Patent applicants opt for foreign patent filing under the Paris Convention for countries where international patent applications are filed within 12 months from the priority date. The filing date of first patent application forms the earliest priority date.
Acquiring an “international patent” is an answer for some issues that as of now neglects to exist in the present world. At the end of the day, there is no single world association that will furnish patent rights to all nations with a single patent application. Owning a patent to one’s advancement is a costly procedure particularly with regards to acquiring the patent in various wards or jurisdictions of the world. The nearest answer of a worldwide patent is to document an international patent application through the Patent Cooperation Treaty (PCT) and the Paris Convention to occupants or nationals of all part nations or contracting states buying into the PCT and Paris Convention.
Also known as direct filing, the International treaty of the Paris Convention enables the candidates to document the application in their nation of origin first as the domestic patent application. It very well may be considered as an option in contrast to the PCT patent application. The application for the patent is known as the “priority document” and the date on which the equivalent is documented is known as the “priority date”.
The patent priority document referenced above is filed with the first filing and one or more additional patent applications are subsequently filed under the Paris Convention based on this priority patent document. The degree that the content of the Paris Convention application is uncovered in the previous priority document, it will be predated to the priority date. In use, direct patent recording or direct patent filing is just an alternative when the candidate needs to secure his/her development or invention in the non-PCT nations, for example, Argentina, Taiwan or Venezuela.
The advantage of acquiring patent through the method for the Paris Convention is that the 12-months convention period enables the candidate to look for funding, perform statistical surveying and transform a thought into a business item. These should be possible after a solitary documenting without jeopardizing lost rights in different nations. Expansion to this is, recording a patent under the Paris Convention is more pocket-friendly that documenting a patent under PCT.
PCT patent application process is best understood as a global patent filing mechanism. Filing of any type of intellectual property rights whether patent applications, trademarks or industrial design application has its own set of law and rules applicable to the treaty member countries. The full form of PCT is patent corporation treaty and another treaty is Paris Convention Treaty.
Prosecuting the same patent application in multiple countries can be challenging and daunting task for the patent applicant. For example, voluntary amendment of patent claims was not allowed earlier. However, now one has the option to delete the number of patent claims while entering India under the national phase via the PCT route. Many a times, the deadline date for providing details related to prosecution of patent application in multiple countries is different. Filing of a national phase PCT patent in India can secure the intellectual property rights in Indian jurisdiction. In accordance with legal principles, without filing national phase PCT patent in India, the patent applicants cannot enforce their patent rights in India.
Indian patent law is stringent as far as the patent deadline dates are concerned. The deadline date to file the request for examination for patent cannot be extended under any circumstances. There have been multiple cases wherein it has been held that no application related to condoning the delay will be accepted in case said deadline to enter PCT national phase expires. Thereafter, the Request for Examination (RFE) has to filed mandatorily within 48 months from the first patent filing date or the earliest priority date.
As defined in the Indian Patents Act, the international filing date is the deemed date of filing the patent in India if the patent applicant enters the national phase in India by filing a PCT National Phase Application within thirty one months from the date of priority of the first patent application. Therefore, the international patent filing allows the claiming of priority from the date of filing of first patent application in the convention country. The patent filing before WIPO under PCT is a simple and cost effective procedure for the patent applicants who intend to protect their inventions in multiple countries.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.