A study of Patent system in India in the light of Patent Cooperation Treaty.

                                      A prerequisite to patentability is that the invention must be capable of some practical application or it must be of some purposes. In Indian Patent Act of 1970, Chapter II, Section 3, gives the various inventions which are not patentable. It means to say that, in Indian patent law, there is no separate head has been defined regarding what can be patented.

                                 This emphasizes the importance of the patent system. Although this principle remains constant, the phraseology used within the legislation of particular countries varies; for example, in the United States, patentable subject matter must be “useful,” whereas in the United Kingdom it must be capable of “industrial application”
    
                            Over the past 15 years or so, many countries have changed from “process” to “product” patenting, and we expect all WTO members to upgrade their patent laws within the next few years because, under the WTO-TRIPS Agreement, member states must provide full product patent protection no later than January 1, 2005
    Not only, the utilitarian aspects of new and useful inventions patentable, but many countries extend patent protection to novel, ornamental industrial designs. In the United States, this form of protection is known as a design patent, while in many European countries, the property right in an industrial design is referred to as a design model.
                                         In addition to such usual subjects of patent protection as devices, chemical compositions, and processes, some countries provide patent protection for living matter. For example, a sexually reproduced varieties of plants, excluding bacteria, uncultured plants, and tuber propagated plants, can be protected, as can sexually reproduced plants (by seed), excluding bacterial, fungi, and first-generation hybrids. The TRIPS Agreement does not require protection for new living matter or plant varieties, but WTO members may join the International Union for the Protection of New Varieties of Plants, or UPOV

               Issues which has been discussing in this project are as follows:

• Meaning of Patent Cooperation Treaty?
• Is there any need for PCT in the Indian context?
• Is PCT system really giving boost to Indian inventors?
• Nature of PCT in the Indian scenario that is whether it is perplexed or easy to understand?
• How PCT helpful for the Indian Patent System?
• Various statistics?
• International Search Report, a critical analysis?
• Suggestions
• Conclusion.

What is Patent Cooperation Treaty?

                                       In the common parlance, TRIPS requires that patents must be available for any invention in all fields of technology without discrimination as to the place of invention. TRIPS require that the patent procurement procedure permits the granting of patents within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection. But the increase in the patent application could pose difficulties to comply with the TRIPS requirement.

                                       Patent Cooperation Treaty (herein after referred to as PCT) is administered by the Geneva based agency World Intellectual Property Organisation ("WIPO"), which was established in 1967 and sign in 1970 and finally it became operational on  June 1, 1978. Its preamble states clearly that PCT is intended to help the economic development of developing countries by giving a boost to the flow of technology.India became a PCT Contracting state on December 7, 1998. Patent Cooperation Treaty is another international Agreements besides TRIPS, Paris Convention and Patent Law Treaty. PCT has been acquired the global reputation due to their large number of member states. As it has been already mention that PCT wants to help the developing countries, now the question arise, whether its really helps those countries? Researcher has deal this particular question in the later stage of the project..

Right now, we discuss in brief, What is PCT?

                                            The  PCT system is a patent "filing" system and not a patent "granting" system. There is no "PCT patent." The PCT system provides for an international phase comprising filing of the international application, international search, international publication and international preliminary examination, and a national/regional phase before designated offices. The decision to grant patents in the national phase is taken exclusively by national or regional offices.

                                         Only inventions can be protected by the PCT by applying for patents, utility models and similar titles. Design and trademark protection cannot be obtained via the PCT. So it is clear that, only the patent application has been filed through PCT. Thus PCT is essentially a patent filing procedure with some elements of a patent examination procedure.

                                       PCT Article 1 states the very purpose of the PCT as “cooperation in the filing, searching and examining, of applications for the protection of inventions, and for rendering special technical services”. Before the PCT came into operation, the application for the same invention had to be filed individually at each Office according to their own national rules and regulation. So it is clear that PCT allows for the filing of an application and each designate state can file single application, which is called ‘International Application’  or in other words PCT application. In other terminology, PCT facilitates the inventor to file the application in other states through the single application. PCT has doing a tremendous efforts to reduce the work load and trying to simplify the filing procedure. No doubt, this is  one of the advantages of the PCT.

