National Law University, Jodhpur Subject- International Intellectual Property Second Assignment

LL.M. [IPR] 2013-14 Topic- ADVANTAGES OF PATENT COOPERATION TREATY (PCT)

Submitted To YOGESH A. PAI

Submitted By GOUTAM SURESH TAMPI ROLL NUMBER: 483 L.L.M. (IPR) 1ST SEMESTER NLU JODHPUR

ADVANTAGES OF PATENT COOPERATION TREATY

Introduction Patents are the Intellectual Property Right available for an inventor when his invention is novel, when it has an inventive step involved and if such invention is capable of being industrially applicable. These basic criteria for an invention to be inventive is provided in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). 1 The basic advantage of having Patent Right over ones invention is that the inventor can exclude others in the territory covered by Patent Protection from making, using, selling, offering for sale or importing the invention, for a fixed and limited period of years. The technology or invention becomes public property, as soon as the patent rights expire. Usual procedure for application of patent involves the applicant to first file an application in the country of his choice, where the concerned patent office will examine the application by making a detailed and thorough search to ascertain the novelty of the invention disclosed. The patent however, will be granted according to who is the first-to-file rule. But, there lacked a common platform to file patent for different countries together. The applicant had to apply to each country on his own, and had to pay in each country when applying for patent there. The main issue with regard to the traditional system is that expenses connected with the filing, processing, ascertaining the novelty of the invention in various countries individually and separately are high. Thus, there felt a need globally for an alternate system to not only simplifying the filing and processing procedure but also making the filing and processing cost cheap and affordable. Thus, the Patent Co-operation Treaty (hereinafter referred as PCT), 1970 came into existence. PCT was enforced on Enforced on 24th January 1978, but, became operational on 1st June 1978, with an initial 18 Contracting States. Now, there are 139 Contracting States who have adhered to the PCT as on April 2008. PCT came into force for India on 7 December, 1998. The treaty was subsequently amended in 1979, and modified in 1984 and 2001.2 The contracting states under PCT will form an International Patent Cooperation Union3 (Known as the Union) who will cooperate with each other for filing, searching and examining patent applications. Basic Working of PCT
Art. 27.1 of TRIPS Patent Cooperation Treaty (PCT), World Intellectual Property Organisation (WIPO), < http://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct.pdf>, (Last visited on October 20th, 2013) 3 Article 1, PCT
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Applicant must be a national or resident of a contracting state to PCT.4 Applicant under PCT, will file his International Application5 with request, description, drawings and claims along with the abstract before the Receiving Office6 in the prescribed language along with prescribed fees. This application is then subjected to an international search7 by an International Searching Authority (ISA)8 after which a written opinion is provided regarding patentability of the invention. If the applicant so desires, this would be followed by an international preliminary examination9 on his demand by an International Preliminary Examining Authority (IPEA).10 Finally, the relevant National or Regional Authorities depending on the Office designated by applicant called the Designated Office, will administer the examination of patent and may or may not grant patent. However, it is to be noted that PCT does not ensure that patent will be surely granted by the Designated Office. It depends on their Regional or National Laws and Policies. Main Advantages of PCT11 The following can be listed down as the main advantages of PCT: i. Single International Application in one language: PCT requires lesser effort, time and work than the traditional patent filing systems where Applicant has to apply to each country individually in different languages depending on that country, whereas, through PCT only single filing as an International Application in single language is required. ii. Single Payment of Fees in Single currency: Under PCT, only single payment of an initial set of fees is sufficient. The international fees payable in respect of the filing of an international application may be paid at one time, at one office and in one currency. The costs and possible complications connected with the payment, on

