Patent Cooperation Treaty (PCT) 1970 And Indian Response

Patent Cooperation Treaty (PCT) is one of the most significant Treaties of our times. It covers issues pertaining to grant of Patents at both National and International levels. The PCT was concluded in 1970 and it was subsequently amended in 1979, and modified in 1984 and 2001.

Any States party to the Paris Convention for the Protection of Industrial Property (1883) can become a member of PCT. Once accepted, the instruments of Ratification or Accession must be deposited with the Director General of WIPO.

PCT has a distinctive advantage of seeking Patent protection for an invention simultaneously in each of a large number of countries by filing an "International Patent Application”. Such an Application may be filed by anyone who is a National or Resident of a Contracting State. It may generally be filed with the National Patent Office of the Contracting State of which the applicant is a National or Resident or, at the applicant's option, with the International Bureau of WIPO in Geneva.

If the applicant is a National or Resident of a Contracting State which is party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the revised Bangui Agreement Relating to the Creation of an African Intellectual Property Organization or the Eurasian Patent Convention, the International Application may also be filed with the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.

The International Application is then subjected to what is called an "International Search." That search is carried out by one of the major Patent Offices appointed by the PCT Assembly as an International Searching Authority (ISA). The said search results in an "International Search Report," that is, a listing of the citations of such published documents that might affect the Patentability of the Invention claimed in the International Application. At the same time, the ISA prepares a written “Opinion on Patentability”.

The International Search Report and the written opinion are communicated by the ISA to the applicant who may decide to withdraw his application, in particular where the said report or opinion makes the granting of Patents unlikely.

If the International Application is not withdrawn, it is, together with the International Search Report, published by the International Bureau. The written opinion is not published.

The procedure under the PCT has great advantages for the Applicant, the Patent Offices and the general public:

(i) The Applicant has up to 18 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection in Foreign Countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees; he is assured that, if his International Application is in the form prescribed by the PCT, it cannot be rejected on “Formal Grounds” by any designated Office during the National Phase of the processing of the application; on the basis of the International Search Report or the written opinion, he can evaluate with reasonable probability the chances of his invention being patented; and the applicant has the possibility during the International Preliminary Examination to amend the International Application to put it in order before processing by the Designated Offices;

(ii) The search and examination work of Patent Offices can be considerably reduced or virtually eliminated thanks to the International Search Report, the written opinion and, where applicable, the International Preliminary Examination report that accompany the International Application;

(iii) Since each International Application is published together with an International Search Report, third parties are in a better position to formulate a well-founded opinion about the patentability of the claimed invention.

India approved the PCT and the Ministry of Minister for Foreign Affairs deposited the required instrument with the Director General of WIPO on September 7, 1998. The said instrument of accession also contained the declaration that the Government of India declares that pursuant to paragraph (5) of Article 64 of the Patent Cooperation Treaty (PCT) of 1970, it does not consider itself bound by the provisions of Article 59 of the said Treaty. PCT became “Applicable” to India from December 7, 1998.

ICANN 41 Is More Than A GTLD Meeting

The Internet Corporation for Assigned Names and Numbers (ICANN) would hold the Second Public Meeting of the year on 20th June 2011 at Singapore. One of the issues that would be discussed by ICANN there pertains to introduce an unlimited number of new Generic Top-Level Domain Names (GTLDs).

However, this is not the only issue that would be discussed at that meeting. Despite contrary claims, ICANN would also discuss many more “Crucial Issues”. For instance, ICANN’s Board of Directors would vote on whether to finalise the Applicant Guidebook, a 348-page document that explains how any established Institution (such as a Government, Business, or Non-Profit Organisation (NGO)) can apply to operate a Generic Top-Level Domain Names (GTLD) of its own choosing. If the Board approves the Guidebook as final, the process of issuing new GTLDs would start.

ICANN would also consider other crucial issues like Internationalised Domain Names (IDNs), Inter-Registrar Transfers, New gTLD Applicants from Developing Countries, etc. These are just a few examples of dozens of topics that the ICANN Community will discuss during a week containing more than 120 panels, presentations, workshops and other sessions.

However, some of the issues deserve an “Indepth Analysis”. These proposals have far reaching consequences for Domain Name, Brands holders, Trademark owners and even for International Organisations like ICANN and World Intellectual Property Organisation (WIPO). This decision would give a new meaning to Domain Names Protection, Brands Protection, Trademarks Protection, Cybersquatting Disputes Resolution, Cyber Law Compliances, Cyber Security requirements, Cyber Due Diligence, etc.

