11 Sep 2018

HOW TO PROTECT YOUR INVENTION IN FOREIGN COUNTRIES?

Like any other Intellectual Property Right, Patent also is territorial in nature. Granted patent of one country cannot give protection in any other country other than the one it is granted in. The only option to protect any invention in foreign countries is to have a granted patent in those countries. It is again a lengthy and an expensive process to apply for a patent in different countries separately. But like trademarks, there are certain treaties and conventions to make it a little easier for the applicant to protect his/her invention in foreign countries.

The following are the treaties and conventions:

  • PARIS CONVENTION: In the case of trademarks, Paris Convention confers on applicants a Right to Priority which says a person applying for a trademark under Paris Convention gets a Right to Priority in all the member countries at the time of registration. Same way this right is given to the patents also. A person applying for a patent under Paris Convention can get a priority right in the member countries to apply but with a grace period of one year in case of utility patent and a period of six months for a design patent.
  • TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS): Under the Paris Convention, only member countries get the luxury of grace period, and non-members of the Paris Convention get the same luxury under TRIPS agreement provided they are the members of the World Trade Organisation (WTO).
  • PATENT COOPERATION TREATY (PCT): Under PCT also, an applicant gets only a grace period to apply in different countries but under this, the period is a little longer, it gives a total of 30 months grace period to the applicant to apply in different nations.

Under the Patent Cooperation Treaty, a person files for a patent and opts for an international search by International Search Authority (ISA) which does a search and issues a search report along with a non-binding written opinion to the respective patent office. The respective patent office later publishes the invention approximately after 18 months of priority date. After which, an applicant has a choice to apply in multiple nations within a 30 month period. Later, the respective countries will carry on their respective patent grant procedures to grant a patent. The most important point to be noted is that a PCT application does not guarantee a patent to be granted in the countries that they have applied for but only assures a priority right.

From the above discussion, we may understand that it is not possible to get a patent protected in multiple nations with a single application but can only get a priority right. Since India is a member of all the above-mentioned treaties, an applicant from India can apply under any of them to get his/her patent registered in multiple nations.

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