PATENT LAW

Asst. Prof. MR. PAWAN KUMAR

SINGH

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In what countries or treaty regions
do we seek patents?
• In those countries where there are, might be,
or will be prospects for commercial activities,
such as distribution, sale or licensing by
patent owner or licensee.
• Where it is practical and affordable to do so.
• Can afford costs: foreign atty. services &
govt. fees for filing, prosecution, annuities,
grant fees, & translations to/from other
languages.

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 If patent application filed
permission?
• Violation of such laws is federal
offense. So . . .
• Before sending a patent application
to another country you will need an
EXPORT LICENSE, which takes the
form of a FOREIGN FILING
LICENSE.
• How is it obtained?

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 Modern treaties
Treaties signed by USA specifically
related to patents:
 Patent Cooperation Treaty (PCT)
 European Patent Convention (EPC)
 Other treaties relating to regional rights
 TRIPS (WTO’s Agreement on Trade-Related
Aspects of Intellectual Property Rights)
 WIPO

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 Patent Cooperation Treaty
• Basics:
• One application for 137 countries
• Compliance with form in PCT is a
valid filing in all 137 countries
• Own language – delay translation
fee
• Optional Search Report – decide if
and where to apply for patent
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PCT Countries

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 PCT Countries
• GB United Kingdom (EP)
• AE United Arab Emirates • GD Grenada
• AG Antigua and Barbuda • GE Georgia
• AL Albania1 • GH Ghana (AP)
• AM Armenia (EA) • GM Gambia (AP)
• AT Austria (EP) • GN Guinea (OA)2
• AU Australia • GQ Equatorial
• AZ Azerbaijan (EA) • Guinea (OA)2
• BA Bosnia and Herzegovina1 • GR Greece (EP)2
• BB Barbados • GT Guatemala
• BE Belgium (EP)2 • GW Guinea-Bissau (OA)2
• BF Burkina Faso (OA)2 • HN Honduras
• BG Bulgaria (EP) • HR Croatia1
• BH Bahrain • HU Hungary (EP)
• BJ Benin (OA)2 • ID Indonesia
• BR Brazil • IE Ireland (EP)2
• BW Botswana (AP) • IL Israel
• BY Belarus (EA) • IN India
• BZ Belize • IS Iceland (EP)
• CA Canada • IT Italy (EP)2
• CF Central African Republic (OA)2 • JP Japan
• CG Congo (OA)2 • KE Kenya (AP)
• • KG Kyrgyzstan (EA)
CH Switzerland (EP)
• • KM Comoros
CI Côte d’Ivoire (OA)2
• KN Saint Kitts and Nevis
• CM Cameroon (OA)2
• KP DemocraticPeople’s Republic of Korea
• CN China
• KR Republic of Korea
• CO Colombia
• KZ Kazakhstan (EA)
• CR Costa Rica
• LA Lao People’s Democratic Republic
• CU Cuba • LC Saint Lucia
• CY Cyprus (EP)2 • LI Liechtenstein (EP)
• CZ Czech Republic (EP) • LK Sri Lanka
• DE Germany (EP) • LR Liberia
• DK Denmark (EP) • LS Lesotho (AP)
• DM Dominica • LT Lithuania (EP)
• DZ Algeria • LU Luxembourg (EP)
• EC Ecuador • LV Latvia (EP)2
• EE Estonia (EP) • LY Libyan Arab Jamahiriya
• EG Egypt • MA Morocco
• ES Spain (EP) • MC Monaco (EP)2
• FI Finland (EP) • MD Moldova (EA)
• FR France (EP)2 • ME Montenegro
• GA Gabon (OA)2

