“Introduction to Patent Corporation Treaty and its filing procedures”

Vidhushi Sinha 

Author is a LLM Student, Amity University, Lucknow

A treaty between member countries. Treaty is just an agreement that they are going to follow the process of uniform process. This was signed and concluded in Washington in 1978 and it is administered by WIPO (world Intellectual Property Organisation) when it was signed then it was 18 contracting states at present there are 148 contracting members of PCT so this is the harmonized process. So India joined PCT at 1998 (PCT will not grant our application its just a filing procedure and it will not going to grant our application). The Patent Cooperation Treaty is an international patent law Treaty concluded in 1970. It provides an unified procedure for filing patent application to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application pr PCT application. The Washington Diplomatic conference on the Patent Cooperation Treaty was held in Washington form 25^th May to 19^th June 1970. The PCT was signed on the last day of the conference on 19^th June 1970. The treaty entered into force on 24^th January 1978, initially with 18^th contracting states. The first international application were filed on 1^st June 1978. The treaty was subsequently amended in 1979 and modified in 1984 and 2001.

It has some advantages and disadvantages so firstly we are going to talk about advantages PCT filing are that a single filing can be done with a single receiving office within 12 months of the filing of a priority application. One has to file a single specification, single PCT request form and provide a single certified copy of the priority application. Under the PCT filing the applicant is issued an International Search Report (ISR) which provides the applicant a useful indication of the prior art against which the invention will be assessed. As this ISR is issued prior to international publication, the applicant is afforded an opportunity to withdraw the application on receipt of unfavorable ISR prior to publication of details of the invention. Some disadvantages are like the overall costs are higher and it is usually takes to get patents granted via the PCT routes.

Usually an applicant begins by filing a patent application at the local national patent. For example the UK Intellectual Property office. This establishes a priority date. If patent protection required abroad it is necessary to file foreign patent application. If these foreign patent application are filed within one year from the priority date, then they count as if they had been filed on the priority date.

1.      Statement of problem

Intellectual Property is creation of intangible property which involves human intellect and labour. From getting up in morning till the time we fall asleep we are surrounded by profound work of human creativity and inventions.

Rights which are bestowed to safeguard these properties are known as Intellectual property Rights. Robustness and effectiveness of these rights determine the industrial and economic development of any country. In the era of globalization and commercialization there are multiple threats posed to Intellectual Property Rights. Most pertinent issue is the one relating to jurisdictional rules it determines the nexus between the State, act and person having involvement in any litigation. As a matter of fact issue of jurisdiction is not unique to any branch of law. It is relevant to determine set of substantive and procedural laws which are to be applied in course of getting remedy from court of law. Internet has emerged as the fastest means of communication which has made issue of jurisdiction even more complex. There is need to find solution for jurisdictional issue when technology is changing at a rapid speed.

However the IPR law in both countries study that researcher has taken is most important to study deeply as to make out lacuna's n the Indian system and strengthen it in comparison to other developed countries.

2.      Aim and Objectives –

     The objective of study is to -:

1. Analyze and understand concept of Patent under the Indian Patent Law and American Patent Law.

2. Analyze various approach and compare and contrast between the patent law of America and India.

3. To find out lacunas and defects in the Indian Patent law and suggestion for adoption of beneficial aspects of US Patent Laws.

    3.  Research Questions -

Following are the research questions that are addressed by the researcher -:

1.       What are the  history and need for evolution of IPR Laws?

2.       What are the provisions under Indian for protection of it under Constitution?

3.       What are the various ways in defence and infringement of IPR differs in both countries i.e. India and USA?

4.       How is the study conducted by researcher is beneficial for amendments?

4.  Hypothesis -

    In the present digital era almost all creative works are available online which has lead to rampant IPR     infringement. Because of the very nature of cyberspace it has become hard for IPR owner to enforce       their rights on account of jurisdictional issue. It is need of hour to harmonize the traditional norms for    determining jurisdiction in the light of Information Technology and incorporate the same in world            level.

   5.  Research Methodology –

The researcher has done purely doctrinal research. It is descriptive and analytical by nature. The research is based on primary and secondary sources. Relevant material from primary sources is taken from statutory provisions of concerned legislation along with relevant judicial decisions. Secondary source material is collected from scholarly articles, research reports, journals etc.

The first stage of research involved theoretical examination followed by critical analysis of literature that has been prevailing over period relating to jurisdictional issue in Intellectual Property Rights violations. It was followed by second stage in which secondary sources are predominantly studied. The third and final stage involves writing over dissertation.

6. Literature Review

Adams, S (2001) compares the two major Patent classification systems in use viz.

International Patent Classification (IPC) and United States Patent Classification (USC).

Users make use of these systems for searching patent information.

Blackman, M (2004) has studied articles covered in the journal „World Patent

Information‟ from its inception 1979 on occasion of completing 25 years of publication.

The analysis of articles was based on key topics like online databases, internet

resources, intellectual property, industrial property, patent analysis and statistics etc

Karisiddappa, C. R (2004) conducted an IPR awareness seminar in Karnataka

University,  Dharwad. The papers presented at the seminar dealt with the areas of patent

systems in India, protection of chemical, pharmaceutical and biotechnological

inventions, IPR information for R & D scientists, a case study of CSIR, Multi

disciplinary studies on IPR in R & D, IP rights, etc. These are very informative.

Bregonje, M (2005) conducted a study to find usage of publications of patent literature.

He describes the uniqueness of patent literature and stated that patent literature could be

the best source of information as 80% information covered in the patent literature is not

covered elsewhere (non patent literature).

MacMillan, D (2006) indicates that patent literature is a valuable source of scientific

information, as it discloses new technologies and processes. Traditionally scientific

literature relied on journals as a source of scholarly information. Patent literature is now

more prominently used in scientific disciplines. Scientific researchers should be aware

of usage of patent literature. To increase the use of patents, research students need to

know value of patents, and how to locate patent information that they require

The capability of intellectual property disputes of being settled by ADR: Theoretical and practical approach under Jordanian law, Daradkeh L M and Kasawneh Ala Elden, International Journal of Intellectual Property Management, 4 (4) (2011) 283-296.

Granted patents have the same level of inventive step? A new approach to distinguish patent protection based on the level of inventive step, Tanaka Yoshitoshi and Jue Wang Daphne, International Journal of Intellectual Property Management, 4 (4) (2011) 270-282.

International intellectual property rights: Effects on growth, welfare and income inequality , Chu A C and Peng S K , Journal of Macroeconomics , 33 (2) (2011) 276-287.

The problem with intellectual property rights: Subject matter expansion, Beckerman Rodau Andrew, Yale Journal of Law & Technology, 13 (2010-2011 Fall issue ) 35-89, http://www.yjolt.org.

US-China intellectual property dispute—A comment on the interpretation of the TRIPS enforcement provisions, Watal Jayashree, The Journal of World Intellectual Property, 13 (5) (2010) 605-619.