INTERNATIONAL PATENT
INTERNATIONAL PATENT APPLICATION
Generally, If a businessman filed the application for patent, the patent which typically protects the registered goods inside India (within the jurisdiction). If he plans to expand his business into the international global markets with the foreign companies or individually, at the same time protecting the intellectual property of his business is complex to him. For safeguarding his business intellectual assert. He must register their products under the international patent. It allows the patent protection in multiple countries by filing a single application. Every businessman who is willing to carry their business in multiple countries is required to file the international patents for carrying our smooth business without the controversies.
WHY TO FILE INTERNATIONAL PATENT ?
Filing an international patent provides a comprehensive and efficient way to secure protection for your invention on a global scale, offering strategic advantages in terms of cost, time, and market access.
Advantages :
Simultaneous Protection in Multiple Countries :
The International patent application is a best way to seek the patent protection for your invention in multiple counties around the world through a single filing process. It is established by the Patent Cooperation Treaty (PCT), an international agreement with over 150 member countries. It is one of the cheapest processes rather than filing the application in each country.
Global Market Access:
International patent protection enhances your ability to market and commercialize your invention globally. It can act as a deterrent to potential infringers and enhance the value of your intellectual property in the international marketplace.
Unified Application Process:
The PCT allows for a unified application process, streamlining administrative procedures and reducing the need to navigate the complexities of individual national patent systems at the initial filing stage.
International Search Report (ISR):
An international search is conducted as part of the PCT process, resulting in an International Search Report (ISR). This report provides a preliminary assessment of the patentability of the invention, helping applicants make informed decisions about pursuing patent protection in specific countries.
International Preliminary Examination (IPE):
The PCT system allows for an optional International Preliminary Examination (IPE), which provides a more in-depth examination of the patentability of the invention. The IPE results can be useful in the national phase and can be shared with national patent offices.
Cost Savings and Efficiency:
Filing an international patent application can be more cost-effective than filing separate applications in multiple countries. It allows applicants to defer the costs associated with national phase entry until they have a clearer understanding of the patentability and commercial potential of the invention.
Delaying Decision on National Phase Entry:
The PCT system provides flexibility by allowing applicants to delay the decision on entering the national phase in specific countries, giving them more time to assess the commercial viability of their invention.
As per Section 39 of the Patent Act :
According to Section 39 of the patent act which deals with the person who resides in India needs a written permit letter from the Controller of the patent before making the application for filing the patent outside India. If the person failed to fulfill the requirement conditions, the application for the patent under the Act shall be deemed to be abandoned under section 40 of the act. So every applicant who is willing to file their patents in a foreign country requires the mandatory criteria of obtaining the written permit from the Controller of Patent in India.
By filing a Patent Application in India, do we get protection internationally? If not, what is the procedure to get international patent registration?
We file patent applications to protect our inventions from Copying by others. But patents granted in India are protected only in our Country as it is jurisdiction specific in nature. Hence, International patent helps the applicant to protect their invention in foreign countries too. This is why we need to file an International Patent Application.
There are two ways for obtaining international patent protection. They are,
- Convention Patent Application and
- Patent Cooperation Treaty Application.
WHAT IS PATENT COOPERATION TREATY?
Patent Cooperation Treaty shortly called as PCT. This PCT Application makes it possible for getting protection for a patent simultaneously in each of a large number of countries by way of filing a single International Patent Application instead of filing several separate national or regional patent applications.
This PCT Application can be filed by anyone who is a citizen of a Patent Cooperation Treaty’s Contracting State. This PCT application shall be filed through the Indian Patent Office.
Procedure for filing PCT Application
Step 1: Filing of international application in a Receiving Office (RO): As a first step, a patent application should have been filed in India. (There are totally two phases in PCT filing – the international phase and the national phase.)
Step 2: International phase: Within 12 months from the date of filing a patent application in India, the PCT application must be filed, mentioning the countries in which protection is required.