                                       While process the application, PCT has to follow their own procedures, meaning thereby, the application which has been filed will be subject to ‘Mandatory International Search’  and if the applicants has enough capable from their pocket, then they opted for ‘International Preliminary Examination’ before PCT application will be further proceed or processed.

                                  If we analyze the procedure of filing of PCT application, then the application procedure consists of two phases, which are as follows; A singular international phase where the PCT application is processed by WIPO and certain international authorities, this is followed by national phase proceedings before each designated national or regional office.

                                     The International Phase has been controlled, governed and administered by the WIPO, but the national phase is not binding by the provisions of WIPO. The only binding provisions of the PCT are that the application which has been filed through  the PCT have the effect of a regular nationl application, that is mean to say that, the content and the procedures of the application of the form has the binding provision which has been valid in the national phase. No other PCT requirements or procedure has any implementing authority which can bind the contracting states at national level. So it is understood that PCT is consider as a good piece of legislation and mainly a patent filing procedure and have the qualification of doing the patent examination. Therefore, PCT contains no characterstics of GRANTING PATENT or their enforcement.

Is there any need for PCT in Indian context?

                                                Our country is one of the poor country in respect of Research and Development and this is because of  mainly we don’t have sufficient resources to invest on R&D. Nowadays, this trend is changing and our industry has also showing their

interest to crop up in the field of R&D. As in relation of Indian context, the PCT is beneficial or not, can be measured by after doing the comparative study of ‘traditional system of filing’ and the ‘filing through PCT’. The traditional patent system requires lot of formalities, cumbersome procedures and time consuming, meaning there by, if the applicant want to file the application in other country other than the home country, then the inventor has to file the different patent applications for each country for which patent protection has been sought. The applicant has to do a hectic job and too many expenses, if he wants to file the patent application through traditional systems. The applicant has to bear the expenses of the Attorney of other country, the translation fees, and ofcourse the payment of fees to the patent office. If we assume that, the applicant has the capacity to do all these work without tension and worry, but the question arises regarding the granting of the patent. Meaning there by, after doing all hectic work, it is not sure that he will get the patent protection because it totally depends on the country to country. So if the applicant’s invention is not new compared with the state of the art, then that particular country has the power to refuse to grant the patent, and applicant has loss all the sweat money and every thing (precious time, handle the cumbersome procedures etc.) been gone into vain. Therefore there is no guarantee of granting the patent, it’s wholly and solely depends on the patent office desertion. Inorder to come out with the hectic and cumbersome procedure of the traditional system of filing, PCT came into force. At the time of formation, there were only 18 contracting states has become the member of the treaty, but now there are 123 contracting states existed which showed the tremendous popularity of the treaty. Now after the incorporation of PCT, traditional system has become almost obsolete and now every country has to file the patent application through the PCT because of following reasons;

• No multiple formalities needed, meaning there by, one set of formality requirements.
• International Search: This is one of the major facilities provided by the PCT. In traditional system, there were no concept of this type of search, that is, in every country; searches took place which needs lot of resources and time.
• International Publication: Only one publication required which is called International Publication comparison with multiple publications in the traditional system.
• International Preliminary Examination:
• International application can be put in order before national phase

                               As researcher already cult out the various advantages of the patent filing procedure through the route of PCT, now the important question arises whether this route has any significance or there is any need in the relation of Indian context?

