately in each country, they desire protection in, the same is not a practice, especially if there are several countries the application intends to file in, lestit becomes too difficult to meet the date of priority for each application.
Fortunately, the World Intellectual Property Organization (WIPO) has formed several treaties that help inventors and applicants protect their intellectual property in different countries, without having to go through the hassle of filing in each country separately. Working in the worldwide economy necessitates the application of intellectual property laws across national borders. Two major international conventions control the application of an international patent:
- Patent Cooperation Treaty
- Paris Convention Treaty
In this Article, we discuss both these treaties, the benefits of each of these Treaties, and the differences between them.
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is a 1970 international treaty on patent law. It establishes a standardized method for filing patent applications in each of its contracting states in order to safeguard inventions.
The PCT was created to simplify the initial filing procedure by making it easier and less expensive to file a patent application in a wide number of nations. This is done by submitting an “international patent application“, which is a patent application filed under the PCT.
It can be submitted with the national patent office of the Contracting State in which the applicant is a national or resident, or with the International Bureau of WIPO in Geneva at the applicant’s request.
The International application can also be filed with the European Patent Office (EPO), the African Regional Intellectual Property Organization (ARIPO), the African Intellectual Property Organization (OAPI), or the Eurasian Patent Office. If the applicant is a citizen or resident of a contracting state party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention, this is also conceivable.
When a PCT application is filed, the Applicant is given a choice to select the Contracting States bound by the PCT in which he intends to file his patent. In each designated State; the international application has the same effect as if a national patent application had been submitted with that State’s national patent office.
Despite the fact that the international authority oversees the examination and publishing of patents, the “national phase” of patent granting remains under the control of national or regional patent offices. In brief, the international filing procedure is as follows:
- International Filing – An international application is filed with a national or regional patent office or the World Intellectual Property Organization (WIPO) in accordance with the PCT formality standards, in one language, and with a set of fees. This must be completed within 12 months of the local application being filed in order to secure the date of priority.
- International Search – The International Search Authority (ISA) locates published patent documents and technical literature (“prior art”) that may influence whether your invention is patentable and issues a written opinion on its possible patentability within 16 months from the date of priority Upon receipt of the International Search Report and the written opinion thereof, the Applicant obtains an idea of whether it may be a good idea to continue with his application, or abandon it.
- International Publishing – At 18 months, if the international application is not withdrawn by the Applicant, the international application is published.
- International Preliminary Examination under Chapter 2 –Now, the Applicant may demand an additional examination before or after amending the already published application under Article 19 of the PCT.
- Entering National Phase –At 30 months from the date of priority, the Applicant now must choose the designated states he wishes to enter and complying with each state’s national requirements, enter national phase before the expiry of 31 months from the date of priority.
Benefits of Patent Cooperation Treaty:
- Inventors can submit a single international phase patent application to acquire protection in all 117 PCT signatory nations at the same time.
- The formality criteria, international search, and preliminary review reports, as well as the PCT system’s centralized international publishing, are all standardized.
- The PCT aids in the growth of scientific knowledge.
- It provides appropriate legal protection for innovations.
- It simplifies and reduces the cost of invention.
- It raises the country’s international standing in the field of intellectual property.
- The PCT facilitates the management of patent portfolios.
- Evaluate and design incentives to keep an innovation alive before it incurs significant expenditures in another country.
One of the first intellectual property treaties was the Paris Convention for the Protection of Industrial Property, which was signed in Paris, France, on March 20, 1883. It formed a Union for the Protection of Industrial Property. The Convention is still in effect today.
The Convention’s substantive provisions are divided into three categories:
- National Treatment
- Right to Priority
- Common rules
Trademarks, patents, utility models, service marks, trade names, and industrial designs all fall under the scope of the agreement. It also covers appellations of origin, source indications, and the suppression of unfair competition.
The concept of National Treatment under the Paris Convention stipulates that every Contracting State must give the same level of protection to nationals of Member States as it does to the nationals of its own state, including the same legal remedies. As a result, this Concept resists two different sets of regulations for the protection of industrial property for nationals of a Contracting state and for nationals of the concerned state.
Right to Priority:
In the case of patents, utility models, marks, and industrial designs, the Convention establishes a Right to Priority. The right to priority means that, following the filing of a regular first application in one of the Contracting States, the applicant may apply for protection in any of the other Contracting States within a set amount of time – Patents and utility models have a 12-month time limit, while Industrial designs and trademarks have a six-month time limit. The subsequent application filed in any of the Contracting States during this stipulated time period will not lose its status of novelty or inventiveness due to the earlier filed application. In other words, the later filed application in additional Contracting states is treated as if they were filed on the same day as the first.
While the Convention provides for Common Rules of operation for all IP, in this Article, we elaborate upon the Common Rules for patents only, which are as follows:
- Individuality – A patent for an invention granted in one country does not necessitate a patent for the same invention in another country. Alternatively, a patent rejected in one country does not affect the eligibility of a patent for the same invention in another country.
- Inventor’s Right – The inventor has the right to be named.
- The grant of a patent may not be invalidated and patent may not be refused, of a product obtained by means of the patented process on the ground that the sale of the patented product, or is subject to restrictions or limitations resulting from the domestic law.
- Compulsory License – A compulsory license may only be granted after three years from the grant of the patent or four years from the filing date of the patent application, and it must be refused if the patentee gives legitimate reasons to justify this inaction.
Benefits of Paris Convention:
- Individuals and businesses have the broadest trademark, patent, utility model, industrial design, geographical indication, and trade name rights under the Paris Convention.
- A patent cannot be refused or cancelled because it has been terminated or refused in another country. Furthermore, if a government declines to recognize the patent in any other way, it is under no obligation to do so.
- The convention gives each country a lot of constitutional freedom. It also assures that both nationals and foreigners are treated equally.
- The applicant can use the 12-month convention cycle to seek funding, conduct market research, and develop their concept into a commercial product. All of them can be accomplished with a single filing without generating a loss, thanks to the convention.
- The Convention does not intend to enact national laws or to establish the principle of reciprocity in national treatment.
- The Indian Patent Office does not restrict amendments of claims at the time of entry of a convention application in India.
Let’s look at the fundamental differences between the PCT and the Paris Convention.
S. No Patent Cooperation Treaty (PCT) Paris Convention 1. Applicants can file a single international phase patent application to obtain protection in all 117 PCT signatory countries at once. The Applicant needs to file his applications separately in the countries he intends to file in, within a time frame of 12 months from the date of local filing in order to claim the right to priority. 2. The formality requirements, international searches, and preliminary review reports, as well as the PCT system’s centralized international publications, are all standardized. The Applicant needs to comply with formality requirements of each Contracting State by himself. 3. According to Rule 20(1) of the Indian Patent Rules, 2003 (as amended), the applicant may delete claims from the international application at the time of national phase entry, without filing a request for amendment or paying an additional fee. In other words, any other amendment (addition, revision, merger or modification) is not acceptable in the Indian Patent Office. There is no provision in the Indian Patent Act, 1970 (as amended) or the Indian Patents Rules, 2003 (as amended) regarding amendment of claims (or restriction thereof) of a convention application at the time of entering India. 4. The PCT allows up to 18 months during the international phase to prepare for the national phase entry. The applicant can use the 12-month convention cycle to seek funding, conduct market research, and develop their concept into a commercial product. All of them can be accomplished with a single filing without generating a loss, thanks to the convention. 5. It simplifies and reduces the cost of invention and offers international search. The Paris Convention may prove to be hectic and expensive if filing in a large number of countries.