21th August, 2004MarkPatent.Org1 Patent at International Level By Dr. Rajeshkumar Acharya.

21th August, 2004 MarkPatent.Org 1

Patent at International Level

By Dr. Rajeshkumar Acharya

2MarkPatent.Org21th August, 2004

The Idea of International Patent System is

based on Mutual Recognition of,

Single Patent Granted from a Single Application,

which should be obtained Quickly Inexpensively.

21th August, 200421th August, 2004 MarkPatent.OrgMarkPatent.Org 33

Reasons for this thinking are Reasons for this thinking are

• (i) The Application And Maintenance Costs Of A Patent Are Burdensome For Individual Investors And Small Businesses,

• (Ii) The Duplication Of Effort Involved In Granting Patents.

MarkPatent.OrgMarkPatent.Org 44

The substantive standards forThe substantive standards for Granting patents Granting patents the basis for searchesthe basis for searches ExaminationsExaminations

AreAre important considerations to beimportant considerations to be

Negotiated for efficient working ofNegotiated for efficient working of

Such a system Such a system

In addition, patent applicants around the In addition, patent applicants around the world should have confidence that those world should have confidence that those 4444mutually accepted standards would mutually accepted standards would be applied objectively in each patent be applied objectively in each patent office conducting the searches and office conducting the searches and examinations.examinations.

MarkPatent.Org 5

The Director General of World Intellectual Property Organization (WIPO) has already announced :• a new initiative—the WIPO Patent Agenda-

which is intended to launch worldwide discussions for the purpose of preparing a strategy blueprint for the future evolution of the international patent system.

• Its main purpose is to create mechanisms and programmes whereby inventors and industry have access to national, regional and internationally effective patent protection system, which enable them to obtain, maintain and enforce their patents globally.

21th August, 2004MarkPatent.Org6

Though at present, there is no such system, the foundation for it exists in the

Patent Cooperation Treaty (PCT)

Patent Law Treaty (PLT)

Trade Related Aspects Of Intellectual Property Rights (TRIPS)

Agreement.


The PCT simplifies the process of The PCT simplifies the process of obtaining patent rights obtaining patent rights internationally for patent internationally for patent applicants. applicants. • It Provides A Common Facility To Conduct It Provides A Common Facility To Conduct

International Searches Of Prior Art For International Searches Of Prior Art For Patent Applications. Patent Applications. – PCT establishes the priority of an PCT establishes the priority of an

application at the international level.application at the international level. This process gives applicants This process gives applicants

o Sufficient time to assess the market Sufficient time to assess the market potential of their patent in different potential of their patent in different countries,countries,

o To think their strategy before proceeding To think their strategy before proceeding with national filing.with national filing.


A PCT Application Is Published As A “WO” (For WIPO) Document.

• To streamline the process and make it a lot simpler, the PCT is being further reformed. An important factor in the PCT’s success has been the constant evolution of the system in which particular regard has always been paid to the needs of both applicants and offices.


.

The Treaty itself was amended

• in 1979

•in 1984

• in 2001. However, efforts aiming at a more

substantial reform of the PCT began in October 2000, when the Assembly of the PCT Union endorsed an initiative for a concerted effort to reform the Treaty.

MarkPatent.Org 1021th August, 2004

In addition, PCT procedures are revised on an ongoing basis by amendment of the Regulations and the Administrative Instructions

PCT has succeeded in simplifying and rendering more economical the obtaining of protection for inventions throughout the world.

Having been in practical operation for so many years, the PCT has witnessed increasing number of Contracting States and international applications field.


123 countries are now members of PCT and 123 countries are now members of PCT and can be designatedcan be designated

In an international application, In an international application,

In the European Patent Office,In the European Patent Office,

ARIPO Patent Office,ARIPO Patent Office,

Eurasian Patent Office Eurasian Patent Office

The OAPI Patent Office The OAPI Patent Office


The Number of International The Number of International Patent Applications filed in Patent Applications filed in 2003 using the PCT, 2003 using the PCT,

– exceeds 110,000 for the exceeds 110,000 for the third consecutive year,third consecutive year,

with users from the USA with users from the USA

topping the list.topping the list.

13MarkPatent.Org21th August, 2004

Patent application Field in India during 1996-2002

7036 856210155 8954

48248503

10592

0

5000

10000

15000

-199596

-199697

-199798

-19981999

-19992000

-20002001

-20012002

Years

No.

of a

pplic

atio

n

1995-96 1996-97 1997-98 1998-19991999-2000 2000-2001 2001-2002


THE HIGHLIGHTS OF THE ANNUAL REPORT

• the number of patent applications originating in the India were 2371 contributing 22.38% of the total number of applications filed during the years.

