1 International developments in

"process". The patent protection

"art"
with
Congress made this
cluding anything
I 17
tention
of made under the substitution with
tory subject-matter.
sun in
the ambit of the in-
statu-

INTERNATIONAL DEVELOPMENTS IN
7.
PATENT
Globalis
f trade and
commerce has PROTECTION
character
to intellectual property. Before thenow given internationalan
tion, it was difficult to existence of
any inte o
tional

nationalllaws. obtain protection in

any interna-
in
Globaliprotection

dueto diversity s . Globalisation many countries

laws. The international
industrial necessitated harmonisa
tion of character of intellectual
iorecognised in the various international
erty is recognise
erty conventions like the prop-
Copyright Convention, Paris
Berne Convention, Universal
Convention,

Paris Convention

fondation for international patent protection was created in the

late I9th century at various Congresses in Vienna and elsewhere. cul.
ating in the Paris Convention ot i883 that provided inventors with a
tional base for international patent protection. The Paris Convention is
the starting point for a consideration of any 1ntellectual property rights
in virtually any part of the world. The original Paris treaty from 1883
has been revised several times and today stands in the form of its 1967
Stockholm Revision.
The Paris Convention of 1883 is one of the most important legisla-
tions in the field of intellectual property rights. The Paris Convention
established the fundamental principles of national treatment,22 the right
certain minimum protection. The
of priority and the guarantee of a
Convention must enjoy in other
nationals of a country belonging to the
with regard to intellectual
countries of the Convention, the same rights
their own nationals.24 The
national treatment rule guaran-
property as
but also, they will not be
that not only foreigners will be protected,
ees an exception
to the national
ulminated against. Article 2(3) states
administrative
national law relating to judicial and
ment rule. The mere procedural na-
jurisdiction and to requirements of a for-
e,to condition may be imposed on
ture is
expressly reserved and special for the application of the national
eigners. The onvention also provides are dom
aom
treatme countries, if they
t rule to nationals of
non-member
cil commercial establishment
in a
me
dVe an industrial or
(Sweet and
Property
in Europe
Intellectual
ra detailed study, see, Guy Tritton,
Maxwell, London 1996).
London
2.
Paris Convention, Art. 2.
23.lhid
 18 II History
andphilosophy
have been attracted
Chap.
to introduce paten
to
Most of the countries
country.25 it will act as a lure to toreign technoloo
the hope that
fnthem
induced to open their system of filing foreign applications y.This has
of national treatment can be traced and the
origin of the concept
to
this logical
need.
The Paris Convention allows an applicant to obtain a prioritv d.
filing an initial application, typically in the inventor's home counteby
applicant may then Hle a patent application in any country bound i . e
Convention within 12 months and maintain the earlier priority date y the26
Thus, the later applications enjoy a priority status with respect to all ap
plications relating to the same invention filed after the date of the fre
application. The Paris Convention recognises expressly that the right of
first
priority may be invoked by the successor-in-title of the first applicant 27
The issue of claiming priority was discussed in Edwards Lifesciences
AGv. Cook Biotech Inc.23 The question that was considered was whether
a Patent Cooperation Treaty (PCT) application would be entitled to pri.
ority of a US patent application, when the US patent application was filed
by joint inventor and the subsequent PCT application was filed only by
one of the inventors.
The PCT provides for claiming priority from earlier applications filed
in any country that is a party to the Paris Convention for the Protection
of Industrial Property. Article 4 of the Paris Convention
specifies that a
person is to enjoy a right of priority if he has filed a relevant application
for a patent or if he is the successor in title to such a
person. Further, any
person wishing to take advantage of the priority of such a filing must be
required to make an appropriate declaration. Both elements of Article 4
are reflected in Section of the Patents Act which requires a declaration
5
made by the applicant that complies with the relevant Rules and speci-
fies one or more earlier relevant
applications made by the applicant or a
predecessor in title.
The Chancery Division found that the effect of Article of the
4 Paris
Convention and Section 5 of the Patents Act is that a
person who files a
patent application for an invention is afforded the
privilege of claiming
priority only if he himself filed the earlier application from which prior-
ity is claimed or if he is the successor-in-title to the
person who filed that
earlier application. If he is neither the
person who filed the earlier appli-
cation nor his successor-in-title then he is denied the privilege. Moreover,
his position not improved if he subsequently acquires title to the
is
tion. It remains the case that he was not entitled invenhe
to the privilege when
filed the later
application and made his claim.
25. Paris Convention, Art.
26. Ibid, Art. 3.
4.
27, lhid Art
 1 International developments in patent
protection ll 19
In most countrics, no valid
patent can be obtained if,
plication is filed, the before the ap-
invention
has been described in a
tion, either the country of application or in
in printed publica-
Convention gives applicants in member countries a any other country. The
can file applications in other countries
after filing an
period in which
they
own country and obtain valid
patents
applicationin their
use in the interval and before the notwithstanding publication
filing of the or
the rightof
applicant to have the foreign foreign application. This is
an

