IPR COMPENSATORY ASSIGNMENT

Topic: A study of patent system in India in the light

of the Patent Cooperation Treaty.

Submitted by,
Gouri. Suresh
5/8th

Submitted to,
Dr. Syam Kumar
 CONTENTS
Introduction Page no : 3
Historical evolution of Indian patent laws Page no : 5
Patent Cooperation Treaty Page no : 7
PCT Procedure Page no : 9
Role of PCT Page no : 11
National phase PCT application in India Page no : 14
Conclusion Page no : 18
Bibliography Page no : 19
 INTRODUCTION
In 1300s, the first person who found resources in Alps dictated property rights for
mining, timber and water. As competition progressed special privileges were granted
for useful creation. In 1409, the first patent was granted to a German for the
construction of a model mill. A monopoly by the British was not granted to sell playing
cards due to obviousness. The first English patent was granted for a period of 20 year
to John of Utnyam on making stained glass. Meanwhile, the French advanced the
system by registration and examination. In the US, a patent was granted for a grain
elevator ‘hopper boy’ to Oliver Evans.
In the Indian context, the act VI 1 on protection of inventions based on the British
patent law of 1852 was established. During this period certain privileges were granted
to inventors of new manufacturers for a period of 14 years. In 1859, the act was
modified as Act XV in which making, selling, using of inventions in India and
authorizing others to do so for 14 year date of filing the specifications. In 1872, the act
was re-named as the Patents and Design Protection Act, in 1883 as the Protection of
Inventions Act, in 1888 consolidated as The Inventions and Designs Act and in 1911
as The Indian Patents and Designs Act.
Treaty of Cooperative Patents deal is viewed as vital concerning arrangements for
recording licenses. The Patent Cooperation Treaty sets out a frame work that is set up
to help candidates who wish to document licenses and such enterprises. The Patent
Cooperation Treaty was proposed to keep away from the Humongous dreary and copy
work that should be done if an individual records licenses independently in every
country while following their public technique. The Patent Cooperation Treaty, or the

1
History of patent system, India: intellectual property India, ministry of commerce and Industry; c 2004-
2008 (cited 2008 Apr 2)
PCT as it is typically referred to, came into existence in 1970s. The Treaty, which like
any other Treaty is a legal agreement entered into between various countries.
This paper on the patent system in India will be analyzing the possible links between
Indian patent system and the PCT and more about the changes that came to Indian
Patent laws in the light of the PCT.
 HISTORICAL EVOLUTION OF PATENT LAWS IN INDIA
The historical evolution of Patent law could be tracked down since 1911, when Patent
and Designs acts were introduced. Inventions are the part of intellectual property that
are protected by the Patent laws, the current Patent act was introduced in the year
1972 which was amended numerous times and was modified with the ongoing
invention of technologies and the modern times. The legal amendments related to the
Patent and the Marketing rights are amended by the development and innovations
going on around the world day to changes and development is the reason behind such
amendments in law related to patents. The amendments in the sectors like food,
technology, chemicals and drugs and much more, have been introduced in the recent
past regarding the law in the patent field.
This act remained in force for about 24 years without any change till December 1994.
An ordinance effecting certain changes in the act was issued on 31 st December 1994,
which ceased to operate after 6 months. Subsequently another ordinance was issue in
1999. This ordinance was subsequently replaced by the Patents (Amendment) Act,
1999 that was brought into force retrospectively from 1st January, 1995. The amended
act provided for filing of applications for product patents in the areas of drugs,
pharmaceuticals and agro chemicals though such patents were not allowed. However,
such applications were to be examined only after 31-12-2004. Meanwhile, the
applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute
these products in India, subject to fulfilment of certain conditions.
The second amendment to the 1970 Act was made through the Patents (Amendment)
Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May 2003 with the
introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules,
1972
The third amendment to the Patents Act 1970 was introduced through the Patents
(Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later
replaced by the Patents (Amendment) Act 2005 (Act 15 of 2005) on 4th April, 2005
which was brought into force from 1-1-2005.
 PATENT COOPERATION TREATY
The Patent Cooperation Treaty (PCT) is an international treaty administered by the
World Intellectual Property Organization (WIPO). The PCT System makes it possible
to seek patent protection for an invention simultaneously in a large number of
countries by filing a single “international” patent application instead of filing several
separate national or regional patent applications. The PCT System comprises 151
Contracting states.

The granting of patents remains under the national or regional legislation of the
national or regional patent offices. It is called the “national phase”.

In the national phase, each patent office is responsible for processing the application
in accordance with its national patent laws, and for deciding whether to grant patent
protection. The time required for that processing varies across patent offices.

The Government of India acceded simultaneously to the Paris Convention for the
Protection of Industrial Property and the Patent Cooperation Treaty (PCT). Both
treaties became binding on India three months after the two instruments of accession
have been received at WIPO. This step benefitted the country's technological and
economic development and enhanced the international intellectual property
cooperation which WIPO promotes so actively.