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 PCT Countries
• MK The former Yugoslav Republic of Macedonia1
• ML Mali (OA)2
• MN Mongolia
• MR Mauritania (OA)2
• MT Malta (EP)2
• MW Malawi (AP)
• MX Mexico
• MY Malaysia • TG Togo (OA)2
• MZ Mozambique (AP)
• NA Namibia (AP) • TJ Tajikistan (EA)
• NE Niger (OA)2 • TM Turkmenistan (EA)
• NG Nigeria
•
• TN Tunisia
NI Nicaragua
• NL Netherlands (EP)2 • TR Turkey (EP)
• NO Norway • TT Trinidad and Tobago
• NZ New Zealand
• OM Oman • TZ United Republic of Tanzania (AP)
• PG Papua New Guinea • UA Ukraine
• PH Philippines
•
• UG Uganda (AP)
PL Poland (EP)
• PT Portugal (EP) • US United States of America
• RO Romania (EP) • UZ Uzbekistan
• RS Serbia1
• RU Russian Federation (EA) • VC Saint Vincent and the Grenadines
• SC Seychelles • VN Viet Nam
• SD Sudan (AP)
• SE Sweden (EP)
• ZA South Africa
• SG Singapore • ZM Zambia (AP)
• SI Slovenia (EP)2 • ZW Zimbabwe (AP)
• SK Slovakia (EP)
• SL Sierra Leone (AP)
• SM San Marino
• SN Senegal (OA)2
• SV El Salvador • 1 Extension of European patent possible.
• SY Syrian Arab Republic • 2 May only be designated for a regional patent (the
• SZ Swaziland (AP)2
• TD Chad (OA)2
“national route” via the PCT has been closed).
• Where a State can be designated for a regional patent,
the two-letter code for the regional patent concerned is
indicated in parentheses
• (AP = ARIPO patent, EA = Eurasian patent, EP =
European patent, OA = OAPI patent).

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Some Non-PCT Countries
• Angola
• Afghanistan
• Argentina
• Bangladesh
• Bolivia
• Burma
• Cambodia
• Chile
• Djibouti
• DO Dominican Republic
• (joining 28 May 2007)
• Ethiopia
• Eritrea
• Guyana
• Iran
• Laos
• Oman
• Pakistan
• Paraguay
• Peru
• Saudi Arabia
• Suriname
• Somalia
• Taiwan (wants to join)
• Uruguay
• Yemen
• Venezuela

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PCT Flow

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 Priority under PCT
• Priority under the PCT is governed by
the Paris Convention
• Same rights in that country if filed
within 12 months of priority
application
• http://www.uspto.gov/web/offices/pac/
mpep/documents/appxp_4.htm#parart
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 Modern treaties for
international filing
Treaties signed by USA specifically
related to patents:
 Patent Cooperation Treaty (PCT)
 European Patent Convention
(EPC)
 Other treaties relating to regional rights
 TRIPs
 WIPO

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 EPC - European Patent
Convention
• The European patent system was
established by the European Patent
Convention (EPC)
• European Patent Office (EPO) administers
EPC procedures
• Provides patent protection in 25 European
countries on the basis of a single patent
application and a single grant procedure.
“All eggs in 1 basket.”

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 EPC - European Patent
Convention
• European patent gives its holder the
same rights in the designated
contracting states as a national patent

• Valid for 20 years

• Effective only in those countries in

which EP proceeds to grant
(translation & fees)
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EPC - European Patent Convention
What are the rights granted?
• European patent is a legal title
granting its holder exclusive right to
make use of an invention for a limited
area and time by stopping others from
making, using or selling it without
authorization
• analogous to exclusion principles in US law

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 EPC - European Patent
Convention
• European patent grant procedure
takes on average just over four years
for a patent to be granted.

• EPC patent grant procedure lays

down time limits to facilitate
communication between applicants
and the Office.
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 EPC - European Patent
Convention
Signatory States
Member states of the European Patent
Convention: Austria, Belgium, Bulgaria,
Cyprus, Czech Republic, Denmark,
Estonia, Finland, France, Germany,
Greece, Hungary, Ireland, Italy,
Liechtenstein, Luxembourg, Monaco,
Netherlands, Poland, Portugal, Rumania,
Slovenia, Spain, Sweden, Switzerland, and
the United Kingdom

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 EPC - European Patent
Convention
Extension States
• Rights of a European Patent are likely
to be (but as of July 1, 2000 were not
yet) extended into so-called
extension states, which are Albania,
Lithuania, Latvia, and former
Yugoslav Republic of Macedonia
• Get the latest definitive listing at:
http://www.european-patent-
office.org/epo/members.htm
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 EPC - patentability exceptions

BUSINESS METHODS & COMPUTER

PROGRAMS NOT PATENTABLE
• EPC Article 52(2)(c): --schemes, rules and
methods to perform mental acts, playing
games or doing business, and programs
for computers, are not regarded as
inventions for which European Patents can
be granted.
• Even so, application can be filed in EPO

