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1.1 INTRODUCTION

The term intellectual property refers to a loose cluster of legal doctrines that
regulate the uses of different sorts of ideas and stigma. Intellectual property
denotes the rights over a tangible object of the person whose mental efforts created
it, there is no intellectual property in mere ideas and only the expression of an idea
is protected. Intellectual property provides rights of ownership in the product
created by human intellect but not in the product itself. 1 The Patent Cooperation
Treaty (PCT) provides us with an overview of an international treaty which is duly
administered by the World Intellectual Property Organization (WIPO). The PCT is
an international treaty which provides a system for filing a patent application and
allow us to obtain patents in multiple countries around the world on the basis of a
single patent application. Industrial property rights shall be patent, industrial
design, trademark and appellation of origin and geographical indication.

1.2 PATENT:

A patent is a right granted by a state, to the true and first inventor. He or she has
the right to exclude from selling or to supply the subject of his invention for a
limited period. Those who infringe the patent, they are liable to be restrained by
injunction or also liable to compensate the inventor. To receive a patent for your
invention it must be i) Novel; ii) Innovative; iii) must have industrial applicability.

1.2-01 Origin of Patent:

The concept of patenting originated in the Ancient Royal Courts of Rome. E.g., It
is said that during the 7th century, a cook of the palace had exclusively received
the right over his speciality and prevent others from infringing the monopoly
created. The King had granted an edict which came to be known as Patent.2

In 1474, the venetian Senate came up with the concept of patent law by joining
the intellectual property right and giving importance to protecting investor rights

1
Elizabeth Verkey, Law of Patents, pg1.
2
N K Acharya, Intellectual Property Rights, Pg 79,80.
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and this gave a protection for a period of 10 years. Research says that this is the
first patent law that was formed. By this we can say that the Venetian Patent Act
became the foundation for the modern international patent statutes.

1.2-02 British and Indian Patent System:

The British adopted the Venetian concept of legal protection in the 16 th century,
and they came up with their own British Patent Act 1902. The Patent Act,1977
replaced the old system of British patent law and this made the most radical piece
of patents legislation.3

India received its patent system when India was a colony to British. The British
used their own system and drafted the Indian Patent Act 1856, and the duration
was 14 years. The act was amended and called the Indian Patent’s and Design Act
1911.4 After independence the act was revised and enacted in 1970 and enforced
in 1972 by accepting the recommendation of Justice Rajagopal Iyengar and in the
year 1995 we became the member of World Trade Organization (WTO) and on
the context of WTO Agreement, Patent Amendment act 2003 and Patent Rules
2003 was brought into effect and the patent duration was changed from 14 years
to 20 years.

1.3 PARIS CONVENTION:

The Paris Convention was originally adopted in March 1883, and it has been
revised for various years, 1900 – Brussels, 1911 - Washington, 1925 – Huge, 1934
– London, 1958 – Lisbon, 1967 - Stockholm. This was again amended in the year
1979 and now it is administered by the World Intellectual Property Organization
(WIPO).5 As of now in the year 2022 the Paris Convention has 179 signatory
members. This was administered for the protection of the Industrial Property
which includes:
 Patents

3
Supra, (1), Pg 15.
4
Supra, (2)
5
Rajiv Jain, Rakhee Biswas, Law of Patents, procedure and practice.pg 1.58.
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 Trademark
 Industrial Designs
 Utility Models
 Geographical indications.

The convention has three main categories:

1. National Treatment
2. Priority Rights
3. Common Rules.

PUT DIAGRAM HERE6

1. National Treatment:

The Paris Convention stipulates that each Contracting Nation must treat all
nationals from the Convention’s member states as equal when granting
intellectual property protection. This is mentioned in Article 2 and 3 of the Paris
Convention. In addition, citizens of non-member states are also entitled to
protection under the Convention provided they have existing industrial or
commercial establishments in a contracting country.7

Example: XY, an applicant will file an application in a foreign country who is a

member of the Paris convention and the applicant XY will receive the same
treatment as of the original members (citizen) of the country and they will not be
discriminated.

2. Right of Priority:
The Paris Convention allows the applicant from one member country to use the
first filing date (filed in the original country) as an initial date while filing in other
member countries. (Article 4 of the Paris convention)
The subsequent filing should be done within the 12 months of priority date.