The Paris Convention was one of the two basic intellectual property treaties
administered by WIPO, the other being the Berne Convention for the Protection of
Literary and Artistic Works of which India has been a member for a very long time.
The Paris Convention lays down basic principles primarily governing the protection
of patents, trademarks and industrial designs. India was the 151st country to be bound
by the Paris Convention. All the main trading nations of the world were already a party
to this Convention.

The PCT provides for the filing of a single international application in one language,
having effect in each of the countries party to the PCT which the applicant names in
his application for patent protection. All PCT international applications are processed
by the WIPO Secretariat in Geneva. The great advantage offered by the PCT is that it
simplifies procedures and reduces costs for owners of new inventions who apply for
patent protection in multiple countries. India was the 98th country to be bound by the
PCT.
 PCT PROCEDURE
 Filing
You file an international application with a national or regional patent Office
or WIPO, complying with the PCT formality requirements, in one language,
and you pay one set of fees.
 International Search
An “International Searching Authority” (ISA) (one of the world’s major patent
Offices) identifies the published patent documents and technical literature
(“prior art”) which may have an influence on whether your invention is
patentable, and establishes a written opinion on your invention’s potential
patentability.
 International Publication
As soon as possible after the expiration of 18 months from the earliest filing
date, the content of your international application is disclosed to the world.
 Supplementary International Search (optional)
A second ISA identifies, at your request, published documents which may
not have been found by the first ISA which carried out the main search
because of the diversity of prior art in different languages and different
technical fields.
 International Preliminary Examination (optional)
One of the ISAs at your request, carries out an additional patentability
analysis, usually on a version of your application which you have amended
in light of content of the written opinion.
 National Phase
After the end of the PCT procedure, usually at 30 months from the earliest
filing date of your initial application, from which you claim priority, you start
 to pursue the grant of your patents directly before the national (or regional)
patent Offices of the countries in which you want to obtain them.
After the end of the PCT procedure, either after international search or after
international preliminary examination and before 30/31 months from the priority
date, applications for the grant of patents can be filed before the national (or regional)
patent offices of the countries in which patent protection is desired.
 The filing procedure, fee and processing are as per the requirements of national
law relating to patents in each country.
 The filing date is the international filing date in all such countries
 For grant of patent in India, the applicant has to file a national phase application in
India before the expiry of 31 months from the priority date of the application.
 The international application as filed under the PCT is treated as corresponding
application in India.
The PCT is used by the world’s major corporations, research institutions, and
universities when they seek international patent protection. It is also used by small
and medium sized enterprises (SMEs) and individual inventors.
 ROLE OF PCT
Patent Cooperation Treaty brings out several benefits for the users of patent system
i.e., brings one application filing with one single language which in turn is valid in PCT
member countries, provides single time examination of the patent instead each
member country, provides international search rather than each country search so
that prior art can be easily judged in order to get a patent, provides international
publication of international publications with related international search reports,
bring down one single communication to all designated offices, provides any person
from the member country to file single opposition regarding the patentability of the
invention, provides uniform procedure and economical benefit to the inventor in all
mentioned aspects. In addition to these the main objective of PCT is to facilitate and
accelerate access by industries and other sectors to technical information relating to
inventions and to assist developing countries in gaining access to technology.

Recently, there have been a few changes made to improve the PCT system. The
changes are listed below:

 PATENTSCOPE
PATENTSCOPE gives a user free access to over 67 million patent documents in
addition to over 3.3 million PCT applications. It consists of the national patent
data collections of several patent offices. PATENTSCOPE features a number of
powerful tools, including cross-lingual and chemical compound search as well
as machine translation.
 WIPO Pearl
A new feature called "WIPO Pearl" has now been added to the WIPO database
which is an online terminology database used for searching multilingual
contents.
 Licensing availability
Applicants whoever is interested in executing licensing agreements in relation
to their PCT application can intimate the International Bureau (IB) and request
them to make this information available on PATENTSCOPE.
 Third Party Observations
Under this feature, third parties can submit their prior art observations relevant
to 'novelty' and 'inventive step'. It is a Web-based system which uses ePCT or
web-forms in PATENTSCOPE.
 PCT Direct
New services are being offered by the EPO and Israel Patent Office in which
applicants can address their issues relating to patentability in the search opinion
established for the priority application by the same office. Its aim is to improve
the efficiency and quality of the procedure adopted by ISA. The informal
comments are filed together with the application called "PCT Direct Letter".
 WIPO Arbitration and Mediation Center (AMC) Fee Reductions
25% lifetime reduction is offered on AMC's registration and administration fees,
wherein at least one party to the dispute has been named as an applicant or
inventor in a published PCT application (no relationship to the dispute is
required).
AMC is an independent body that offers alternative resolution options for
commercial disputes between private parties. It gives time and cost efficient
alternatives to litigation.
  Time-limit for Supplementary search request
The deadline for requesting supplementary international search has been
extended from 19 months to 22 months from the priority date (PCT Rule
45bis.1).
There have been 152 States that have recently come under PCT Coverage. The recent
additions into the list of contracting states are Jordan, Kuwait and Cambodia.
 NATIONAL PHASE PCT APPLICATION IN INDIA
Within 31 months from the priority date, the application enters the National Phase
PCT application. The National Phase of a PCT patent application resembles a national
filing in a respective country. The decision to grant patent protection in a particular
country ultimately rests on the Patent Office of that country. However, the filing of PCT
patent application is much simpler than the filing of normal national application since
most of the formal requirements are resolved in the international phase itself. Also,
the national examiners most often follow the Search Report conducted in the
International Phase.