• Out of the 2371 applications originating in India, Delhi accounted maximum number of application (678) followed by Maharashtra (650), Tamil Nadu (220) and west Bengal (161).

Conti….


….. Out of 10,592 applications, the number of

national phase applications for patent filed at the designated office/ elected office in India during the year was 6351.

The united states filed the maximum number of applications (2351) followed by

Germany (877), Japan(460), Great Britain(418), Switzerland (283)France (281).

Conti..


…..

The records of the international bureau of WIPO show that out of 1,00,022 copies of international applications received by the bureau, the number of international applications, in which India was designated was 76,374, contributing 76.35% of said total number of record copies during the year.

Conti..


…… A total of 656 applications were accompanied

by provisional applications while the remaining 9936 applications were accompanied by complete specifications.

A total of 5,104 applications were examined during the year and 44,281 applications were awaiting examination at the end of the Year.

Conti..


....

1591 patents were sealed during the year. Of the 654 belonged to Indians and 937 to foreigners.

Out of the total 8,320 Patents in force, 1578 patents stood in the name of Indians.


The first big change recently made The first big change recently made to the Pct system is that :to the Pct system is that :

• Applicants Are Now Entitled To An Automatic National Phase Entry Deferral Of At Least 30 Months In Most Countries.

• There is no need to file a PCT Demand for international preliminary examination in order to obtain the 30 month deferral, since it is provided for under Chapter I of the revised PCT Regulations


The applicant still obtains the benefit of the The applicant still obtains the benefit of the international search report and, in concert with international search report and, in concert with that, comments in respect of the relevance of that, comments in respect of the relevance of the prior art to the invention claimed in the the prior art to the invention claimed in the international application.international application.

Another change in the regulations that affects Another change in the regulations that affects international applications is the elimination of international applications is the elimination of the previous requirement to designate the previous requirement to designate countries at the time of filing. countries at the time of filing.

Conti..Conti..


… The international application now

automatically designates all countries available at the time of filing so that the applicant need no longer decide on what countries to designate in an international application.

This has removed the risk of inadvertently omitting the designation of a country that has newly ratified the PCT.


Traditional Patent Systems

Months

Local patent application followed within 12 months by multipleforeign applications claiming priority under Paris Conventions.

multiple formality requirements multiple searches multiple publications multiple examinations and prosecutions of application translation and national fees required at 12 months

some rationalization because of regional arrangement ARIPO, EAPO, EPO, OAPI

0 File Application locality

12 File Application abroad


PCT Systems Months

0 File Application locality

12 File International Application

16 International Search International Publication



20 International Preliminary Examination

30-31 Entry into National Phase


Local patent applications followed 12 months by International Application under the PCT, claiming Paris Convention priority, with “National Phase” commencing at 20 or 30 months (At the applicant’s option)

One set of formality requirements International Search International Publication International Preliminary Examination International application can be put in order before

National Phase Translations and national fees required at 20 or 30

months, and only if applicant wishes to proceed


International Searching Authority and Preliminary Examination Authority

AT Austrian Patent Office AU Australian Patent Office CA Canadian Patent Office CN China Intellectual Property Office EP European Patent Office ES Spanish Patent and Trademark Office FI National Board of Patents and Registration of

Finland (Starting date to be announced) JP Japan Patent Office KR Korean Intellectual Property Office RU Russian Patent Office SE Swedish Patent Office US United States and Trademark Office


Field of Technology

The main fields of technology to which published international applications related were physics, chemistry and metallurgy, and electricity. The chart below shows the breakdown of PCT applications published in 2003 according to the eight main technical fields of the International Patent Classification (IPC).

PCT applications published in 2003: breakdown according to the main technical fields under the IPC Main technical fields (sections) under the IPC:A Human necessities B Performing operations; transportingC Chemistry; metallurgy D Textiles; paperE Fixed constructionsF Mechanical engineering; lighting, heating, weapons, blastingG Physics H Electricity For information on the specific contents of each main technical field, consult the IPC


•Thankyou

21th August, 2004MarkPatent.Org1 Patent at International Level By Dr. Rajeshkumar Acharya.

Documents

Transcript of 21th August, 2004MarkPatent.Org1 Patent at International Level By Dr. Rajeshkumar Acharya.