This article has been written by Ms. Samriddhi Vishen, a 2nd year LL.B. student of Shri Jai Narain Misra PG College (KKC), Lucknow.
Section 133 of The Patents Act, 1970 states that “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 for the purposes of this Act.” It is under Chapter XXII of the Act titled International Arrangements. Thus, this article attempts to explore the provisions related to a convention country.
Convention Application
The basic application date is used as the priority date of a claim in the complete specification when a person files a patent application for an invention in a convention country (referred to as the basic application) and that person, his legal representative, or that person’s assignee files a patent application under the Patents Act within 12 months of the date of the basic application. However, if an application is lodged for the protection of an invention in two or more convention nations, the 12-month period will start on the date earlier or earliest of when the application was made.
Additionally, within 12 months of the date of the earliest applications for protection of those inventions, a single convention application should be made in respect of those inventions for which 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. However, the price would be the same as if separate applications had been submitted for each of the inventions, and each application for an invention would be subject to the requirements outlined in section 136(1)(b).
Requirements for a Convention Application
Section 136 of The Patents Act of 1970, establishes particular rules for convention application. Each convention application must include a complete specification, an abstract, the date and the convention country in which the application for protection is being made, and a statement that the applicant or any other party from whom he derives title had not previously filed an application for protection in respect of the invention in a “convention country” before that date.
Claims regarding modifications or additions to the invention for which a protection application was lodged in a Convention nation may be included in the whole specification submitted with a convention application. In addition, the patent term of the convention application shall last 20 years from the date the application is filed in India.
If the Controller so requests, the applicant must also submit copies of any specifications or related documents that they have already filed with or deposited with the patent office of the convention country, as well as the complete specification, and these copies must be verified to the Controller’s satisfaction. When the Controller requests it, it is necessary to produce an English translation of the specifications and the supporting papers that have been validated by an affidavit that satisfies the Controller.
International Application under the Patent Cooperation Treaty (PCT)
In accordance with the Patent Cooperation Treaty (PCT), submitting an international application has the same effect as submitting a patent application pursuant to sections 7, 54, and 135 of the Act. The international application’s title, description, claims, abstract, and drawings that are filed in the international application are regarded as the complete specification. Additionally, the date of international filing accorded by the Patent Cooperation Treaty (PCT) will be the filing date of a patent application and the complete specification processed by the patent office.
An Indian applicant may submit a PCT international application in one of three ways, which are as follows:
- The Indian Patent Office serves as both the filing office and the receiving office. A copy of the permit for overseas filing, issued by the Controller in accordance with section 39, must be submitted with the application. The Department of Atomic Energy may be contacted for further instructions if the license is requested along with the application for an invention related to defense or atomic purposes.
- After receiving approval from the Indian Patent Office, an applicant may submit an overseas application directly to the International Bureau of WIPO.
- An international application can be submitted to the International Bureau of WIPO or the Indian Patent Office, which is a receiving office, following the filing of an Indian patent application and before the lapse of 12 months from the date of filing. However, authorization must be requested under section 39 if an application is submitted before the lapse of six weeks from the date of filing in India.
Additionally, if the applicant so desires, any alteration they suggest to the international searching authority or preliminary examination authority for an international application that designates or elects India before such an authority must be regarded as an amendment filed before the patent office.
International Search
An international search is conducted for every application submitted internationally. Finding pertinent earlier inventions is the aim of the global search. An international search is based on the claims, with the description and the drawings being taken into consideration. The International Searching Authority conducts a global search for international applications.
The International Searching Authority, which is involved in creating documentary search reports on previous art relating to inventions that are the subject of applications, maybe a national office or an intergovernmental body. An international search report is created by the International Searching Authority specified by the applicant in the international application. This authority provides a written opinion on whether the invention for which a patent is requested qualifies for patentability.
If the application has not claimed priority, the International Search Report will be available within 9 months of the date the international application was filed. Where priority is asserted, the report is made available by the sixteenth month following the priority date.
A granted patent should be assumed to be valid as long as it has not been declared invalid, according to the court’s reasoning in the case of Primus v. Roche. However, even if there are strong indications that a foreign portion of a European patent is invalid, the Dutch court may still decide about the infringement of such a foreign patent if it has jurisdiction.
In Cuno Inc. v. Pall Corp., the judge concluded that a finding of infringement by a foreign court could not be the basis for summary judgment in a United States patent case based on the cases codifying the principle of the independence of patents.
According to the judge in Vas-Cath Inc. v. Marhurkar, any advantages resulting from the idea of the independence of patents, unlike in the Cuno case, were overcome by the fact that the patents were similar and the ideals of “cost-saving and decision-expediting devices”.
Conclusion
The provisions on international arrangements prescribed under the Patents Act, of 1970 are in accordance with The Patent Cooperation Treaty (PCT), which enables applicants to seek a patent for an invention in multiple countries at the same time by filing an “international” patent application rather than separate national patent applications. The national patent office has the last say about patent grants, though.
India joined a number of international agreements to enhance its domestic patent rules. A request, a description, the claims, any necessary drawings, and an abstract are all required for an international application. The application must be submitted in a certain language, meet all physical requirements, demonstrate the invention’s unity, and must be subject to a fixed fee payment.
References
https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps135.html
https://www.mondaq.com/india/patent/656402/patents-law-in-india—everything-you-must-know
https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3038276/
https://www.s-ge.com/en/publication/guide/20211-c3-india-intellectualproperty
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