Discuss the different modes of filing patent in foreign countries

Introduction and History

A patent is an exclusive right granted for an invention which is product or a process that provides
in general a new way of doing something or offers a new technical solution to a problem. Patent
provides exclusive rights to a product or process which is Novel, Inventive Step and have an
industrial application can be patented in India. However, it must not fall into the category of
inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act,
1970. We must keep in mind the subject matter which is going to be patentable shall not exist or
is not an existing state of art and is obviously novel. All the inventions cannot be protected as
patents. Patentable object should be no obvious. Just attaching a wheel or stand or handle to an
existing object would not be an inventive step. It is also essential that the product concern should
have enough utility by the way of industrial application i.e. it should be capable of being
produced industrially in a large quantities.

The patent system in India emerged when India was a colony of the British and, therefore, the
British used their own system as a drawing account while drafting the Indian Patents Act. The
first Act for protection of inventions in India, i.e. Act VI of 1856 on protection of inventions,
was based on the British Patent Law of 1852. Certain exclusive privileges were granted to the
inventors of new manufacturers for a period of 14 years. The Act was modified in 1859 and
certain exclusive privileges were granted to inventors for making, selling and using inventions in
India, and authorising others to do so for 14 years from the date of filing specifications.  

The Patents and Designs Protection Act was enacted in 1872, and in 1883, the Protection of
Inventions Act was enacted. Both the Acts were consolidated as the Inventions and Designs Act
in 1888. The Indian Patents and Designs Act came into effect in 1911. After Independence, the
national government decided to change the Colonial Patent Act amended in 1911. The study
made by two committees headed by Bakshi Tek Chand and N. Rajagopala Ayyangar JJ led to the
emergence of the new Patents Act. On 20 April 1972, the Indian Patents Act (Act 39 of 1970)
came into force. The Indian Patents Act, 1970 was later amended in 1999, 2002 and 2005. The
Patents (Amendment) Act, 2005 seeks to bring the Indian Patents Act in line with the Trade
Related Intellectual Property Rights (TRIPS) Agreement.
Globalisation of trade and commerce has now given an international character to intellectual
property. Before the existence of any international convention, it was difficult to obtain
protection in many countries due to diversity in national laws. Globalisation necessitated
harmonisation of industrial laws. The international character of intellectual property is
recognised in the various international conventions like the Paris Convention, Berne Convention,
Universal Copyright Convention, etc.

How to file an international patent 

For filing a patent application internationally there are two ways in which one 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 391 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
1
39. 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 defence 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.
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.

Paris Convention The foundation for international patent protection was created in the late 19th
century at various Congresses in Vienna and elsewhere, culminating in the Paris Convention of
1883 that provided inventors with a rational base for international patent protection. The Paris
Convention is the starting point for a consideration of any intellectual property rights in virtually
any part of the world. The original Paris Treaty from 1883 has been revised several times and
today stands in the form of its 1967 Stockholm Revision. The Paris Convention of 1883 is one of

The Paris Convention of 1883 is one of the most important legislations in the field of intellectual
property rights. The Paris Convention established many fundamental principles like national
treatment2, the right of priority3 and the guarantee of a certain minimum protection. Most of the
countries have been attracted to introduce patent system in the hope that it will act as a lure to
foreign technology. This has induced them to open their system of filing foreign applications and
the origin of the concept of national treatment can be traced to this logical need. The Paris
Convention allows an applicant to obtain a priority date by filing an initial application, typically
in the inventor’s home country. The applicant may then file a patent application in any country
bound by the Convention within 12 months and maintain the earlier priority date. 4 Thus, the later
applications enjoy a priority status with respect to all applications relating to the same invention
filed after the date of the first application. The Paris Convention recognises expressly that the

2
Paris Convention, 1883, Article 2
3
Ibid, Article 4
4
Ibid, Article 4
right of priority may be invoked by the successor-in-title of the first applicant. 5 The issue of
claiming priority was discussed in Edwards Lifesciences AG v. Cook Biotech Inc. 6 The question
that was considered was whether a Patent Cooperation Treaty (PCT) application would be
entitled to priority of a US patent application, when the US patent application was filed by joint
inventor and the subsequent PCT application was filed only by one of the inventors.

The PCT provides for claiming priority from earlier applications filed in any country that is a
party to the Paris Convention for the Protection of Industrial Property. Article 4 of the Paris
Convention specifies that a person is to enjoy a right of priority if he has filed a relevant
application for a patent or if he is the successor-in-title to such a person. Further, any person
wishing to take advantage of the priority of such a filing must be required to make an appropriate
declaration. Both elements of Article 4 are reflected in Section 5, Patents Act which requires a
declaration made by the applicant that complies with the relevant rules and specifies one or more
earlier relevant applications made by the applicant or a predecessor-in-title. The Chancery
Division found that the effect of Article 4 of the Paris Convention and Section 5, Patents Act is
that a person who files a patent application for an invention is afforded the privilege of claiming
priority only if he himself filed the earlier application from which priority is claimed or if he is
the successor-in-title to the person who filed that earlier application. If he is neither the person
who filed the earlier application nor his successor-in-title then he is denied the privilege.
Moreover, his position is not improved if he subsequently acquires title to the invention. It
remains the case that he was not entitled to the privilege when he filed the later application and
made his claim. In most countries, no valid patent can be obtained if, before the application is
filed, the invention has been described in a printed publication, either in the country of
application or in any other country.

The Convention gives applicants in member countries a period in which they can file
applications in other countries after filing an application in their own country and obtain valid
patents notwithstanding publication or use in the interval and before the filing of the foreign
application. This is the right of an applicant to have the foreign application treated at law as prior
to the intervening publication or public use, instead of filing simultaneously with the home

5
Ibid, Article 4-(A)1
6
2009 EWHC 1304 (Pat)
application, yet have it treated as though it were filed on the date of the home application. This is
called convention priority. The foreign filing date is the convention date. This priority right was
a protection to one who was trying to obtain patents in foreign countries, the protection being
against patent-defeating provisions of national laws based on events intervening between the
time of filing at home and filing abroad. Contracting States have the right to enact measures
providing for compulsory licences for abuses of the patent, in particular for failure to work. Such
licences are not to be applied for before the expiry of four years from the date of filing of patent
application or three years from the date of grant of the patent, whichever is later. 7 The
Convention will continue to provide a substratum for patenting an invention in more than one
country. The Paris Convention has provided the framework for the PCT, the European Patent
Convention (EPC) and the Community Patent Convention. Contracting States are allowed to
enter into separate treaties provided that these agreements do not contravene the provisions of the
Paris Convention.8

PCT route (Patent Cooperation Treaty)

The national patent system requires the filing of an individual patent application for each country
in which protection is sought. The PCT is an agreement for international cooperation in the field
of patents and to make economical the filing of patent application for a series of countries. It is a
special agreement under the Paris Convention and an agreement for international cooperation in
the field of patents. The PCT is a procedural treaty and the actual grant is by the national patent
offices. To achieve its objects, the PCT enables the filing with the receiving office a single
application called the international application. It is a worldwide treaty. The countries that have
acceded to it are deemed to belong to the International Patent Cooperation Union. India having
acceded to the PCT belongs to the International Patent Cooperation Union.

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

7
Ibid
8
Paris Convention, Article 19
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.

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.