prior to the intervening publication or application treated at law as

public
taneously with the home application, yet have use, instead of filing simul-
it treated
filed on the date of the home as
though it were
application. This
ity. The foreign filing date is the Convention is called Convention prior-
date. This
a
protection to one who was trying to obtain patents in priority right was
the protection being
against foreign countries,
patent-defeating
based on events intervening between the provisions of national laws
time of filing at home and
abroad. Contracting States have the filing
for compulsory licences for abuses of the right to enact measures
providing
patent, in particular for failure
to work. Such licences are not to
be applied for, before the
years from the date of filing of patent expiry of four
the date of grant of the patent, whichever is application or three years from
later.2" The Convention will
continue to provide a substratum for
one country. The Paris Convention
patenting an invention in more than
has provided the framework for the
PCT, the European Patent Convention (EPC) and the
Convention (CPC). Contracting States are allowed to Community
Patent
enter into separate
treaties provided that these
agreements do not contravene the provisions
of the Paris Convention.30

Patent Cooperation Treaty (PCT)

The national patent system requires the filing of an individual
patent ap-
plication for each country in which protection is sought. The PCT is an
agreement for international cooperation in the field of patents. In order
to simplify and to make economical the filing of patent application for
a series of countries, the PCT was set up. It is a special agreement under
the Paris Convention and an agreement for international cooperation in
the field of patents. The PCT is procedural treary and the actual grant
a

s by the national patent offices. To achieve its objects, the PCT enables
the filing with the receiving ofice a single application called the interna-
tional application. It is a worldwide treaty. The countries that have ac
ceded to it are deemed to belong to the International Patent Cooperation
Union. India having acceded to the PCT belongs to the International
Patent Cooperation Union.
29. 2009 EWHC 1304 (Pat), Art. 5.
30. Ibid, Art. 19.
 20 II History and philosophy

European Patent Convention (EPC) Chap.

Following World War Il, global changes in the
international patenent sys
tem have proceedcd at an accelerated
pace. Numerous new
followed the Paris Convention now provide inventors with aa treat
networkthat
global rights. Following adoption of a unitorm patent networ of
tem, European States agreed to the 1963 Convention classificationesys-
on the
of Certain Points of
Substantive Unificatio
ition
"Strasbourg Convention" set Law
on Patents tor
forth certain common Inventions. Thie
law principles, and formed the cornerstone substantive Daten
of the EPC. ent
The EPC was signed at Munich on
of strengthening 5 October 1973 With the
cooperation between the states of Europe in obiect
protection inventions. The EPC is a regional convention respect of
of
of patents in for the grant
Europe.
In addition to
mandating uniform patent eligibility criteria for
States, the EPC establishes a member
The EPC therefore, allows ansingle patent-granting authority, the EPO.
tion at the EPO which applicant to file a single patent
may mature into a number of applica-
patents. The EPC does not individual national
displace individual
but exists
alongside them as an alternative route national patent regimes,
property protection. to
obtaining intellectual
The EPC establishes the
EPO, with its head office in
power to grant patents for Member Munich, which has
States, thus, providing an alternative
route to an
application through the
for
Europatents granted through thisnational Patent Office.
Applications
European search, early publication of thesystem will be the subject of a
examination upon the of application and search
request the applicant, report;
Convention's requirements for a valid taking account of all the
EPO within a limited patent, and opposition before the
the EPO will have a period after grant. The
a bundle of
common form, but in Europatents granted by
in the
national essence,
patents for the different Memberthe grant will be of
application. A Contracting State is States designated
treat obliged by the Convention to
Europatents as having the effect of, and
conditions as, a national being subject to the same
of 20 years from patent.
the date of Europatents must be
may only be revoked on filing of the application foraccorded
it.
a term

the grounds specified in the

Europatents and applications for Europatents
Convention;
rights specified in the Convention. must be treated as giving riseandto
them
obliged to ensure that The Member States
of the EPC
I. have the same Europatents are

tional patents ineffect and are subject to the same conditions as na-
Member States;3"
31. EPC, Art. 2.
 1] International developments in patent protection ll 21
2. Confer on its proprietor the same rights as would be conferred by
a national patent;32
3. are given the same or more protection upon publication as that of
a published national patent application;33
4. can only be revoked on grounds specified in the Treaty; and34
5. must have the same prior right effect as a national patent applica-
tion and a national patent,."
Thus, the Convention indirectly requires the law for national patents to
be brought into line with that for Europatents. The Europatents
for protection tor a period of 20 years from thc date of filing of the appli-
provide
cation and are granted for inventions which are new, involve an inventive
step and are susceptible of industrial application.36

