One kind of IP right, similar to trademarks and ‘copyrights’, is a ‘patent’. The ‘Latin word patere’ meaning ‘to lay open,’ as in render accessible to other people's examination, is where the concept of ‘patent’ originates. An innovation is not allowed to be made, used, or sold by anybody else for a particular or predetermined period span without a patent and any attack on a ‘patent owner's exclusive rights or title’ is referred to as ‘infringing of a patent’. The Patents Act, 1970 legislation that governs patents in the country.

A sophisticated framework of IP rights is an absolute necessity for any knowledge-based economy. A strong system pertaining to patents is necessary for both scholarly studies and advances in technology. The number of unicorns and emerging businesses in the country is on the rise, and an active entrepreneur community requires an effective Patent framework.

Patents have a ‘territorial limitation’; that is, an ‘inventor's rights’ are safeguarded only inside the borders of the nation if a ‘patent’ is issued or approved there. Regarding the person who invented it, a unicorn, or a business that is keen to increase revenues and recover the invested expenses incurred in R & D, this restriction may work against them. In this article I attempt to study and deconstruct the process of filing an international patent application.

EXPOSITION:

A creator can usually ‘Patent’ his or her creation worldwide via three distinct methods. Selling items or granting licenses to third parties may offer an earnings source in the other country where the ‘patent’ has been granted. The following are the various methods:

‘Direct Application’: Approaching the ‘Patent Office(s)’ in various nations straightaway and concurrently filing an application would be a more sensible and straightforward course of action. All the same, keeping up with each application might call for the applicant to do a tedious and high-cost course of action. It works effectively if there are only a few states to submit applications to as well as an easily identifiable marketplace for the items in question.

‘Convention Application’: An applicant may submit one or more ‘applications’ in any of the ‘Paris Convention’ nation-states inside a year of the initial ‘applications’ filing date, provided that the nation in question is an adherent to the ‘Paris Convention’ (Our country has acceded as early as 1988).

The primary benefit of this approach, though somewhat comparable to the ‘direct application’ method, is the fact that it gives one an extra year to consider & select the nations to submit an application to.

‘Patent Co-Operation Treaty’: Filing an ‘application’ under the ‘Patent Cooperation Treaty (PCT)’ is arguably the easiest method to obtain global patent security (Our country has been a party to the same joined in 1998). The ‘application’ may be submitted immediately or inside a year after the previous ‘applications filing date’. The greatest benefit lies in the fact that the creator can choose which nation or jurisdictions they intend to register and safeguard the patent in for up to thirty months from the initial filed period. ‘Patent Cooperation Treaty’, though, charges more upfront costs than other providers. In addition, the inventor needs to exercise caution and confirm whether or not the countries in which they wish to secure patent rights are parties.

In this article, the focus is primarily on the ‘Patent Cooperation Treaty’ and analysis on the filing system.

A BRIEF STUDY:

‘Invention’ is defined as per ‘Section 2(1)(j) invention means a new product or process involving an inventive step and capable of industrial application’;

and as per ‘Section 2(1)(l) new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art’;

The innovation must meet the ‘novelty’ (‘also known as newness’) requirement, which is the fundamental step toward acquiring a ‘patent’, A party's ‘application’ is considered ‘novel’ if none of the components of the invention's description have been established by any released, utilized, or publicly available ‘prior art’ or publicly acknowledged. For this a novelty search check is done by the Patent Litigation Attorney and professionals and usually takes 3-4 days to conclude.

In Lallubhai Chakubhai Jariwala v Chimanlal Chunilal and Co the court observed that:

“The two features that are necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is quite essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee [while interpreting the factor related to public knowledge and public use.”

‘Knockout Search’: A ‘knockout search’ is one that is carried out to exclude those that are exact duplicates of the subject patent or that, because of their striking similarity, immediately threaten the subject invention in future. To put it another way, this is more like an examination with the goal being to determine whether the patent that has to be applied has any obvious or likely problematic areas. It determines whether a ‘patent’ applied for is original or not in a matter of less than a day. As a way to verify the originality of creative ‘inventions’ revealed in the patent ‘disclosure’, Patent Litigation Attorneys and professionals are adept at performing extremely focused patent and ‘non-patent literary’ investigations. The goal of this is to expedite the process of determining an ‘invention's patentability’ while saving money and time. After a ‘knockout search’ is completed, determining if an ‘invention’ is patentable is much simpler.

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Prior to releasing a fresh invention, a thorough and methodical study known as a “clearance search” is carried out to determine the likelihood of violating already-existing IP rights. In order to make absolutely certain that the planned patent does not infringe upon any other IP rights that are already in place, this inquiry entails looking through ‘trademarks, patents, copyrights, and other pertinent IP databases.

Mitigating ‘legal’ problems, protecting the authenticity of the fresh operation, and arriving at educated judgments according to the intellectual property directories are the objectives of a ‘clearance search’.

This has become a prevalent issue with ‘patent’ violations in underdeveloped nations: lawsuits are frequently brought by businesses or by ‘patent trolls’ in an attempt to extract cash via extortion. Legal action is extremely expensive, especially in industrialized nations where it occurs. And all of this is preventable with a quick Right-to-Use analysis by a qualified business.

Essentially, the purpose of an Right to use (aka FTO) investigation is to:

1. Examine the criteria for the Inventions.

2. Recognize the competitors and patents in the marketplace.

3. Techniques for promoting subject applications

4. Pricing schemes for inventions.

Each Indian ‘patent’ application grants the inventions exclusive rights within India. Fortunately, more than one-fifty countries signed the PCT in the 1970s. This offers a global application venue for filing patents. A filing mechanism, not an awarding arrangement, is provided by the PCT. In essence, it simplifies the filing procedure such that, in order to preserve energy and money, a patent seeker can submit a request ‘applying’ to one or more signatory states rather than submitting individual applications to each nation.

The ‘Patent Cooperation’ Treaty has the following benefits:

1. Permits the seeker to postpone the cost of submitting applications abroad

2. Offers an evaluation procedure that lets the inventor determine whether the invention has the potential to be patentable without incurring extra search expenses.

3. Gives the inventor the opportunity to revise and adjust their submission prior to it being examined to ensure that it is in excellent form.

4. Since the majority of the target states are Patent Cooperation Treaty signatories, submitting an ‘application’ protects your legal patent privileges ‘for at least 30 months’, and maybe beyond if the nation you apply to and proceed to ‘examination’ review.

It is certainly safe to conclude that huge MNC organizations, such as drug manufacturers that frequently apply for ‘patents’ in numerous nation-states, are the ones who generally use the ‘PCT procedure’ frequently and find it optimally suitable. Whenever there exists an evident international demand and potential worldwide trade opportunity, the Patent Cooperation Treaty approach is probably beneficial as well. Excepting the rarest of circumstances, individual inventors are probably outside of the purview of and impractical for the Patent Cooperation Treaty route.

CONCLUSION:

It is evident from the information provided that at present there are a few methods available for submitting an ‘international patent application’. An ‘international patent application’ ought to be filed in accordance with the plan the inventor has to increase their rights or seek coverage in foreign nations. The commercial IP planning and tactics are the primary determinants If someone wishes to take their enterprise global. To obtain safeguards and rights, the inventor must apply for a patent in those nations. They must also choose the most appropriate and economical method of submitting an ‘application for a patent’.

Author : Aditya Singh Thakur, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.