Further, these changes would also require “Better Dispute Resolution Mechanisms” than the existing ones. For instance, transfer-related issues are the number one area of complaint according to data from ICANN Compliance. Should there be a process or special provisions for the urgent return of a hijacked domain name? The GNSO Council votes on the issue Wednesday and in all probability it would be answered in affirmative.

Naturally, these GTLDs are in great demand and there would be attempts to squat famous Brands and Trademarks of others. ICANN should stringently deal with such attempts by allotting the GTLDs to only “Bonafide Applicants” after verifying their “Claims”. The traditional Domain names are frequently hijacked and Cyber Squatting cases have increased dramatically.

The present allotment of GTLD would also face similar problems if an effective “Pre Screening Procedure” along with “Reasonably High Application Fee” is not prescribed by ICANN. ICANN and WIPO would also be required to “Streamline” their Dispute Resolution Services keeping in mind the recent Technological Advances and changing nature of “Cyber Squatting Dispute Resolution Mechanism”.

However, the “High Cost” and “Bonafide Claim” issues would take us to another burning issue pertains to the “Capability” of Developing Countries and NGOs to apply for GTLDs. If the Board approves the “Expensive Process” for creating new GTLDs, Developing Countries may not be able to get the maximum benefit out of it.

Developing Countries may have a need for a new GTLD, but lack the “Financial Resources” to apply for and operate it would be a big hurdle. A Working Group comprised of members from ICANN Supporting Organisations and Advisory Committees has been considering how such groups might be funded if they apply for a GTLD/TLD. The Group offers a report on Thursday.

Intellectual Property, Disability Rights And Fair Use Exceptions

Fair use exemptions are very important part of intellectual property rights (IPRs). These fair use exemptions keep the commercial exploitation of IPRs just and humane. Basically, these exemptions maintain a balance between commercial interests and societal interests so that interest of neither the IPRs holder nor the society is jeoparidised.

In a welcome step, the World Intellectual Property Organisation (WIPO) is conducting a very landmark meeting these days. WIPO’s Standing Committee on Copyright and Related Rights is holding its Twenty-Second Session from June 15, 2011 to June 24, 2011 at Geneva, Switzerland.

The meeting would discuss many crucial issues pertaining to copyright and related rights. For example, issues like protection of audiovisual performances, protection of broadcasting organisations, copyright limitations and exceptions for the visually impaired persons and other persons with print disabilities, exceptions and limitations for the persons with disabilities, educational and research institutions, libraries and archives, etc would be discussed at the meeting. This session would also prepare the background drafts for various international treaties on the abovementioned issues.

This is a landmark session for the WIPO’s Standing Committee on Copyright and Related Rights. The Copyright Laws around the World must be more “receptive and liberal” towards the demands and requirements of differently abled people. By considering suggestions of “fair use exemptions” in favour of differently abled people, WIPO is moving in the right direction and Perry4Law welcomes this initiative of WIPO.

Indian IPRs in general and Indian Copyright Act, 1957 in particular must also be amended suitably so as to create more liberal and extensive fair use exceptions in favour of differently abled people.

Further, provisions must also be incorporated in the IPRs laws of India so that access to libraries, national archives, documentaries, etc is readily available to them. The IPR laws of India must be suitable amended in this regard as soon as possible.

Entertainment And Media Industry Disputes Resolutions in India

Entertainment and media industry disputes are in abundance these days. Popular movies makers are strongly guarding their copyright, neighbouring rights, trademark, etc in India. The popular movie Sholay is a classic example of the same where the name of the movie, songs and even characters have acquired distinctiveness and are protected in India.

Further, digital media and contents are frequently pirated in India. Cases pertaining to these digital contents of entertainment industry are also rising in India. This has posed many novel technical and legal challenges before the entertainment and media industry of India.

A very strange trend in the Asian countries, especially India, regarding entertainment, media and film industry related disputes is that they are essentially resolved through traditional litigation methods. There is hardly any use of alternative dispute resolution (ADR) or online dispute resolution (ODR) methods to resolve such disputes.