Step 3: International Search by an International Searching Authority (ISA): The registry shall provide an International Patent search report and along with that a detailed opinion on patentability shall also be provided within 4 months.
Step 4: This PCT application will be published after 18 months of filing the Indian patent application.
Step 5: International Preliminary Examination by an International Preliminary Examining Authority (IPEA): The international preliminary examining authority shall issue an international preliminary examination report.
Step 6: National phase: Next is that, the Patent applications in each of the designated countries should be filed within 31 months of filing the Indian patent application.
Step 7: The Patent grant will be granted by the respective national patent offices of each country after the applicant complies with their national requirements.
Is there a deadline to file a PCT Application?
- The PCT International Phase Application to be filed directly within the 12-month period from the filing date of filing the Indian patent application.
- The PCT National Phase applications in each of the designated countries should be filed within 31 months of filing the Indian patent application.
WHAT IS CONVENTION APPLICATION?
A convention patent application is an application filed to establish a priority date for an invention under the Paris Convention for the Protection of Industrial Property. The Paris Convention is an international treaty that facilitates the protection of intellectual property rights among member countries. India is a signatory of the Paris Convention, hence by that a foreign applicant can file a convention application in India. A Foreign patent applicant can claim the benefits of Paris Convention and can file a patent in India by claiming priority from an already filed international patent application. If a foreign applicant wants to get the convention status, he needs to file the application before Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country
Convention patent filing:
1. Priority Right:
When an inventor files a convention patent application in one member country, they are granted a “priority right” for their invention. This means that if the inventor subsequently files patent applications for the same invention in other member countries within a specified time frame, those later applications will be treated as if they were filed on the same day as the first application.
The priority right is valuable because it establishes the earliest date on which the invention is disclosed to the public. This can be crucial in situations where multiple inventors or entities are working on similar inventions, as it determines who has the first right to the patent.
2. Time Frame for Filing:
The Paris Convention allows for a priority filing period of 12 months from the date of the first filing. During this period, the inventor can file corresponding patent applications in other member countries and enjoy the benefit of the original filing date.
3. Claiming Priority:
To claim priority, the inventor must file a patent application in a member country within 12 months of the first filing. When filing subsequent applications in other member countries, the inventor must indicate the priority application’s details, such as the filing date and country.
4. Uniformity of Treatment:
One of the key principles of the Paris Convention is the concept of “national treatment.” This means that a person from one member country is to be given the same treatment as a person from any other member country regarding the protection of intellectual property rights.
5. International Cooperation:
The Paris Convention fosters international cooperation in the protection of intellectual property by providing a framework for reciprocal recognition of rights.It simplifies the process for inventors to seek protection in multiple countries.
Convention patent applications are a fundamental aspect of the global patent system, allowing inventors to pursue protection for their inventions in multiple countries while maintaining a consistent priority date. The filing of convention patent applications is particularly common when utilizing the Patent Cooperation Treaty (PCT) system, which allows for a centralized international filing process.
PATENT APPLICATION DOCUMENTS :
A patent application shall include the following documents :
- A request for the grant of a patent;
- The description of the invention;
- Patent claims consisting of one or several claims;
- Drawings or other illustrative material referred to in the description of the invention or patent claims;
- An abstract of the subject matter of the invention.
The following documents shall be annexed to a patent application:
- Authorization document if filed through a patent agent.
- Documents proving the priority claim if claimed under the Paris Convention or a similar agreement, unless specified otherwise in the Patents Act.
- Certification of the deposit of a biological material, such as a microorganism strain, if the invention involves or requires it, and if the material is not publicly available or describable in the application.
- Documentation confirming payment of the state fee.
Language of documents
- The language used adheres to the Estonian Literary Standard.
- If foreign language documents are included, translations into Estonian must be submitted according to the Patents Act and related regulations.
Number of copies of documents
- Three copies each of the invention description, patent claims, and illustrations,
- Two copies of the invention’s abstract
- Other documents are submitted in a single copy.
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