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 EP - advantage in UK
European patents with validity in Great Britain
(as designated state) may be extended to a
number of UK countries:
Anguilla, Belize, Virgin Islands (British), Falkland
Islands, Gibraltar, Cayman Islands, Jersey, St. Vincent,
Turks and Caicos, Tuvalu, Bahrain, Bermuda, Botswana,
Brunei, Fiji, Gambia, Ghana, Grenada, Yemen, Solomon
Islands, St. Lucia, Singapore, Swaziland, Trinidad and
Tobago, Vanuatu, Western Samoa, St. Christopher (St.
Kitts) Nevis, Sierra Leone, Tanganyika, Tanzania,
Zanzibar, Uganda, Cyprus (Nicosia), Guyana, Kiribati,
and Seychelles

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 Further thoughts about PCT
Possible Benefits--
• A PCT international application can put off
the major expenses of dealing with
individual countries' patent offices for up to
30 months from original US filing date.
• May allow time for the international
business to develop or
• May allow time for licensing or mfg.
conditions to improve
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 Further thoughts about EPC
Possible Benefits--
• EPC “all eggs in one basket” approach
makes economic and logical sense if
enough EU countries of interest (or where
EP desired in France or Italy)
• EP can open protection to all of Europe,
and even the extension states mentioned
• EP in UK opens other UK counties

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 Some thoughts about selecting
countries for foreign filing whether
or not using PCT or EPC
Important Questions--
• Country includes a market for
technology of invention?
• Is there a manufacturing base to
produce or export from country?
• Are patents effective in country?
• Can profits/license fees flow out?
• Is inventive subject matter barred?
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 A key treaty organization: WIPO

• WIPO - World International Property

Organization (“WYE-Poe" or "WEE-Poe")

• WIPO administers 23 treaties

and jointly administers PCT & EPC

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 More about WIPO
"The International Bureau"
• The World Intellectual Property Organization
(WIPO) is a specialized agency of the
United Nations with 193 member states.
• The mission of WIPO is to develop a
balanced and accessible international
intellectual property (IP) system, which
rewards creativity, stimulates innovation and
contributes to economic development while
safeguarding the public interest.

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 More about WIPO

• WIPO was established by the WIPO

Convention in 1967 with a mandate from its
Member States to promote the protection of
IP throughout the world through cooperation
among states and in collaboration with other
international organizations.
• Its headquarters are in Geneva &
Switzerland. The Director General is Francis
Gurry.

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 More about WIPO
• India is a member of World Intellectual
Property Organization a specialized
agency of UN in the area of Intellectual
Property.
• The nodal activities related to WIPO were
transferred to this Department from
Department of Higher Education in 2005.

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 More about WIPO
• The member states of the World
Intellectual Property Organization (WIPO)
on May 8, 2020, appointed by consensus
Mr. Daren Tang as the Organization's next
Director General, with Mr. Tang's six-year
term beginning on October 1, 2020.

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 More about WIPO
• Mr. Tang’s appointment by the General
Assembly, WIPO’s highest governing body,
followed his nomination by the
WIPO Coordination Committee in March,
2020. Mr. Tang will succeed Mr. Francis
Gurry, who has served as WIPO's Director
General since October 1, 2008.

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 What does WIPO do?
• WIPO cooperates with intellectual property (IP)
offices, users and other stakeholders to develop
shared IP tools, services, standards, databases
and platforms.
• This technical infrastructure is designed to help IP
institutions collaborate more effectively and deliver
more efficient services to their users; as well as
enabling innovators and information-seekers
worldwide to freely access the knowledge
contained in the IP system.

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 What does WIPO do?
• WIPO provide human capacity building across the
full spectrum of intellectual property (IP)
rights: patents, trademarks, industrial
designs, geographical indications and copyright.
• Training takes place through in-depth programs
offered by the WIPO Academy or tailor-made
technical workshops.

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 India’s participation in
WIPO:
• India is a member to several WIPO conventions
and treaties as detailed in the table below.
• India has recently acceded to the following WIPO
conventions.
• The accessions underline India’s strong
multilateral engagement with World Intellectual
Property Organization (WIPO) and also India’s
intent to create a strong regime for protection of
IPs.

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 Program
Completed

Class materials - Copyright 2002-12 Randy L. Canis, Peter Gilster,

and Tim Clise

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