PATENT TERRITORIAL RIGHT

One of the most important types of IPR, a patent protects an innovation by granting property rights to any form of an invention including new products and innovative processes. It gives the inventor the right to prohibit others from using, manufacturing, importing or selling the innovation without permission. Also, a patent gives the patentee an authority to allow a third party to use the invention and thus generate royalties. The Patents Act, 1970 and the Patent Rules, 2003 regulate the registration and protection of patents in India. Here, it is pertinent to note that the Patents Act of 1970 was further amended by the Patents (Amendment) Act, 2005 to extend product patent to all fields of technology including food, drugs, chemicals and microorganisms, and to repeal the provisions relating to Exclusive Marketing Rights (EMRs). The 2005 Amendment also introduced a provision regarding compulsory licenses. The Patent Rules, 2003 was also recently amended by the Patent Rules, 2016. The object of the Patents Act is to encourage new technology, scientific research and industrial progress in the country.

Territoriality Principle in India

As part of the subject matter of intellectual property, the territoriality doctrine states that intellectual property rights do not extend beyond the territory of the sovereign state which had granted the rights in the first place. The doctrine follows the principles of equity, justice and good conscience as it stipulates that nobody should be allowed to take the benefit of someone else's hard work and reputation. According to judicial precedents, the territoriality principle protects the domestic traders against giant multinational business entities that are based in other countries. Patent rights as part of intellectual property rights are valid only within the territory of the country where the rights were granted. In simple words, the right of a patent is limited to the country in which the patentee received the patent protection for his or her invention. For example, an Indian Patent is valid only in India and not elsewhere. As there is no concept of ‘global’ or ‘international’ patent, one must apply for patent rights in every country where one seeks patent protection. Here, it is pertinent to note that applying for the grant of a patent right in India allows the applicant to protect its invention in several countries by two main methods, namely:

1. Convention Application

2. PCT Application

1. Convention Application:

The international treaty known as the 'Paris Convention' has laid down certain directives that allow the patentee to gain protection for its invention in foreign countries. According to the procedure laid down by the Convention, the applicant has to first apply for grant of patent in its home country. The application is then referred to as a priority document or filing and the date on which it is filed is called the priority date. The priority filing starts a 12-month period within which the applicant can further file an application called a Paris Convention Application elsewhere. This 12-month period of convention allows the applicant to gather funding, perform market research and make the product commercially successful. All these activities can be completed by a single filing and without risking a loss of rights in other countries. The Patent Office in India is a signatory of the Paris Convention and hence international patent applicants can document and file Convention Patent Applications in India. According to Section 135 of the Patents Act, 1970, the Convention Patent Applications are documented in India by taking priority over a previous patent application recorded in a convention nation. Here, it must be noted that in the absence of the Paris Convention, applicants would need to coordinate simultaneous filing in several countries at the very start of the process. Apart from being complicated, this process would not be cost-effective.

2. PCT Application:

The Patent Cooperation Treaty or the PCT is an international treaty that came into existence in 1970 with more than 153 Contracting States. The Treaty is a legal agreement entered into between various countries facilitating a single-window application process. The purpose of the PCT Application is to streamline the initial filing process, making it cheaper as well as easier to file a patent application in different countries. The applicant must file a single ‘international patent application’ instead of filing several separate national or regional patent applications. However, only the National or Regional Patent Offices of the patentee’s home country have the authority to grant patent rights. In simple words, PCT allows the applicant to file a single patent application and designate the countries in which he or she wants to protect his or her intellectual property rights. Now, one must remember that PCT has some rules and procedure of its own for granting patents. After applying at the Regional Patent Office or directly at the WIPO (World Intellectual Property Organization), the application is examined by the International Search Authority (ISA) to know if the invention is patentable or not. Upon examination, the invention’ application is published in international journals, inviting oppositions if any. The process for obtaining patent rights through PCT includes the following steps:

1) Filing –

The applicant must file the international application at the national or regional Patent Office or the WIPO (World Intellectual Property Organization) within 12 months of filing the local application. After complying with the PCT’s filing requirements, the applicant has to pay the prescribed fees.

2) International Search –

The International Searching Authority (ISA) examines the published patent documents and technical literature which may influence whether the invention is patentable or not. Upon successful examination, the ISA establishes a written opinion on the invention’s potential for patentability.

3) International Publication –

After 18 months from the earliest filing date, the international application along with the invention's details come into public domain.

To sum it up, patent protection is a territorial right and hence it is effective only within the territory of India. However, applying in India enables the applicant to file a corresponding application for the same invention through a convention application or a PCT application.