In this blogpost, Janaki Sincro, Company Secretary in Practice and a student of the Diploma in Entrepreneurship Administration and Business Laws by NUJS, Kolkata, writes about the Patent Cooperation Treaty and its impact on Indian IPR regime.
Suppose you are an inventor who has invented a unique process by which you can extract the scent of flowers and fruits and preserve it, to be turned into natural fragrances and perfumes. Or you have invented a technique for the human brain, which when followed step by step can make the human brain work at 100% capacity thereby making him/her super human! These are processes which are new, involving an inventive step[1] and capable of industrial application and these can be patented in India[2].
Although the word “Patent” needs no introduction today, very few might be aware of its humble beginning. Some form of patent rights were recognized in ancient Greece (current day Italy) where the Monarch rewarded inventors. But the systematic granting of patents started in the year 1450 in Venice in the field of glass making. The current system used for patenting is French and was created during 1971 Revolution. Back home in India, the first legislation on Patents was made in the year 1856. This was based on the British Patent law. Later, Indian Patents and Designs Act, 1911 was enacted. The current legislation on Patents “The Patent Act 1970” has been amended several times in 1999, 2002 and 2005 to meet its International obligations under TRIPS.
Each country has its law on Intellectual Property (IP) and its processes which make them territorially limited. For an example: computer programs and software cannot be patented in India (they can only be copyrighted), but these can be ‘patented’ in the US.
Getting a product patented in one jurisdiction gets protection only in that jurisdiction/country. Since the economies world over are liberalized a need was felt for international protection.
WIPO is trying to do away with this lacuna, with the help of its facilitating treaty called the “Patent Co-operation Treaty” (PCT), a special agreement under the Paris Convention. PCT makes it possible for an Inventor residing in one of its contracting nations to seek protection for his invention under multiple jurisdictions with a single application which is called the “International patent application.” Thus PCT has ushered an era of international cooperation. Currently, PCT has 150 contracting States. The date on which each of these States has signed the treaty is the date of which they become bound by the agreement under this treaty. It is important to understand that PCT does not provide for the grant of international patents, it only provides for filing, searching, and examination and giving of technical information. The grant of patents remains with the local/national patent office. It is now very easy to search over 45 million patents filed under PCT- thanks to WIPO.[3] PCT is in conformity with TRIPS agreement and both these provisions apply to WTO members.
Criteria for granting Patent under PCT:
- Novelty
- Inventive study
- Industrial applicability
Objective of PCT:
- To provide for an economical, simplified, accelerated and effective process for international patent protection.
- Contribution to the progress of science and technology.
- Offer solutions and options to Inventors to evaluate the chances of protecting the invention before major costs in foreign countries are incurred.
Advantages of PCT:
- Multi-jurisdictional protection and more informed decision- It brings the world within reach.
- The uniform procedure which provides a strong basis for patenting decisions that leads to uniform progress throughout the world due to exposure and use of better and appropriate technology.
- Saves cost, time and work of making multiple applications.
- Expenses related to national patent granting procedure are postponed by almost 18 months.
- It improves the country’s status in the area of Intellectual Property worldwide.
- It generates foreign exchange through exports.
- PCT system is more revised and updated and flexible than the local Patent procedures, and the information dissemination through the web is easily accessible for corporations and individual applicants alike.
- PCT search reports also help national patent office in its administration.
Disadvantages:
- All the applications and procedures are in English and non –English speaking countries need a translation of the PCT Application into their official language, if not done by experts it can lead to confusions in the future. This has led to a large number of ‘Agents’ who demand hefty fees for such services.
- The International application is more expensive than the local patent application.
- Due to differences in national patent laws, full implementation of PCT is not possible.
- There is a duplication of work at international level (PCT) and national level as both the offices carry out their search and examination reports and other procedures.
- Many multilateral treaties put developing nations in a weaker position and PCT is no exception to that rule. Due to higher technical developments in developed countries, they have a higher chance of patenting the next generation of research and developing nations will then have to spend a significant amount of money on paying royalties to the developed nations to use these technologies.
The PCT System[4] is explained in the following picture:
Timelines under PCT:
IP in India:
According to studies and statistics, PCT filings have increased by almost 70%; In India, there has been over 102% increases in PCT applications. The study shows that almost 86% international applications originated from developing countries and especially from Asia Pacific region.
India acceded to the Paris Convention for the Protection of Industrial Property in December 1998. Currently, there are more PCT applications from India than from National patent offices. India’s stand on PCT has been to keep a balance between the applicant, government, and other interested parties. India always rules for ‘benefit for all’ rather than taking the approach of ‘benefit of one.’ Perhaps it is due to this stand that the Intellectual Property environment in India is considered to be one of the worst as per 2014 Index made by US Chamber of Commerce’s Global Intellectual Property Center. A landmark Supreme Court (SC) judgment on this point is Novartis v. Union of India and Others[5] , in which the SC upheld the Indian patent office’s rejection of the patent application, filed by Novartis in the year 1998 which sought to patent ‘Gleevec’[6]. Novartis also applied for Exclusive Marketing Rights for Gleevec and obtained orders against generic manufacturers who had launched Gleevec in India and were priced economically to suit the Indian market as against the monopolistic pricing of Novartis.
Conclusion:
In my opinion, innovation has to be balanced with affordability and public good takes precedence over profits made by corporations. PCT is an easy procedure for innovators, but it should not be used in order to take undue advantage of weaker parties. India, with its large population, is providing the entire world with a market for its goods. Indian industries too have got competitive and technologically advanced. In such times, if India has to keep paying a high price in the form of royalties, then the rich will keep getting richer. India must make laws that suit it, just like the US makes laws that suit it.
Footnotes:
[1] “Inventive step” is a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. Section 2 (ja) of the Patents Act 1970
[2] Section 2 (j) of the Patents Act 1970
[3] https://patentscope.wipo.int/search/en/structuredSearch.jsf
[4] http://www.wipo.int/http://www.ipindia.nic.in/eLearning/PCT_filing_26December2014.pdf
[5] Civil Appeal No. 2706-2716 of 2013
[6] Gleevec is a specific salt – imatinib mesylate used in the treatment of Cancer.
The post Patent Cooperation Treaty and its impact on Indian IPR regime appeared first on iPleaders.