Before jump to any conclusion, let’s verify some of the points by keeping the Indian context in a backdrop and then come out with some tentative conclusion. Suppose any one of them asked the question to any inventor that ‘do you want to protect your invention in multiple countries’? Most probably, the answer could be in positive because of the simple reason that who is the person who do not want to protect the invention every where. Every one wants to protect their invention in every part of the globe with the condition that they will get the opportunity. And this opportunity has been provided by the PCT. Now the people have the chance to protect the invention in various countries if they file their application through the route of PCT. Now assume that, if the same above question has been asked before the PCT came into force, then in the researcher’s opinion, the answer might be the negative because of too many reasons. Before the PCT came into operation, the procedures to file the application in other countries are considered as a burdensome procedure. There were too many formalities and drawbacks had been survived, due to various formalities, very few were there who generally took their chances. But now PCT has given the chance for Indian inventors to protect their skill out of the country also. Now the procedure is not so difficult like it was before.

                                            By filing only one application under PCT and designating any or all of the PCT contracting states, an inventor can all together seek patent protection for an invention in each of a large number of countries. So it’s a boost for Indian inventors that by filing only one application through the route of PCT, they can protect their invention in rest of all the PCT contracting states. One more important thing is that nothing will compel them to apply in all the states, it’s totally depends on the wishes of the inventors.

                                           If the inventor has prepared to file the International application under PCT then inventor should consider that the ‘international search report’ which they will normally receive a few months after filing PCT application. As it already stated that if the inventor has sufficient resources then they opt for the ‘international preliminary search’. The International Search Authority contains a list of documents which helps the inventors to know various prior art present in other countries. And this all happen only by filing one application, it’s really an amazing phenomena.

                                            Another advantage of PCT filing is that the inventor can file an International Application with national patent office which will be appointed by PCT authorities and will act as PCT ‘receiving office’. This will save the time, and also postal formalities too.

                                            Now if researcher has to assume the situation where the India is not the contracting state of PCT, then what will happen? The answer is simple that Indian inventors could not take the advantage of the PCT system. The reason is very simple because if any one of the inventor of any country has to file the International Patent Application then they must be national or resident of one of the PCT contracting states. In the researcher’s opinion, the main thing which almost all the developing nation wanted is economical satisfaction (relation with the expenses). If the filing of International Patent Application is very expensive then, it’s not possible to file by the inventor who is not economically sound and in our country where the income is not like of any developed countries, so it’s not possible to bear the heavy cost. But in this regard also, PCT has given the benefit and they try to minimize the cost as much as possible. As it is well known to everyone that International Patent Application is effective in all designated PCT contracting states, inventor is not suppose to incur the costs that would arise in the case where inventor prepared and filed separate applications for all those states but the inventor has to pay only a single set of fees for filing the International Patent Application with the receiving office. There is also a procedure in the PCT system where the applicant who is a natural person and who is the national of and resides in a state whose per capita income is below 3000 US dollars is entitled to get the reduction of 75% of certain fees, including the international fees. Therefore there is no hesitation to say that PCT system is showered with many advantages and it facilitates the inventor to file the international application by all means. So in the researcher’s view, PCT system is needed for the country like India and its make the future better of our inventors. PCT also encourage the inventor to come out with more and many new inventions because PCT guaranteed to file the Patent Application.

Is PCT system really giving boost to Indian inventors?

