International Patents: Filing and Validity Across Countries

A person usually makes patents to protect his invention, generally based upon a certain area or location. In some cases, one would want to have an international patent for an invention, for this purpose, some treaties are covered in this blog.

Paris Convention

The Paris Convention was signed in Paris, France on 20^th March 1883. It is one of the treaties which was signed for intellectual properties. It applies to all intellectual properties like industrial designs, patents, trademarks, and geographical indications. The total number of signatories is 177. The objectives behind the creation of the Paris Convention are:

1. To prevent any form of loss by eligibility for the protection of patents.
2. Harmonizing the various patent laws of various countries.

The convention falls into 3 main categories further:

1.    National Treatment:

Each contracting state is required to provide the same status and protection as it would give to its nationals to the contracting states of the convention.

2.    Right Of Priority:

If an application for a patent is filed within a certain time, the filing date of application in one contracting state can be used in another contracting state as well.

3.    Common Rules:

The convention provides certain common rules on trade names, patents, trademarks, industrial designs, utility models, service marks, and indications of source that are binding on all contracting states.

Advantages of Paris Convection

• This convention provides a wide range of rights of protection about trademarks, patents, utility, geographical indication, and industrial designs.
• The convention assures that nationals as well as foreigners are treated equally and fairly in all situations.
• It does not focus on the national laws or their correlation with other laws.
• As per the convention, a patent can not be refused on the ground that it has been terminated in some other nation.

Filing under the Paris Convention  

The inventor has the option to file a separate patent application in all of the countries simultaneously where he wants the protection of his invention. On the other hand, after filing in a country that is a party to the Paris Convention for the Protection of Industrial Property the inventor may file additional patent applications in additional Paris Convention countries within a year of the first application’s filing date, giving him the advantage of claiming the first application’s filing date in each of those nations

What is PCT?

PCT stands for Patent Corporation Treaty. It is an international treaty that has more than 148 countries as a part of it. It helps in filing a patent application which is applicable in various countries through one application only. This treaty has helped in simplifying the process of having an initial recognition of the patents. It was signed in 1970 in Washington, United States, and came into effect on 24 January 1978. The PCT is administered by the World Intellectual Property Organization. The PCT application has to be made at the International Bureau of WIPO in Geneva.

Need of PCT

The need for PCT was considered essential by WIPO for various reasons. The innovators throughout the world had a very complex process to obtain international patents. It helped make the world more reachable for one and all. It has helped in getting one application form to obtain a patent in multiple nations simultaneously thus making it a simpler and unified process.  It is a cost and time-saving process as there is only one single application and the cost would be charged for single only. 

Advantages of PCT

The various advantages linked to PCT are:

• The applicants have to file for only a single application for registration in all the countries thus reducing the burden of filing different applications
• It helps in examining the procedures at national levels in different countries and helps in reducing the legal and application fees.
• It increases the chances of getting a patent protection grant and reduces the chances of rejection of a grant in any case.
• It provides the applicant with feedback at the preliminary stage about the patentability of the product thus increasing the chances of getting the patents.
• It provides an opportunity for the applicant to present arguments or make amends in the patent to increase the chances of getting the patents

Filing Patents in PCT

Step 1: Filing the Application

• The first step is to apply with the patent office to the receiving officer which is to be by Article 3 of PCT. Article 3 of PCT provides the requirements one has to fulfil before applying. The Article 3 Requirements are:

1.  Application in a prescribed manner
2. Fulfill the physical requirements of the treaty.
3. Fulfill the requirements of the unity of invention and its novelty
4. Subjected to specific fees.

• With the application being filed with the patent officer, it has to be filed with the WIPO as well. The application has to be filed in the language which is the same as for the jurisdiction where one lives or wants the patent, the translation is done at the time of the international phase.
• The filing fees have to be given to the receiving officer after the preliminary applications have been filed. There are various ways through which payment can be made to WIPO. The options for the payments are:

1. Opening a Current Account at WIPO
2. Debit and Credit Card
3. PayPal
4. Sofort
5. Bank or Postal Transfer

Step 2: International Search

• The next step is conducting the Patent Search which is conducted by an International Authority called International Searching Authority. The search is done for the prior art and pre-existing patents about the invention and also fulfilling other requirements.
• With this search comes to an end a written opinion is also given providing the scope of an invention. It also provides whether the patent will be published or not. It also lays down all the costs that can be incurred for the patent to be filed.
• Article 16 of PCT states that in case the International Searching Authority finds any prior art and facilities for documentation purposes and if the national laws of the contracting states permit such a thing. The applicants can also obtain a search similar to an international search for those of the national states.
• By Article 16(3)(A), the ISA is appointed by the national assembly which is done with the consent of the receiving officer or the International Bureau.
• Article 17 provides that the ISA has to follow a certain procedure. The search cannot be undertaken in case the international application pertains to a topic that does not require a search or the application does not meet the PCT requirements in any form.
• Article 18 says that the report will be prepared in a specific way in a period. The report will be given to the International Bureau and translated into the language as needed.
• Article 19 says that an amendment can be made to the application after the search is completed. The International Bureau also provides statements for the amendments to be made.

