Intellectual Property is jurisdiction specific. A patent or trademark registered in India can seek protection against infringement only in India. Thus it is important to register your IP globally, to seek protection under the laws of the respective countries. Since a lot of money is involved in this area, it is advised that the applicant files registration application in those countries in which it wishes to seek protection within the time specified. Here is a brief write up for your reference with respect to various forms of Intellectual Property.
India is a member of the following International Organizations and Treaties in respect of patents:
- World Trade Organization (WTO) with effect from 01-01-1995.
- Convention establishing World Intellectual Property Organization, (WIPO).
- Paris Convention for the protection of Industrial Property with effect from Dec. 7, 1998.
- Patent Co-operation Treaty (PCT) with effect from Dec. 7, 1998.
- Budapest Treaty with effect from 17th December, 2001.
These treaties make it possible for Indian applicant (companies/ persons) to seek patent protection for an invention simultaneously in each of a large number of countries. Presently, two routes exist by means of which an Indian applicant may be able to file patents in foreign countries. These routes are:
- Paris Convention Route: Under this route, an applicant can file patents in any of the member countries within 12 months from making the first patent application in India. The following illustration explains the timeline for making foreign application:
PARIS CONVENTION TIMELINE
2. PCT Route: Under this route, an applicant is allowed to file a PCT application within 12 months from making the first patent application in India. The filing of the PCT application extends the time for filing in any of the PCT contracting members for the applicant to 30/31 months from the date of first filing. The following illustration explains the PCT timeline.
A PCT application may be filed by anyone who is a national or resident of India. It can be filed at the Indian patent office, or directly with the International Bureau of World Intellectual Property Organization, which administers the treaty, and is located in Geneva.
Importantly, the international application is subjected to what is called an “international search.” That search is carried out by one of the major patent offices, called the International Search Authorities (ISA). India is scheduled to soon become an ISA. The international search results in an “international search report,” that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued.
The international search report and the written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw his application, in particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application. This is the biggest advantage of using this route.
India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of Paris convention, a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states; latter application will be regarded as if it had been filed on the same day as the first application. Please note that there is no registration authority that gives you a worldwide protection of your design.
Further, please note that since India is not a party to Hague Agreement, the benefits of filing single applications for designs (like a PCT) is not available to Indian nationals and companies.
Protection of trademarks internationally is done with the aid of the Madrid Protocol. A protection can be availed in all those countries to whose citizens India also provides protection by simply making a trademark application in those countries. Please note that there is no deadline to make corresponding trademark applications in such foreign countries.
The Protocol is managed by the World Intellectual Property Organization (WIPO). Additionally, it also offers a trademark proprietor the possibility of having a mark protected in up to 77 countries and the European Community (EC) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). The proprietors wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. Thereafter, the international registration can be maintained and renewed through a single procedure at WIPO.
The Berne Convention, which is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland and to which India is also a party, ensures that the copyrights of Indian nationals are well protected in all member countries that are party to the Berne Convention. However, please note that an author’s work is not automatically protected under “international copyright” throughout the world. Protection against unauthorized use usually depends on the national laws of a particular country. However, most countries do provide protection of foreign works under certain conditions and these conditions are specified by International copyright treaties and conventions.
For more details regarding international protection of IPR, please feel free to contact me at email@example.com.