Before entering the National Phase, the applicant must furnish the following
documents:
Furnishing of a translation (in English). Required contents of Translation are:
Description, claims (if amended, both as originally filed and as amended, together with
any statement under PCT Article 19), any text matter of drawings, abstract
 A copy of the international application is required only if the applicant has not
received Form PCT/IB/308 and the Patent Office have not received a copy of the
international application from the International Bureau under PCT Article 20.
Other Documents required by the Office:
 Name, address and nationality of the inventor if they have not been furnished in
the "Request" part of the international application
 Instrument of assignment or transfer where the applicant is not the inventor
 Document evidencing a change of name of the applicant if the change occurred
after the international filing date and has not been reflected in a notification
from the International Bureau.
 Declaration of inventor ship by the applicant
  Address for service in India (but no representation by an agent is required)
 Power of attorney if an agent is appointed
 Verification of translation. Verification consists of a simple statement by the
Applicant or his agent that the translation is correct and complete.
 International application or translation to be furnished in two copies
 Furnishing, where applicable, of a nucleotide and/or amino acid sequence
listing in electronic form;
In case there are corresponding applications in other countries, the applicant must file
within six months from the date of entry into the national phase, a statement
concerning any corresponding applications filed in other countries. The statement
must be made on Form 3.

Where to file a National Phase PCT Patent Application in India:

The application can be filed at any of the four Patent Offices located at Delhi, Kolkata,
Chennai or Mumbai, depending on the domicile, business or place of the Applicant. If
the applicant for the patent has no business, place or domicile in India, the appropriate
Patent office will be the address of service in India. For example, patents can be filed
at the Chennai Patent Office where the address for service would be Intepat IP,
Bangalore.

Patent Procedure in National Phase PCT Application in India:

Publication: Every patent application is published after 18 months from the date of
filing. Thus, a request for earlier publication can be made in Form 9 along with the
prescribed fee. Once published, the application is deemed to have entered the public
domain.
Request for Examination: An Applicant should file Request for Examination (RFE)
within 48 months from filing. The Controller forwards the documents to the Examiner
within a month from the date of publication or one month from RFE, whichever is later.
Within a period of 3 months from the time of receiving the documents from the
Controller, the Examiner establishes the examination report. The Controller forwards
the Report (also known as First Examination Report, FER) to the applicant or his agent
within 6months from the date of publication or from the date of RFE, whichever is
later. An applicant has to comply with the requirements imposed on him within a
period of 12months from the date on which the FER is forwarded to him, else the
application is deemed to have been abandoned.

Grant of Patent: After the instructions/ objections of the Controller are complied with,
the application along with the complete specification will be published in the Patent
Journal. The application is open to opposition for a period of 4 months or for such
further period as prescribed. If no oppositions are filed or if the opposition is
successfully overcome, the application will proceed for grant of the patent.

Fees: The official fee for filing a PCT Application (Patent Cooperation Treaty) and
request for examination would be minimum US$470 for a large entity and US$94 for
a small entity, and it varies depending upon the number of pages and claims.
Ultimately, the PCT:
Brings the world within reach;
 Streamlines the process of fulfilling diverse formality requirements;
 Postpones the major costs associated with international patent protection;
 Provides a strong basis for patenting decisions; and
 Is used by the world's major corporations, research institutions and universities
in seeking international patent protection.
 CONCLUSION
Protection and enforcement of intellectual property rights (IPR) are major
components of international economic trade and scientific cooperation, and the Patent
Cooperation Treaty. (PCT) has ushered an era of international cooperation in the
diverse international property systems with reference to patents. PCT is a facilitating
treaty and one of the most significant advancement in international cooperation in the
field of patents. The principle objective of PCT is to provide a more effective and more
economical means for applying for patent protection in several countries. As per
conventional system, an inventor has to file separate applications in each country
where he desires to seek protection for his invention. Under the PCT system, the
inventor is required to file a single application. In one language having effect in each
of the countries party to the PCT by indicating names of the countries where he desires
the protection.
The aim of the PCT are generally to facilitate a the attainment of the larger objectives
of the patent systems;
 Making a contribution to the progress of science and technology
 Providing optimum legal protection of invention
 Simplifying and rendering more economical protection of inventions.
 Facilitating and accelerating access by the public to technical information
 Fostering and accelerating the economic development of developing countries.
Thus, it is seen that after the accession of India to PCT, Indian inventors have started
taking full advantage of the PCT system and a lot of application from abroad are also
being received under the PCT system. Patent Cooperation Treaty helped a lot of
Indians to secure their inventions patent across the sea.
 BIBLIOGRAPHY
 Blog I pleaders.
 www.ncbi.nlm.nih.gov
 www.legalservuceindia.com
 www.mondaq.com
 wipo.int