International Patent Treaties
We live in a small world and globalisation has made this world a compact market place consequently the need for cross border patent prosecution to protect one intellectual property is gaining ground. Global treaties have made global acquisition of intellectual property protection easier and more uniform. The countries have proactively formed grouped or signed treaties to make patent law more uniform and acquisition more simpler There have been a number of agreements, and revisions to those agreement. The brief note about various treaties is as follows :
The Paris convention
The Paris convention for Protection of Industrial property commonly shortened and called the 'Paris Convention' is a multilateral treaty which originated in 1883 , and has been revised several times since. As on the date of writing there were 171 members The main use of the treaty is the priority provision , which give the applicant a period of time ,after the first filing of a patent application in a signature country to file application in other signature countries while still retaining the original priority date. This in essence gives the applicant a year grace period after the initial filing of his patent in his home country to make the final descion on where to apply globally for patent protection . The convention applies to patent applications , utility model applications ,design patent applications and trademark applications ,although the timing for patents and utility models is twelve months and the timing for the design patents and trademarks is Six(6) months .Most of the countries have signed this treaty .The treaty is administered by the World Intellectual Property Organisation (WIPO) located in Geneva Switzerland .The list of member countries of this convention are as follows can be view www.wipo.int
The Inter -American Convention
The Patent Coopertaion Treaty( PCT)
The Patent Cooperation Treaty (PCT) is the major treaty used today to file patent applications internationally. The PCT is also administered by WIPO.
The advantage PCT offer is that it provides a convenient and quick method of filing patent applications for the same invention in several countries. The application can be filed in any of the signatories of the treaty by filing one (1) set of the papers in any one of the several receiving office worldwide. The application is usually filed in the native language although a translation may be later required .The PCT provides an additional advantage in that applicants have the opportunity to defer the payment of filing,translation and other fees for up-to 30 months after the priority date of the application. This can provide applicant extra time to determine wheteher or not the invention is worth money and effort to obtain patent globally . Application filled via PCT procedure are published eighteen (18) months after the priority date. The PCT procedure also provides provisional protection in those countries which provide for such protection ,which means an inventor will be able to claim damages for infringement as of the publication date.
An Application filed using PCT has an international search provided by one of international search offices.This search is completed within three(3) months of receipt of the application,or nine (9) months after the priority date which ever is the longer, and search indicates how pertinent the cited references are to the application.
In addition to the international search many countries have agreed to additional treaty provisions ,called Chapter II ,which allow for a preliminary examination of the application ,which is essentially an opinion on patenntability . Regardless of the preliminary examination , all countries have their own procedures for examining the application , although favorable preliminary examination is a good indicator of patenablity .
National and Regional phases
Finally, at 30 months from the filing date of the international application or from the priority date if any, the international phase ends and the international application enters in national or regional phase. However, any national law may fix time limits which expire later than 30 months. For instance, it is possible to enter the European regional phase at 31 months from the priority date. National and regional phases can also be started earlier on the express request of the applicant.
If the entry into national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.
It should be appreciated that the PCT does not automatically result in a patent being issued, and that an applicant must take measures to nationalize in each country desired prior to having the application examined and a patent issued. For national phase filing in the U.S., for example, an applicant must file the national fee; a copy of the international application and an English translation of the international application, if it was filed in another language; preliminary amendments, if required, to the specification, drawings and claims, placing them in compliance with U.S. regulations (e.g., amending the claims to U.S. format if the PCT claims were in the other international format ); an oath or declaration of the inventor complying with U.S. regulations; and a translation into the English language of any annexes to the IPRP, if conducted. For list of members please visit www.wipo.int
When granted in the individual contracting States, the patent will provide protection in the same way as a national patent and will be subject to the national law
The European Patent Convention
Many countries in Europe have signed the European Patent Convention (EPC) since 1973,which resulted in a system which provided for centralized searching and examination authorities for the Signature countries.Under this system although the patent search and examination for all countries are centralised ,applicant which are successful in prosecution are receive not A single centralised European Patent ,but a bundle of National Patents which areare then treated as separate countries . The searching authority for the EPC is located at Hague ,while the emanation authority is located in Munich .
