The Paris Convention and the Patent Cooperation Treaty

1. The problem both treaties address

Patents are territorial. Before 1883 an inventor wanting protection in ten countries had to file ten applications, each under different rules, and publication or filing in one country could destroy novelty in the others. Foreign applicants were often treated worse than nationals. The international patent system grew in two steps: the Paris Convention set common rules of fairness and timing, and the PCT nearly a century later streamlined the process of filing in many countries at once.

2. The Paris Convention (1883)

Signed in 1883 and revised several times (last at Stockholm, 1967), administered by WIPO. India joined in 1998. Its contribution to patents:

1. National treatment (Art 2). Each member gives nationals of other members the same protection as its own nationals. This removed discrimination against foreign inventors.
2. Right of priority (Art 4). An applicant who files in one member has twelve months to file in others claiming the first date. Intervening publication, use or third-party filing does not defeat the later applications. This is the most important practical contribution: it gives the inventor a year to decide where to seek protection.
3. Independence of patents (Art 4bis). Patents for the same invention in different countries are independent as to grounds of refusal, revocation and duration.
4. Inventor's right to be named (Art 4ter) and protection against refusal on the ground that sale of the product is restricted by domestic law (Art 4quater).
5. Working and compulsory licences (Art 5A). Importation does not cause forfeiture; compulsory licences for failure to work may be granted, but not before four years from filing or three years from grant, whichever ends later; forfeiture only if compulsory licences have been insufficient, and not before two years from the first licence.
6. Grace period for fees (Art 5bis) and temporary presence of patented devices on vessels and vehicles (Art 5ter).
7. Special agreements (Art 19). Members may make further treaties among themselves, which is the legal basis for the PCT.

Limits. Paris did not fix minimum standards of patentability or term, and did not require patents in any particular field. India could therefore deny product patents for drugs under the 1970 Act without breaching Paris. These gaps were filled by TRIPS, which incorporates Paris Articles 1 to 12 and 19.

3. The Patent Cooperation Treaty (1970)

Concluded at Washington in 1970 and in force from 1978, the PCT is a special agreement under Paris Article 19. India joined in 1998. Membership now covers most of the world. The PCT has two phases.

4. The international phase

1. International application. One application, in one language, filed at a receiving office (usually the national office of the applicant's country, or WIPO's International Bureau), designating all PCT members automatically. It has the effect of a regular national application in each designated state as of the international filing date (Art 11(3)), and may claim Paris priority.
2. International search. An International Searching Authority (ISA) issues an international search report on relevant prior art, with a written opinion on novelty, inventive step and industrial applicability. The Indian Patent Office has been an ISA and an International Preliminary Examining Authority since 2013.
3. International publication by WIPO promptly after eighteen months from priority, together with the search report.
4. Supplementary search (optional) by another authority.
5. International preliminary examination (Chapter II, optional): the applicant may demand a non-binding preliminary report on patentability and may amend the claims.

5. The national phase

At thirty months from priority (Art 22, Art 39), the applicant must enter the national phase in each country where protection is wanted, by paying national fees and filing translations. Each national office then examines and grants or refuses under its own law. The PCT search and report are not binding, but they inform national examination. India allows thirty-one months for national phase entry under the Patents Rules.

6. Contribution to the growth of international patents

• Time to decide. Thirty months instead of twelve before national costs, which lets applicants test the market, raise funds and assess the search report.
• Cost and simplicity. One filing, one language and one set of formalities in place of many; the formal requirements of the PCT bind national offices (Art 27).
• Quality. A professional international search before national examination reduces duplication and helps smaller offices.
• Information. PCT publications (on WIPO's PATENTSCOPE database) are a major public source of technical information, which supports the disclosure function of patents.
• Work-sharing. Patent Prosecution Highway arrangements between offices build on PCT reports.

7. Implementation in India

• Convention applications (ss.133–139): an applicant from a convention country may claim priority within twelve months of the basic application (s.135); the convention country must be notified (s.133).
• PCT applications. An international application designating India is treated as an application under the Act (s.7(1A)), filed on the international filing date. The national phase application must be filed within thirty-one months from priority (Rule 20). Section 138 deals with documents and translations.
• The Indian Patent Office can act as receiving office for Indian applicants and, since 2013, as ISA and IPEA, which has lowered costs for Indian applicants.
• A resident must still obtain foreign filing permission or first file in India before filing a PCT application abroad (s.39).

8. Later treaties and harmonisation

The Patent Law Treaty (2000) harmonises formalities; India is not a party. The Budapest Treaty (1977) on deposit of micro-organisms is used in India for biological inventions. A Substantive Patent Law Treaty was negotiated at WIPO from 2001 but stalled over developing-country concerns. The European Patent Convention (1973) and the Unified Patent Court (operating since 2023) show regional integration beyond anything Paris or the PCT attempted.

How this is examined

Q6 of 2024. Open with territoriality, then Paris (seven contributions with article numbers), then the PCT in two phases, then the six contributions to growth, then India. A simple timeline (0 months filing, 12 months Paris priority or PCT filing, 18 months publication, 30/31 months national phase) is worth drawing.