Global Patent Filing

Introduction

Innovation is cross-border in today's global economy, but patent protection is not. Only within India's boundaries is your invention protected by an Indian patent. Even though your invention has the potential to revolutionise industries globally, the catch is that a patent granted in one nation does not grant you protection in another. The protection of your patent ends at India's borders if you filed it there. Understanding international patent filing is crucial for Indian innovators aiming to enter international markets. You will also require patent protection in the United States, Europe, or any other country where you wish to sell your product. Knowing how to file patents internationally is essential for Indian inventors and companies aiming to enter foreign markets. Without it, rivals could easily steal your idea and sell it in nations where you are not protected.  It's the difference between having global control over your invention and letting others benefit from your labour in markets that are illegal for you to protect.

Understanding Global Patent Filing

Global patent filing is a process of applying for patent protection across multiple countries, as there is no single patent. It is a way to prohibit any other party from using an innovation without authorization or permission and claiming it to be theirs. The most common method to do this is the Patent Cooperation Treaty (PCT). It allows a simplified process for entering a national phase in various countries.

Two international frameworks that facilitate patent filing across the globe are the Patent Cooperation Treaty and the Paris Convention.

I.     The Patent Cooperation Treaty:

This treaty is administered by the World Intellectual Property Organization (WIPO). It is the most widely used mechanism for the protection of a patent, instead of filing multiple Patents for each country, the investors can file one single internationally patent that is recognized by the member states. Currently PCT is recognized by 158 states[1]. The PCT process provides applicants up to 30 months from their priority date to decide in which specific countries they want to pursue patent protection, deferring significant costs while conducting market research.

II. The Paris Convention:

The Paris Convention was established in 1883, and it is considered one of the oldest treaty of intellectual property. As long as they do so within a year, it grants applicants who submit a patent application in a one-member country the "priority right" to use that same filing date when submitting applications in other member countries. This 12-month priority period guarantees that the initial applicant will remain the first to file and stops others from submitting similar applications during that window. The Paris Convention is still significant for strategic direct filings even though it is not as extensive as the PCT.

There isn't a single "worldwide patent" that offers universal protection, even with international treaties and harmonization initiatives. Every nation has its own legal system, patent office, examination criteria, and patentability requirements. Depending on each state's discretion, the definition of what is patentable may vary.

Global patent filing services

The professional patent filing services offer a range of services for the process:

I. PCT: This is the foundation of all patent strategies. The service providers assist the inventors in PCT filing applications, which is a gateway to protection in over 150 countries. This mainly includes drafting the applications, checking the compliance with the formal requirements, coordinating with the patent offices and managing the international phase timeline. They assist through the 12-month period and then the 30-month period before the national entry phase.

II. National entry phase: they manage the transition from PCT to the individual filing of a patent in each country. They coordinate with several jurisdictions, ensuring compliance, meeting the strict deadlines and preparing the country-specific documents aligning with their laws.

III. Translation services: Since the applications must be submitted in the language of the country it is being filed in many service providers help the investors to translate their application and documents into the native language of the respective country. They maintain networks of technical translators specialized in patent terminology who can accurately translate patent specifications, claims, and drawings into languages

IV. Comprehensive service packages: Many service providers provide end-to-end solutions and services to the investors. For example, prior art searches and patent assessments, drafting applications, FFL (foreign filing license) assistance, deadline management, cost estimation, etc.

V.  Online and digital patent filing: Recent innovations have introduced the procedure of filing a patent online. The portal or digital platform allows the investors to upload the necessary documents for the patent filing. This has made the procedure more accessible to small business owners.

VI. Specialized service providers: there are various types of service providers, like, Global IP law firms, prosecution firms, patent search and analytics company, etc.

Filing of Patent Internationally from India

The major requirement for Indians to file a patent internationally is to first have an FFL (foreign filing license) under section 39 of the Indian Patents Act 1970. This provision mandates:

I. First, the patent should be filed in India, and there should be a wait period of 6 weeks before proceeding with the international filing. Provided that there hasn’t been any secrecy direction issued under section 35.

 II. Obtaining written permission from the controller of patents by filling form 25.

Section 39 applies to the residence of the inventor/creator, not where the invention was created. Non-compliance with this provision includes penalties such as revocation of the patent under section 40, imprisonment for up to 2 years or more or fine or both under section 118 of the Indian Patents Act 1970. The patent application filed without an FFL shall be considered invalid.

Conclusion

In today's globalized economy, filing patents internationally is vital in protecting innovations outside of one nation. While countries cannot provide a single international patent, there are international systems like the Paris Convention and the PCT which facilitate the ability to file patents in several countries. For Indian inventors with an innovation to patent internationally, three specific things must be done:

(1) Follow the requirements of the Foreign Filing License in Section 39 carefully, (

2) Consider instead of the commercial potential from a specific target market,

(3) Analyse the cost vs. benefit of obtaining protections in the jurisdictions the inventor

considers. Utilizing services to assist with filings, and the fact that the PCT provides a 30-month window for the inventor to make a decision to potentially patent across borders, inventors can minimize costs while growing an international patent portfolio to protect their inventions, prevent competitors from exploiting it, and consider entering into international markets.

Author: Nandini Banerjee, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] Current number of states recognizing PCT