Article 9, PCT Article 3, PCT 6 Article 10, PCT 7 Article 15, PCT 8 Article 16, PCT 9 Article 31, PCT 10 Article 32 and 33, PCT 11 Based on: 1. PCT and its advantages, WIPO, <http://www.wipo.int/export/sites/www/pct/en/presentations/pct_overview_july2007.pdf>, (Last visited on October 20, 2013) 2. Usefulness of the PCT for Applicants, WIPO, < http://www.wipo.int/pct/en/guide/ip04.html>, (Last visited on October 20, 2013) 3. Dr. Ahuja, V.K., Law Relating to Intellectual Property Rights, Pg. 641, 642, (Lexis Nexis, Edn. 1, 2007)
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filing, of many fees in many countries, and generally in different currencies are thus avoided. iii. Application can be filed in a single place: The international application is filed in a single place. It is generally filed at the national Patent Office of the applicants country or at a regional Patent Office acting for the applicants country, or it may be filed direct with the International Bureau in its capacity as a receiving Office under the PCT. iv. Single form of Application: There is a prescribed form for the international application. If this form is be accepted by all designated offices for the purposes of the national phase, then there is no need to comply with a great variety of widely differing formal requirements in the many countries in which protection may be sought. And since this is a mandatory condition for all Contracting Countries, a single uniform form of Application is followed in all Contracting Countries of PCT. v. International Search and Preliminary Examination Reports along with supplemental International Search help in deciding whether to enter national phase and where to enter national phase: Applicant can decide based on Reports of International Search Report and International Preliminary Examination Report whether to apply for national phase and also, where they have to apply for national phase. Search Report lists out the citations of published documents that might affect the patentability of the invention claimed in the international application giving an option to Applicant to withdraw his application if content of report suggests that granting of patent is unlikely, or to amend the claims in the application. If the international search report and the written opinion are unfavourable and the applicant consequently decides not to proceed any further, he saves the cost of having the application processed in the various countries If the applicant so requests a supplementary international search may be carried out, by one or more of the participating International Searching Authorities other than the one which carried out the main international search. The supplementary international search report will provide the applicant with a more comprehensive overview of the relevant prior art and enable him to better assess his chances of obtaining patent protection for his invention. vi. Apply Online and Save money: E-filing helps in reducing extra-efforts and helps in saving money.

Conclusion With all these Advantages of PCT listed, certain Disadvantages in PCT12 should also be looked into. PCT provides only a platform to apply internationally for patents in different countries. PCT never grants an International Patent. PCT is a special agreement which is open only to States which are also party to the Paris Convention.13 If a person wishes to apply and if his country is not a party to PCT, he cannot apply under PCT. PCT requires national phase prosecution to complete patent grant. Designated Offices nd contracting states are not bound by Preliminary Examination Report of International Preliminary Examining Authority. This increases workload in patent offices, though PCTs objective also looks to reduce workload. There is no mechanism to ensure quality of search done internationally through PCT. A poor search will have disastrous effect on the applicant, and this will also increase workload of national offices. Length of time allowed between filing a priority application and commencing national phase processing provides a long period of uncertainty for third parties along with lack of a central searchable database that provides third parties with information regarding national phase entry only increases the problem. However, with all above problems and advantages discussed, PCT through systems of ISR and IPER seeks to eliminate duplication of work for applicants and nationally. But, with PCT alone, harmonization for Patent Application system would not work out. With adequate changes addressing the disadvantages above mention for PCT and more Application Level International and National Laws, the problem faced by Intellectual Property offices can be overcome.

12Mohanty,

Nalini, Kanta, The Advantages/ Disadvantages of the Harmonization of the Patent System , < http://www.ipindia.nic.in/research_studies/mohanty_report_oct_mar_2008.pdf>, (Last visited on October 20th, 2013)
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BIBLIOGRAPHY: 1. Patent Cooperation Treaty (PCT), World Intellectual Property Organisation (WIPO), < http://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct.pdf>, (Last visited on October 20th, 2013) 2. WIPO, PCT and its advantages, <http://www.wipo.int/export/sites/www/pct/en/presentations/pct_overview_july200 7.pdf>, (Last visited on October 20, 2013) 3. WIPO, Usefulness of the PCT for Applicants, < http://www.wipo.int/pct/en/guide/ip04.html>, (Last visited on October 20, 2013) 4. Dr. Ahuja, V.K., Law Relating to Intellectual Property Rights, Pg. 641, 642, (Lexis Nexis, Edn. 1, 2007) 5. Mohanty, Nalini, Kanta, The Advantages/ Disadvantages of the Harmonization of the Patent System, < http://www.ipindia.nic.in/research_studies/mohanty_report_oct_mar_2008.pdf>, (Last visited on October 20th, 2013)