Even more bizarre is the fact that such disputes are seldom taken to International level to be decided by international organisations like World Intellectual Property Organisation (WIPO). Although WIPO has a dedicated mechanism to resolve entertainment and film industry related disputes yet Asian countries are mostly “respondents” there.

This shows that Asian countries are not utilising international platforms of organisations like WIPO for getting their disputes resolved. This is a trend that needs to be changed as use of ADR and ODR is certainly “more beneficial” for entertainment, media and film Industry.

However, despite all assurances, entertainment, media and film industry would not be encouraged to approach international platforms in the absence of national level participations. Perry4Law Techno Legal Base (PTLB) has opened a techno legal ODR platform where ADR and ODR is used for resolving all sorts of commercial and civil disputes that can be resolved using ADR and ODR.

With national initiatives becoming popular and frequently used, international platforms may also be approached later on. However, collaboration between national and international ADR and ODR institutions is need of the hour to achieve that objective. Till now this collaboration is missing that is also the main reason why no link between national and international organisations has been established so far.

WIPO's Standing Committee On The Law Of Patents

World Intellectual Property Organisation (WIPO) is a world renowned name in the field of Intellectual Property Rights (IPRs). It has been actively working in the direction of protecting and strengthening IPRs at the international level.

One of the areas that are covered by WIPO is Patents. In order to ensure adequate and proper patent protection at international level, a Standing Committee on the Law of Patents (SCP) has been formulated at WIPO.

The SPC was created in 1998 and serves as a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law. The Committee is composed by all Member States of WIPO and/or of the Paris Union, and, as observers, certain Member States of the UN non-members of WIPO and/or Paris Union, as well as a number of intergovernmental and non-governmental organisations.

Since its establishment, the SCP has been working on the international harmonisation of Patent law. The main achievement of the SCP in the recent past was the negotiation of the Patent Law Treaty (PLT) and its Regulations on Patent formalities and procedures. The PLT was adopted by a Diplomatic Conference on June 1, 2000 and entered into force on April 28, 2005.

Discussions on the draft Substantive Patent Law Treaty (SPLT) started at the fifth session of the SCP in May 2001. The discussions focus on issues of direct relevance to the grant of patents, in particular, the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. The SCP further agreed that other issues related to substantive patent law harmonisation, such as first-to-file versus first-to-invent systems, 18-month publication of applications and a post-grant opposition system, would be considered at a later stage.

During the subsequent SCP meetings, following proposals by a number of delegations, the contents of the draft SPLT has been progressively broadened. While discussions led to some agreement of principle among delegations on a number of issues, other topics have generated more difficulties in terms of reaching agreement.

Recently the SPC has discussed very important issues of public health, technology transfer, and exceptions and limitations to patents. In the meeting held on 16-20 May some consensus regarding these crucial aspects was seen and most countries felt “optimistic about the way forward”. Perry4Law and Perry4Law Techno Legal Base (PTLB) welcome this effort of WIPO and all countries. Let us see how SPC would help in further development and growth of international Patents laws.

Intellectual Property Rights in India

Intellectual Property Rights in India (IPRs in India) have assuming great importance due to growing awareness among the masses as well as due to increased innovation activities in India. Whether it is Copyright Law of India, Trademarks Law of India, Patents Law of India or any other similar IP Law, India has been playing a major role in the growth of IPR World wide.

However, areas like Domain Name Protection, Techno Legal IPR Services, IPR LPO and KPO, etc are still struggling to become noticeable. Even Dispute Resolution Mechanism like Online Dispute Resolution in India (ODR in India) has yet to pick up a pace.

However, India is also leading on some fronts. For example, the Traditional Knowledge Digital Library (TKDL) of India has invoked the interest of international community, especially World Intellectual Property Organisation (WIPO). WIPO is looking forward to collaborate with the Government of India in this regard.

With the adoption of Information and Communication technology (ICT) certain unforeseeable challenges would also be faced by India. For instance, Digital Preservation Issues in India would also involve IPRs. Similarly, IPRs issues in Digital Era are also complicated and required a different set of Legal and Regulatory Framework.

Today’s IPR environment has become Techno Legal in nature. IP Professionals of India must be well versed with both Technical and Legal Aspects of IPRs. At Perry4Law and Perry4Law Techno Legal Base (PTLB) we specialise in Techno Legal IPR Services. Keep a close watch at this Blog for Techno Legal IPR Developments in India.