                                      Earlier there was a movement called ‘Publish or Perish’ but now the tradition has been changed to ‘Patent or Perish’. This movement itself shows the awareness of the inventors to take the patent protection for their invention.  Now the question arises, is PCT system give boost to Indian inventors? The various merits of this system have already been discussed above. In the researcher’s view, PCT is considered as the boon for the Indian inventors. The system is so beneficial that any one can get the protection in more than one country only by filing the one application. This system has increase the curiosity of the inventors can be easily understand by analyzing the statistics of the application which has been filed during the particular period. If we look the number of International Application received by WIPO under the International filing system, the application has been exceeded the 100000 mark in the single year ,i.e., nearly 115000 application were filed worldwide under PCT in the year 2002, which representing 10% increase in the Previous Year. The surprising factor was that, in the year 2002 itself, the application from developing countries rose from 680 in 1997 to 5359 in 2002 and the most astonished factor was that the highest percentage increase by developing countries were recorded by India i.e. 51.9%. The following statistics give the proof that this system has given encouragement and enthusiasm to the developing countries especially for India because maximum increase recorded by an Indians only. In the year 2001, the PCT has created the history because in this year the number of application has been touched the mark of 100000, which was the maximum in 23 years of PCT history. But the main beneficial of this system are developed countries because of the availability of the resources. For the 12th consecutive year, inventors and the industry from USA, Germany, UK, France, topped the list of biggest users of the system. Now the developing countries are enough self sufficient and they want to preserve their Intellectual property resources and for that the PCT system is the best route to protect the inventions in various places. India is and will remain to be the one of the countries where the high technology information companies should seriously keep on thinking regarding how to allocate the Intellectual Property resources. One of the reasons why PCT attracts the developing countries like India to file applications through the route of PCT is because of its flexible procedure. The PCT offers applicant upto 18 months more time then they would have the traditional patent system to decide whether and for which countries they wish to pursue patent protection.

                             One more advantage for developing countries to file the application through PCT is that PCT give the option to the inventors to file the patent in other countries. If there were no PCT exists, then the only option about filing in foreign countries will be provided by the Paris convention, where the inventor has forced to take the decision within one year after filing the application in one country. But, PCT application showed the way where the time can be extended to make a decision to file the application in foreign countries. Meaning there by, by filing the PCT application, the applicant can postpone the decision for 20 months to decide whether they want to spend the money for foreign patent filings.Thus the PCT process is helpful to those who don't have enough money to file in several countries, but who expect to have enough money at a later time. Therefore, this kind of facilities is what the developing countries wanted and PCT is quite successful in their efforts. A PCT application provides a convenient way to keep the options open for developing countries and decide with all calculations whether they want to file application in other countries or not. After a long discussion in relation with this issue that is whether PCT give boost to Indian investors? In this regard, the researcher’s humble submission is in affirmative way.

Nature of PCT in the Indian scenario that is whether it is perplexed or easy to understand?

It is true that, the procedure and the working system is not easy to understand for the developing countries where the awareness is not up to the mark. The PCT procedure is different from other system and the officials are keeping on conducting the awareness seminars, so that everyone becomes familiar with the procedure. There are lots of formalities and doubt has been existed, which are as follows;

• the period for making the decisions relating to file the applications abroad,
• fees structure which includes the transmittal fees, search fee etc
•  possibly some hidden fees which can be come out only at the time of transactions,
• regarding the amendment in the claims and their procedure,
• Impact of ISA, what is the guarantee of the search report and so on and so forth.

                                   

                                        These above are the few queries which can be create doubt in the mind of applicant and force them to think that the system is perplexed and expensive. But PCT is trying there level best to simplify the procedure by introducing various methods such as responding via e-mail, conduct the seminars, introducing new software, update the website, and so on. To make the filing procedure simpler, the PCT-EASY (Electronis Application System) was designed and this done only with the intention to facilitate the preparation of the request form, and the main purpose of this software is to assist applicants in preparing the PCT requesting forms. But, recently i.e. as of January 1,2004, the PCT-EASY software will be included as part of the PCT-SAFE (Secured Application Filed Electronically) functionality which will continue to exist, this new software will allow for the filing of international applications electronically. This all the developments only done because of only sole purpose that is to provide easy procedure to the applicants which helps them to file the application easily and without any difficulty. But, according to the researcher’s opinion, this all facilities or the development is beneficial to the Patent Attorney because in most of the cases the applicant will transfer their responsibility on the shoulder of the Attorneys. But, the applicants who do not have enough money to pay the Attorneys fees, they can utilize this type of facilities and file the application by their own. Therefore, the PCT system is quite a bit complex but not too much and if some complexity will exist then it will be compensated by the various advantages of the PCT.

Various Statistics

International Search Authority

 

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