Step 3: International Publication

• The next step is publication of the application by the WIPO. It is done after 18 months in the language which is permitted by PCT. In case there have been 28 months and no publication has been made, then a third party can file the observations about the application as per Article 21.
• Article 29 provides that the applicant will be given protection by the international publication as per the laws of states that have been a part of the contract. The state is also allowed to publish the publication by translating and making it public.
• Article 27 provides a list of the national requirements, indicating that the states are not required to meet any additional standards beyond the international ones. The states can require documents such as signatures, confirmations, and evidence of elements included in the international application that were not included in it.

Step 4: Supplementary international search (optional)

This step is optional, in case of the inventors request a second ISA is set up. It is carried as there is diversity in priority SRT in different languages and technical fields as well.

Step 5: International Preliminary Examination (optional)

• This step is not a requirement as per PCT but an option available on behalf of the applicant. It is done by an international preliminary examining authority to get the opinions and reports that are not binding. It is done to give a chance to the applicants for evaluating whether a patent would be given to them or not.
• The examination done is called Demand, assisting in checking the possibilities for patents before incurring the expenses and moving towards the national phase. This has to be filed within a certain period with the associated fees along with the response from WIPO.
• This examination can be demanded under Article 31.  Article 33 provides the objectives that this examination which serves as a purpose of the preliminary enquiries. Article 34 gives the procedure to be followed by the applicant for the preliminary examination.

Step 6: National Phase

This step is initiated 30 months after the filing of the application has been made. The applicants can obtain patents in the national or regional phases of the relevant nations. The patent will not be filed in that nation in case the applicant is unable to complete the national phase due to any reasons within the time frame that has been specified by the national legislation of the country.

Comparison of Paris Convention and PCT

	Paris Convention	Patent Corporation Treaty
	In this convention, separate applications are to be filed for all the countries in which the patent is being asked for within 12 months	Under this, one single application has to be filed to have a patent in all the contracting states
2.	The formality requirements of all the contracting states have to be adhered to.	The PCT has formalities like the search reports and preliminary requirements which are the same for all states but if the patents are to be filed at the national phase, the standards for each state have to be fulfilled.
3.	The duration of this convention is 12 months.	It allows the applicant to prepare for a national phase at the time of international applications for 18 months
4.	The convention can be very stressful and costly as one must file for patents in every nation,	It is a cost-effective method making it a more economical way to file foreign patents.

Conclusion 

Paris Convention and Patent Corporation Treaty were formed with the motive of helping the innovators with getting the patents on the international level. The PCT is an innovative step in international patent filing and will provide a straightforward way to obtain foreign utility patents, which can be a little challenging to acquire. The PCT system has undergone several changes, and new ones are added annually as well. The PCT’s main goal is to make it easier to file applications and to easily manage national phase applications.

Frequently Asked Questions

Q1. What is PCT?

Ans1. PCT stands for Patent Corporation Treaty. It is an international treaty that helps in filing a patent application which is applicable in various countries through one application only. 

Q2. What is the Paris Convention?

Ans2. The Paris Convention is one of the treaties which was signed for intellectual property protection. It applies to all intellectual properties like industrial designs, patents, trademarks, and geographical indications. The total number of signatories is 177. 

Q3. When was the Paris Convention signed?

Ans3. The Paris Convention was signed in Paris, France on 20^th March 1883.

Q4. When was PCT signed?

Ans4.  It was signed in 1970 in Washington, United States, and came into effect on 24 January 1978

Q5. What are the categories under the Paris Convention?

Ans5. The convention falls into 3 main categories  which are:

1. National treatment
2. Right of Priority
3. Common Rules

Q6. What is the Full Form of WIPO? 

Ans6. WIPO stands for World Intellectual Property Rights.

Q7. When does the national phase start in PCT?

Ans7. It is initiated 30 months after the filing of the application has been made.

Q8. What is the main difference between PCT and The Paris Convention?

Ans8.  Paris Convention covers a broad range of IP rights, including patents, trademarks, industrial designs, and unfair competition and PCT provides the basis for international protection of these rights through national treatment and priority rights.

Q9. Who conducts the international search in PCT?

Ans9. The Patent Search is conducted by an International Authority called the International Searching Authority. 

Q10. What is Demand under PCT?

Ans10. The Demand is the exam which is the  International Preliminary Examination which is an optional step.