WHAT  IS  THE  CURRENT  STATUS?

Upto the 19th Century, there were no attempts to harmonise patent laws; in fact, the Patent Laws were National Laws meant to protect the Nations’ inventors and industries, against foreigners. It was only during the early part of the 19th Century, that multi-lateral treaties came to be signed ensuring minimum Intellectual Property Protection to foreign Nationals on same terms as for Nationals. The Paris Convention first signed in 1884 and subsequently amended several times, allows an inventor in a signatory Country to file an application in his or her home Country first and then file corresponding applications within one year in other signatory Countries, the advantage being that the first filing date would be considered priority date for all subsequent filings. The Convention also makes it obligatory that citizens and foreign Nationals should be  treated at par in all matters related to the patenting and prosecution process.

The second important development was the Patent Cooperation Treaty (PCT) signed in 1970 and which has currently 108 members. The advantages offered by this treaty to the members are related to simplified filing procedures in one of the Receiving Offices, Novelty Search in one of the designated Centres, and  facilities for preliminary examination, all of which at a lower cost to the applicant. However the PCT is an enabling instrument and will be subject to National Laws of Countries where the same application has to be filed if protection is desired, within defined time-frames. The time lag available to the applicant before going into the National filing Phase could be valuable for making decisions on where and when to file the application and for evaluating the commercial potential for the invention, with, at the same time, protecting the priority date.  If, on the other hand, publication and/or grant of a Patent is desired at an earlier date in certain Countries due to marketing and/or licensing reasons, one can file a  PCT application to protect the priority date, and also file National Patents in selected Countries. The PCT search results as well as the preliminary examination data provides the much-needed confidence  to the applicant  that the invention is patentable, without at the same time giving  guarantees on the outcome  of filings in member countries.

THE  ADVENT  OF  TRIPS  AND  WTO 

Even though not termed as an attempt at harmonizing global patent systems, in effect, all members of WTO, currently 136 in number, are bound by the General Agreement on Tariffs and Trade (now WTO), of which TRIPS is a part. Under the TRIPS Agreement, there are  three types of Countries classified according to their developmental status. Until all the Countries are obliged to implement a uniform Patent system, which cannot be earlier than 2006, the disharmony in the provisions between these Countries will continue.  That is because the three types of Countries, the developed , developing and the least developed Countries have different time frames and deadlines to implement a fully TRIPS-compliant Patent System. Thus, in the case of India, as a developing Country with no protection for Product Patents, in the existing Law, the  new Patent Law with all needed amendments need be implemented only by January 1, 2005. The least developed countries  are given 11 years from 1995 to implement a new Patent Law, with a provision for further extension under certain conditions. TRIPS agreement also has certain discriminatory provisions, notably under Article 27.3 on patentability and protection of new Plant Varieties. The lack of clarity in definitions, eg., of micro organisms could lead to variable interpretations by different States.

U.S.A  AND  THE  REST  OF  THE  WORLD

On several issues, the TRIPS Agreement is silent, which provides the flexibility for Countries to legislate their Patent Act consistent with their specific needs. For example, provisions for Second Use Patents or what is generally termed the Swiss-Type Claims, Petty Patents or Utility Models etc are all examples where there will be disharmony between the Patent Laws of different Countries. Some of the provisions and practices of the U.S. Patent Law , including Swiss-type claims, ‘first to invent’ against the ‘first to file’ concept, allowing earlier disclosure without jeopardizing priority rights etc., are at variance with those of other countries and  unless  U.S. falls in line with the rest of the World there will be serious complications. On the trade front, of which TRIPS has been made a part, the U.S. stand on unilateral sanctions under 301 or special 301 provisions in the U.S. laws are going to have major  impact on the rest of the World. In a move perhaps for the rest of the World to accept the U.S. position, the US PTO has agreed  to accept the date of invention in a foreign country of a product or process as the file date, if the foreign inventor applied for a U.S. Patent.

The U.S. Patent Office has also agreed to change its law to make the provisions similar to those of other countries. Thus, under the American Inventors Protection Act of 1999, U.S. PTO will publish applications 18 months after the filing date, subject to certain ‘opt-out’ provisions. Prior user rights, if the product was in use for more than one year by an ‘alleged’  infringer  is also one of the new clauses under this Act.
 

REGIONAL  HARMONISATION  EFFORTS

Of the many attempts at harmonization, even before TRIPS came into force, there was the European Patent Cooperation Treaty and the establishment of a European Patent Office in Munich. Single filing, single examination and single grant of a European Patent are the features of this Agreement. In spite of occasional rumblings, particularly in the matter of sharing costs, the system is working well. However a Patent granted by the European Patent Office has to be still validated by each member country. It is also possible to file directly in each of the European Union Countries. Even though a single European Patent valid in all member countries has been mooted, it is still not known as to when it will become a reality.  Other regional offices are being set up by the former countries of the U.S.S.R as well  as by the African States.

PATENT  LAW  TREATY

An attempt with limited scope of harmonizing National Patent formalities throughout the World started over a decade back and now form part of the Patent Law Treaty, which with the  assistance of WIPO, has finalised the  Draft for discussions initially in the Committee of Experts on the Patent Law Treaty and since 1998, by the steering Committee on the Law of Patents(SCP). At the diplomatic Conference held in   May/June 2000, the Treaty was adopted.
Over 43 States, European Patent Office, Eurasian Patent Office (EAPO) and the African Regional Intellectual Property Organisation (ARIPO) have endorsed the Treaty. The Patent Law Treaty will enter into force 3 months after ten States have formally deposited their instruments of ratification on accession, with the WIPO.
 

THE  INDIAN  POSITION 

Even though India has a PCT receiving Office in Kolkatta and is a member of all the leading treaties and conventions, the idea of a Regional pact along with the other Asian and South east Asian Countries is to be still discussed, let alone finalised. Before doing this, however, Indian Patent Offices and Systems need to be revamped and stream-lined to meet international standards, search and examination facilities strengthened and the Country’s capabilities in all these areas proved beyond doubt to the other Countries of the Region. Indian strengths to achieve this is unparalleled and beyond dispute and her scientific and technical skills unmatched. The rewards that India and other members can derive can also be outstanding. The real question is as to when and how India can develop a strategy, draw up an action plan and implement an equitable and meaningful Regional Cooperation Treaty. Apart from support from WIPO, inputs in resources could be harnessed from other U.N. Agencies and participating Countries. Since the present management  of IPR related systems  are severely  strained due to lack of adequate infrastructure and resources, a separate dedicated team should address the concerned issues and prepare an integrated Project for early implementation.