6
https://www.wipo.int/pct/en/faqs/faqs.html. Visited on 08-03-2023.
7
https://www.wipo.int/wipolex/fr/text/288514. Visited 08-03-2023.
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3. Common Rules:
The Paris Convention outlines a few general rules that its signatory states must
follow:

 Patents granted for different member states for the same invention must operate
independently. In fact, whether a patent is granted, cancelled, or declined in one
country does not affect the status of that patent in other countries. Also, the
provision requires that the inventor be named in granted patents.
 Trademark registration requirements are not regulated by the Paris Convention.
Instead, each member state must determine its own guidelines based on its local
laws. Similarly, registered marks must operate independently without undue
influence from other member countries. Also, member countries cannot refuse to
register a mark because the mark is not registered in its country of origin.
However, registration may be denied in well-defined cases, for instance where the
application is preceded by a locally existing claim or infringes on the rights of a
third party.8

1.3-01 India and Paris Convention:

The patent regime in India has all along being conservative but we could not be
blind anymore to the fact that countries across the globe have benefited from the
strong patent regimes and co-operation among the nations in protecting the
intellectual property rights. India became a signatory member of the Paris
Convention. We joined the convention on 7th September 1998.

The Advantages of the convention to India are:

 The Indian Patent Applicants can avail equal treatment and right of
priority in all member countries.
 No need to enter into bilateral agreements from other countries for
obtaining right of priority and equal treatment for Indian patent holders.
 This has made India more attractive to the globalized research and
development activity.9

8
https://www.anounaja.com/blogs.paris convention of 1883. Visited 08-03-2023.
9
Supra, (5).
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1.4 PATENT CO-OPERATION TREATY:

The Patent Co-operative Treaty (PCT) is a special treaty under the Paris
Convention. The primary objective of PCT is to simplify and make economical
filing of the patent application in multiple countries.
The PCT application is an international patent law treaty, and this was adopted in
the year 1970 in Washington which initially had 18 countries as its signatory
members. India became the member of PCT in the year 1998 and recognised the
PCT application.10

1.4-01 PCT Procedure:

The process of acquiring a patent through the PCT system involves two phases:
 International Phase
 National Phase
The Applicant must go to the international phase first before the National
phase.
1. International Phase:
The International Phase has four main stages:
 Filing of international application
 International search
 Publication of the application
 International preliminary application

PUT THE DIAGRAM HERE11

Filing of international application:

This is found under article 3 of the Patent Co-operation Treaty. This is filed under
the PCT, and the application maybe filed for acquiring any kind of patent. The
application can be filed by any person who is a national or resident of a country,
which is the member of PCT. If an application is having two or more people
(applicant) then the application can be filed if at least one of them is a national or
resident of that country which is a member to PCT.

10
Kalyan C. Kankanala, Arun K. Narasani, Vinita Radhakrishnan, Indian Patent Law, and Practice.
11
Supra (6)
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Example: if ‘V’ and ‘K’ are nationals of India and Argentina, and they are
applicants in a patent application. They can file a PCT application even if
Argentina is not a member country to PCT, as one of the applicants national is
India which is a member country to PCT.

A PCT application can be filed by the applicant directly or through a patent agent
or an application can be filed at any office which is the receiving office that is
eligible to receive the application under the treaty.

Example: if ‘H’ is a national of Germany, which is a member of European Patent

Co-operation (EPC), he/she can file a PCT application at the European Patent
Office as the Receiving Office.

The filing application requires five documents, which are:

1. Request : Under article 4 of the Patent Co-operation Treaty, A request must

accompany a PCT application and must contain i)Petition; ii) Title of the
invention; iii)information of the applicant /agent; iv) Inventor details,
2. Description: Under article 5 of the Patent Co-operation Treaty, it is an
application which must be filled with a written description of the invention.
Specification of the invention must be mentioned in detail.
3. Claims: Under article 6 of the Patent Co-operation Treaty, it is about the
invention that forms the subject matter of the application.
4. Drawings: Under article 7 of the Patent Co-operation Treaty, must be included
in an application when such drawings are required to understand the
invention.
5. Abstract: it is a brief description of the invention, which is provided for the
technical purpose only.
6. Language: the application can be filed in any language permitted by the
receiving office. Regarding India, it is Hindi and English.
7. Fees: there are three types:
a. Transmittal Fees: which is fixed by and paid to the receiving office.
b. Search fees: which is fixed by and paid to the international search
authority selected by the applicant.
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c. International Filing Fee: which is fixed in the schedule of fees

appended to the PCT Regulations and is paid to the international
bureau.12

International Search:

Under article15 of the Patent Co-operation Treaty speaks about international

search will be performed on every PCT application and also performed by the
International Searching Authority (ISA). The search authority will perform an
international search to identify the prior art relevant to the invention and will
prepare the report also with a written opinion on industrial applicability, novelty
and inventive step. This will be prepared within three months from the priority
date, whichever is later.

