Is the world now moving towards ‘Global Patent’ system?

A brief background:
In June 19, 1970 an International patent law treaty was signed in Washington, initially with 18 contracting states. This treaty is called ‘The Patent Co-operation Treaty’ (PCT), which came into force on January 24, 1978 and was subsequently amended in 1979 and further modified in 1984 and 2001.In August, 1998 India joined the Patent Cooperation Treaty (PCT) by acceding to the Paris Convention on Intellectual Property. As on March 7, 2009, 141 states including all major industrialized countries, are signatories to the PCT.

PCT system, as we know, facilitates filing of patent applications under one roof with simpler procedure for search and examination of applications. This allows innovators of a PCT member country to obtain the effect of patent filings in any or all of the PCT countries.

The procedure currently followed by PCT is as follows:

“A single filing of an international application is made with a ‘Receiving Office’ (RO) in one language. It then results in a ‘search’ performed by an ‘International Searching Authority’ (ISA), accompanied by a written opinion regarding ‘patentability’ of the invention, which is the subject of application. This is optionally followed by a preliminary examination performed by an ‘International Preliminary Examination Authority’ (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national and regional authorities.”

Currently the PCT does not lead to the grant of an ‘International Patent’.

WIPO recognizes Indian Patent Office as an ISA and IPEA:

Recently under PCT, ‘The World Intellectual Property Organization’ (WIPO) has recognized the Indian Patent Office (IPO) as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA).

Besides India, other countries which have this recognition are Austria, Australia, Canada, China, EU, Spain, Finland, Japan, Korea, Russia, Sweden and the USA.

This recognition will help India the following ways:

1. Through PCT route India will now receive international patent applications from WIPO for search and preliminary examinations. This will enable IPO to generate revenue in form of fees paid to ISA and IPEA.

2. This recognition would help the innovators of the country to avail patentability search, obtain IPER and written opinions much faster and at a cheaper rate.

Is the world now moving towards ‘Global Patent’ system?

Recently a document has been published by WIPO for the meeting of PCT working group scheduled at Geneva from May 4 to May 8, 2009. The outcome of the meeting is not known to me, as yet. This document includes a proposal from the United States Patent and Trade Mark Office (USPTO) for having a relook at the existing international patent system. This relook and discussion could translate into development of an entirely new Patent Cooperation Treaty (PCT), which perhaps would be termed as PCT II.

The key feature of the proposed PCT II is that all patent applications, which will successfully pass through scrutiny of both international/national processing system would automatically receive patent grants in all the member countries.

While discussing this process within the PCT working group, it is anticipated that following two key issues will crop up for an intense debate:

1. Harmonization
2. Sovereignty

However, many feel that an appropriate protocol system could be put in place to take care of both these concerns, where after release of an affirmative international patentability report, each member country will be given certain period of time to refuse the grant patent in that particular country, clearly specifying the reasons for the same.

In true sense it may not mean grant of a global patent, but definitely could be considered as a bold step towards that direction. PCT II, if sees the light of the day, is expected to create a much easier type of patent granting procedure.

To make it effective, existing PCT structure will need to undergo some significant changes. The new structure is expected to ensure a very high quality output. The member countries, who will work in tandem, should find the new procedures and systems much more user-friendly and at the same time efficient in ensuring comprehensive search between multiple offices that incorporate prior art submissions by the applicants and third parties.

However, if PCT II gets accepted in principle by all the member countries, a detail mechanism to effectively operate such a complex system to be worked out with great precision, ensuring full satisfaction to all concerned.

In India, this new development will certainly be examined with a ‘tooth comb’ and rightly so. It is expected that all pros and cons will be carefully examined by the country, getting fully involved in this international debate, before arriving at a final decision. On the face of it ‘PCT II’ appears to be a novel concept, which deserves due consideration by all the stakeholders and in no case to be summarily brushed aside following the shrill voices of some skeptics.

By Tapan Ray

Disclaimer: The views/opinions expressed in this article are entirely my own, written in my individual and personal capacity. I do not represent any other person or organization for this opinion.

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