Also, there has been desire to have European Community Patent and the Community patent Convention was signed in 1975. The Community Patent Convention would establish a European Patent, which would be in force in all of the European Patent, which would be in force in all European Common Market Countries. However ,the European Patent is not yet reality and there has been concurrent discussion towards the creation of a Community patent in the European Union. In May 2004 however, this has led to a stalemate and the prospect of a single EU-wide patent is recedingThe countries of EPC at the tome of writing are as follow:-
The EPC provides a legal framework for the granting of European patents, via a single, harmonized procedure before the European Patent Office . A single patent application in one language,may be filed at the European Patent Office at Munich at its branches at The Hague or Berlin or at a national patent office of a Contracting State, if the national law of the State so permits.This latter provision is important in countries such as the United Kingdom , in which it is an offence for a UK resident to file a patent application for inventions in certain sensitive areas abroad without obtaining clearance through the UK Patent Office first.
There is currently no single, centrally enforceable, European Union -wide patent.
States with an extension agreement with the European Patent Office, with respective date of entry can be viewed www.european-patent-office.org
The African Intellectual Property Organization
The African Intellectual Property Organisation,Known as OAPI after the French 'Organisation Africain de la Proprietw Intellectuelle' has been established to provide protection for invention, Trademark , and Design for those state which have signed Bangui Agreement, Which dates from 1982.The Bangui Agreements is effective in Sixteen countries of the OPAI, and all adhere to the Paris Convention . Unlike the EPC or ARIPO patents issued by the OAPI office automatically cover all member countries states at once , without registration or designation .The one exception to this is that patents obtained via the PCT designating the OAPI extend to only those states which are actually members of the PCT as well as teh OAPI. The OAPI patent office is located in Yaounde , Cameroon. The members list can be accessed at www.oapi.wipo.net
The African Regional Industrial Property Organisation
The African Regional Industrial Property Organisation ,known as ARIPO is empowered to grant patents and to register industrial designs, through one office,for those states which have signed Harare Protocol on Patents and industrial designs. A patent granted under this system can be disignated or registred as a patent in the indiviual contracting states ; however ,the validity of a patent is contingent on the national laws actually recongnizing the subject matter in question can be patented . Created in Lusaka, Zambia, on December 9, 1979 (Lusaka Agreement) it has its Headquarters at Harare, Zimbabwe 14 Member States are: Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Sierra Leone, Somalia, Sudan, Swaziland, Uganda, United Republic of Tanzania, Zambia and Zimbabwe for more information about the treaty visit www.aripo.org
The Eursian Patent Convention
In February 1994 , nine (9)member states of the former Soviet Union , now referred to as Commonwealth of Independent States, initialled a new treaty establishing a intergovernmental organisation called the Eurasian Patent Organisation. The Treaty provides for establishment of an Eursian patent Office in Moscow,Russia and allow one to obtain , with a single application and payment, patent coverage in all of the states which are members of the Eurasian Patent Organization countries . In order for a state to become signatories of both the Paris Convention and the Patent Cooperation Treaty. WIPO has a permanent advisory status in the Administrative Council of the Convention, and also has a role of mediator among the member states in case of possible disputes concerning the convention.The official language is Russian The Convention still must be ratified by individual states , 9 states which have ratified the treaty can be accessed at www.eapo.org
When someone wants to apply for a patent in multiple countries, he has to follow the national procedures in every one of those countries separately. Since these procedures are roughly the same in all of these countries, this means a lot of duplicated efforts. Various international treaties have been established over the years in order to streamline the application process for a great deal.
A direct national filing is a foreign patent application directly filed in a given country. A regional filing is a patent application filed with a regional patent examining authority, such as the European Patent Office. Regional examination means that patent prosecution takes place once, before a single patent examining authority, but the resulting patent is (or can be made) effective in multiple countries. An international patent application is filed with an international patent authority through the Patent Cooperation Treaty system. The application is examined on its merits, followed by an optional patent prosecution procedure. But the international application is more of a placeholder than a true patent filing.
A patent filing in multiple countries is strategic decision which the applicant must considered that the cost and time obtaining the Patent but legal support firms can analysis the needs of the organisation and can assist and formulate a complete patent prosecution strategy to extract maxi mun from the resources of an organisation.
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The information contained in this article has been obtained from sources believed to be reliable. author disclaims all warranties as to the accuracy, completeness or adequacy of such information. Author shall have no liability for errors, omissions or inadequacies in the information contained herein or for interpretations thereof.© reserved Kaizen Team 2007.