The international search will be performed based on the claims, with due regard
to the description in the application and ISA will not perform a search if the
subject matter of the invention relates to a non-patentable invention. The authority
may also refuse to perform a search if the application does not satisfy the
requirements.

Publication of Application:

The application will be published by the international bureau after the expiry of
18 months from the priority date of the application. At times, the application may
be published earlier than 18 months on the request made by the applicant. Also,
the application will not be published if the international Searching Authority is
unable to perform the search due to valid reasons under the treaty.

Any statements filed with the amendments will be published along with the
application. The application may also be withdrawn before the international
bureau completes the technical preparations for the publication which is done
before 15 days of expiry of 18 months from the priority date and must receive
prior notice of withdrawal.13

12
Supra (10)
13
Supra (10)
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International Preliminary Examination:

An applicant may demand for international preliminary examination which should

be filed within 3 months from the date of transmittal of the international search
report and the written opinion, or within 22 months from the priority date of the
application whichever is later. The application can undergo amendments but must
be done before it enters the National Phase.

The international examination authorities recognized by Indian patent office:

 Austrian patent office

 Australian patent office
 European patent office
 China intellectual property office
 United states patent and trademark office
 Swedish patent office.

National Phase:

National phase is the phase before the national or reginal patent office where the
patent is granted to the applicant. The applicant must entre the national phase in
all the countries he desires to acquire the patent.

To enter the national phase in a country, the applicant must file the PCT
application at the national patent office and pay the requisite filing fee. The
applicant must file the application at the national patent office before the expiry of
30 months from the priority date, and in certain countries the national application
must be filed before the expiry of 20 months from the prior date and some
countries like India follow extra time for filing the national application. The
applicable time limit for each country in found on the website of WIPO.

Indian National Phase:

An application enters the National Phase of India by filing the application at the
Indian patent office after the International Phase and must file the application in
the requisite form by paying the requisite fee before the expiry of 31 months from
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the prior date. The Indian patent office see to it that all the requirements of the
Indian patent act are satisfied.14

1.4-02 Advantages and Disadvantage Of PCT:

These are the few advantages given below:

 By filing an international (PCT) patent application instead of direct

national/regional applications, it is possible to delay the final choice of
territories where protection is sought by eighteen months, in respect of
territories which are signatories to the PCT. This buys the applicant time to
determine which territories will be commercially important.
 Filing an international (PCT) patent application also delays the costs
associated with seeking protection in each territory which is designated in
the international application, both by delaying filing costs until 30 months
from the earliest declared priority date and by delaying the subsequent
application procedure in some territories.
 An international application can be advantageous if you have not yet had
any searching carried out. If the International Search Report and Written
Opinion are negative and prospects for obtaining patent protection are
poor, you need not enter the national or regional phase and therefore never
incur the potentially substantial costs to file in multiple territories. In
contrast, if you file only direct applications, search reports will not be
issued until after the costs of filing the national or regional applications
have been incurred.
 The PCT includes an optional international examination procedure
("Chapter II"). This procedure is sometimes useful to establish claims
which are in principle patentable centrally and may avoid incurring the
costs of making corresponding arguments in multiple territories. It is not
always so simple in practice, however.

These are the few disadvantages given below:

 The most obvious disadvantage of the PCT application route is that it

increases overall costs.

14
Supra (10)
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 In some territories, the PCT application route is slower than direct national
applications. However, as this also means that costs are deferred.
 It is also important to appreciate that some commercially important
territories are not signatories to the PCT meaning that direct applications
are required instead.15

1.5 CRITICAL ANALYSIS

By this we come to know that Paris convention and PCT is very essential
provisions provided to the inventors which has made the filing of application to
the other member countries hustle free and cost efficient. India by becoming the
signatory member to the convention and treaty it has given a ambitious advantage
to the citizens. Though there are significate drawbacks in the procedure, it has
overall made it possible to seek patent protection for an invention simultaneously
in each of a large number of countries by filing an "international" patent
application.

1.6 CONCLUSION:

Patent Cooperation Treaty brought great revolution in field of invention and

innovation for the inventor due to this PCT enjoyed great success and continued
growth across the world. States with millions of inventors, big and small, who
aids to the world’s technological advancement through the use of the PCT and
national patent systems. The PCT brought revolution in the way through which
patents are obtained across the world. The time delay feature of the PCT preserves
user patent options, delays costs, giving user an additional time to obtain
financing and assess commercial, licensing and partnership opportunities.

15
https://www.hindles.co.uk/faq/what-is-an-international-pct-patent-application. Visited 9-03-2023.
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