Community Patent Convention (CPC)

In Western Europe, other arrangements began to make progress as early
as 1947 with the agreement to establish the International Patent Institute
at The Hague. After the creation of the European Economic Community
(EEC), discussions about a community patent system were initiated, but
their prime motive was not a concern over the technicalities of patenting
so much as the need to find a way of preventing national patents from
being used as barriers to the free movement of goods in trade between
EEC States.
CPC provides for a true Europatent, in that one administrative
agency would issue a single patent effective in every signatory nation.
Additionally, patent litigation is limited to certain national courts, a
Common Appeal Court and the European Court of Justice. Despite sev-
eral subsequent diplomatic conferences held to promote the treaty, some
European nations still have not ratified it.
The two Conventions were negotiated on the assumption that Member
States would be left free to continue their national patent system as an
alternative method of securing a patent for their territory.
The general principle will be that, if an application for a Europatent
designates any EEC country, a community patent will be granted, instead
of a national patent for that country, in the bundle. A community patent
iS unitary in that it can be granted, transferred, revoked or allowed to
territories. It is
lapse only in respect of the whole of the Common Market
the CPC itself. Under
moreover, subject to the legal regime established by
theCPC, at
as it present stands, of infringement are to be tried
questions
32. EPC, Art. 64.
33. Ibid, Art. 67.
34. 1bid, Art. 138.
35. Ibid, Art. 139(I).
36. Tbid, Arts. 53 and 63.
 andphilosopby
Chap.
22 I1 History D:.
for Revocation
but questions
of validity
are
Divisions
national courts,
in within the
EPO.
The
Boards
Con vention was drafted in the expectation that the UK,when
as a she
and
the Community, and wh
country,
would be joining
jor patenting the plan was shelved.
not
admitted,
was

PROPERTY ORGANISATION (WIPO

INTELLECTUAL
8. wORLD
Convention signed at Stockholm in ro6
WIPO was
established by a
in WIPO is open to an
into force in 1970. Membership any
which came and to anv
is a member of
the Paris or Berne Convention,
State which cstablished in the Convention,
the conditions
other State satisfying
WIPO
The objectives of
are:

ultilateral treaties, through the

I. To administer various
International Bureau of WIPO, dealing with the legal and admin-
intellectual property.
istrative aspects of
of intellectual property internationally
2. To promote protection
States by:
through cooperation among and the modernising of
international treaties
(a) concluding new
national legislations
assistance to the developing world;
(b) providing technical industrial property information;
(c)assembling and disseminating de-
trademarks and industrial
(d) facilitating obtaining patents,
several countries is desired; and
signs for which protection in member States.
(e) providing administrative cooperation among
laws affect everything from
In the modern world, intellectual property
of international
the availability and price of AIDS drugs to the patterns
called intellectual
development. The creation of limited legal monopolies
and rewarding innovators in
property rights gives us a way of protecting
and
art and technology, encouraging firms to produce quality products,
allowing consumers to rely on the identity of the products they purchase.
WIPO has built itself around the attempt to promote and harmonise in-
tellectual property laws internationally, that
is promoting creative intellectual activity and facilitating the transfer of
technology related to industrial property to the developing countries in or-
der to accelerate economic, social and cultural development.7
WIPO has adopted an international harmonisation treaty on patent
formalities. The Patent Law Treaty (PLT) which was adopted in June
2000, to standardise divergent formal requirements applied in national
and regional patent systems to patent applications and patents. Users or
the system will thus, be able to
patent upon and rely predictable simple
procedures for filing national and regional patent applications and for
37. SEATINI BULLETIN, 7(14)I.
 1 Trade Related Intellectual Property Rights (TRIPS)
Agreement N 23
maintaining of patents in all contracting parties. The PLT will come into
forccafter 10 States have deposited their instruments of ratification or
accession.

9 TRADE RELATED INTELLECTUAL

PROPERTY
RIGHTS (TRIPS) AGREEMENT
The TRIPS Agrcement is one of the most
important commercial trea-
tises in modern history. It will revolutionise the treatment
of intellectual
property in the signatory countries. The Agreement was
ordcr to reduce distortions and impediments to international negotiated in
trade and
ro promote adequate
protective measures for intellectual property. Part I
of the Agrecmcnt scts out general
provisions and basic principles, nota-
bly a national-treatment commitmcnt under which the nationals of other
partics must be given treatment no less favourable than that accorded
to a party's own national with regard the
protection of intellectual
to
property. It also contains a most-favoured-nation clause, a novelty in an
international intellectual property agreement, under which any advan-
tage a party gives to the nationals of another country must be extended
immediately and unconditionally to the nationals of all other parties,
even if such trcatment is more favourable than that which it gives to its
own nationals.
As regards patents, there is a general obligation to comply with the
substantive provisions of the Paris Convention. In addition, the agree-
ment requires that 20-years patent protection be available for all inven-
tions, whether of products or processes, in almost all fields of technology.
Inventions may be excluded from patentability if their commercial exploi-
tation is prohibited for reasons of public order or morality; otherwise, the
permitted exclusions are for diagnostic, therapeutic and surgical meth-
ods, and for plants and (other than micro-organisms) animals andessen
tially biological processes for the production of plants or animals (other
than microbiological processes). Plant varieties, however, must be pro-
tectable either by patents or by a sui generis system.

Transition period
With respect to the implementation of the Agreement, it envisages a one-
year transition period for developed countries to bring their legislation
and practices into conformity. Developing countries and countries in the
process of transformation from a centrally-planned into a market econ-
omy would have a five-year transition period, and least-developed coun-
tries II years. Developing countries which do not at present provide
product patent protection have up to 1o years to introduce such protec
tion. However, in the case of pharmaceutical and agricultural chemical
 24 II History and philosophy

products, they must accept the fling of patent applicatio

ions
Chap.
from the
beginning of the transition period. This is known as
of "pipeline protection", which covers applications filedtheafte
Swiss version
1995. Though the patent ed not be granted until the 1 January
end of
of the date of this pe-
riod, the novelty of the invention is preserved as of
application. authorisation for the marketing of the
If filingt
ceutical or agricultural chemical product is obtained relevant 8the
tion period, the developing country concerned must during the tra
offer an evel
marketing right for the product for five years, or until a
granted, whichever is shorter. product patene
tent is
The TRIPS Agreement provides for a
general transition period of G.
years to developing countries for ementation of all the provisio five
of the Agreement. It also provides for an additional
five years to those developing countries which do transition period o
not
for product patents in any feld of presently provida
to those fields of
technolo8Y, to extend
product patents
technology. However, in of
respect pharmaceutical and
agrochemical products alone, the TRIPS Agreement requires that
cations for product patents must be apnli.
accepted as from the
date
products are granted patents and marketing agree-
ment itself. If those of
in any other approval
country, and the patent owner desires to
products in the Indian market, he should be given exclusive introduce those
right for five years or till his pending patent marketing
proved or rejected, whichever is earlier. application in India is ap-
The advent of liberalised trade
the global market. policies has exposed countries to
Large-scale industrialisation is key to economic
development that requires transfer of technology, the know-how and cul-
tural promotion. Intellectual
research and development. In property rights also give great impetus to
this context, intellectual
play a key role in economic property rights
mercial value. While development as they have considerable com-
to be achieved
protecting intellectual property, balance needs
a
between allowing
indigenous industry. A
foreign investment and preserving the
patent, copyright or trademark registered in
country is effective only in that a

beyond the boundaries of the country. Thus, for the protection of these
country,
separately. To be effective protection
each country must be obtained in
in an
omy, inventors often must secure increasingly global econ-
jurisdictions. Despite the
patent rights within many ditferent
Paris existence of
international agreements like the
Convention, PCT and TRIPS
address multiple
substantive patent Agreement, attorneys are required to
laws, granting procedures and
guages. Ratification of the
of the world TRIPS Agreement by almost lan-
all the countries
has resulted in
property rights. bringing about harmonisation of intellectual
bleIntellectual
and property laws make creative
potentially rewarding. They give endeavours
a
financially feasi
great impetus
eat impetus to
to resear and
researcn
 Trade Related Intellectual Property Rights (TRIrs) Agreement |I 25
1
development. Apart from the advantages, intellectual property has its
of protec-
own wn disadvantages like monopoly pricing during the periodto minimise
should address these issues and should try
tion. Legislators
disadvantages. Countries around the globe should adapt intellectual
Such In the
to meet the needs of society and the global economy.
property laws
property laws
countries should take the trajectory of
complex game of trade diplomacy,
an effective intellectual property protection.