Filing of International Patents and National SECURITY

While PCT Application is a beneficial tool for patent applicants planning to obtain protection outside India, they ought to be careful in cases of filing first in India because if they don't apply for permission to file outside India prior to the first PCT filing, they may be contravening section 39 of the Indian Patent Act

Indian Patent law has come a long way since the Indian Patents and Designs Act was introduced for the first time in 1911 to protect the Intellectual Property of innovators in India. With globalisation of the Indian economy, the protection of intellectual property internationally has become an integral part of the overall business plan of Indian intellectual property owners. India became a signatory to the Paris Convention in 1998 and the Patent Cooperation Treaty (PCT) benefits also became available to applicants in India allowing filing of International Patent Applications or PCT applications as they are commonly known.

PCT APPLICATION, FILING AND PROCEDURE

The PCT is an international treaty with 148 Contracting States which provides for filing a single "international" patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the "national phase". Therefore it should ne understood that there are no 'International Patents' but only International Patent Applications.

The PCT procedure includes the following stages:

1. Filing: The Applicant can file an international application with a receiving office (RO), complying with the PCT formality requirements, in one language, and pays one set of fees. The RO can be a national or regional patent office or WIPO. In case of Indian Residents, the choice of filing is in India, at Indian Patent Office: RO/IN or directly outside India at the WIPO: RO/IB. If an applicant files in RO/IN, a copy of the application, after initial scrutiny is transmitted to the IB. It may be noted that this filing may be either the first filing for the invention or it may be claiming priority from a convention application and hence may be a filing within 12 months of the first filed application.
2. International Search: An "International Searching Authority" (ISA) which is one of the world's major patent Offices, including the Indian Patent office, as chosen by the Applicant identifies the published patent documents and technical literature ("prior art") which may have an influence on whether your invention is patentable, and establishes a written opinion on the invention's potential patentability.
3. International Publication: After the expiration of 18 months from the earliest filing date, the international application is published online by WIPO in its websitei.
4. National Phase: After the end of the PCT international procedure, the Applicant pursues the grant of patents directly before the national (or regional) patent Offices of the countries of interest.

Besides the above, there are optional steps of Supplementary International Search and International Preliminary Examination as well. The below schematic representation of the PCT application procedure as available at WIPO website captures all the steps very well:

PCT APPLICATION FILING AT THE INDIAN PATENT OFFICE (RO/IN)

PCT applicants who are Indian residents or nationals are provided the option to file their PCT applications in India before the Indian Patent Office as receiving office under the PCT. The Indian Patents Act was amended to bring in the provision of the PCT within the ambit of the Indian patent law in 1998. The Section 138(4) of the Indian Patents Act provides for an international application filed under the PCT designating India to have an effect of filing of an application for patent under section 7, section 54 or section 135 of the Indian Patent Act. With the increasing number of PCT applications being filed in India, the Indian Patent Office has seen ongoing boost in its workload as PCT Receiving office RO/IN.

The PCT section of the Indian patent office reached another milestone in this direction as it started functioning as the International Searching Authority. The Indian Patent Rules were again amended to bring this development within the Indian patent regulations and are in force since October 15, 2013.

NATIONAL SECURITY RELATED SCRUTINY OF PATENT APPLICATIONS FILED IN INDIA

Whenever an application for patent is filed in India, the Controller has to scrutinise said application to ascertain if secrecy directions are to be imposed even without any request made by the applicantii. The Applicant can thereafter file an application outside India after six weeks of the first filing in India.

If an Indian resident wishes to file an application first outside India, there is a requirement under Section 39 of the Indian Patent Act to obtain permission from the Indian Patent Office prior to such filing. On receipt of a request for such permission, the Controller of Patents scrutinises the invention details presented by the applicant and either grants a permission to file outside India or imposes secrecy directions till a clearance is received from the Ministry of Defence.

In case an Indian resident contravenes Section 39 of the Indian Patent Act, he is liable to penal provisions under section 118 which may be imprisonment up to two years or fine or both.

SCRUTINY OF PCT APPLICATIONS FILED BY INDIAN RESIDENTS at Ro/IB vs at Ro/in

A PCT application, which is a first application filing for an invention i.e. not claiming any priority, when filed at RO/IB would require permission under 39 and therefore can be filed only after the national security clearances are obtained. Such an application when filed at RO/IN would again be scrutinised, however whether under section 35 or 39 is the question currently being debated in an Letter Patents Appeal (LPA).iii

As any patent application before the Controller is to be mandatorily scrutinised for defence purposes as provided under Section 35, one may speculate that a PCT application filed in India at RO/IN would be scrutinised under section 35. However, the Indian Patent Office manual directs that the scrutiny is to be under Section 39 for a PCT application which is a first filing even in India. This has also been upheld in a Delhi High Court decision.

PUNEET KAUSHIK AND ANR VS UNION OF INDIA AND ORS iv

The Delhi High Court evaluated the position of the Indian patent office receiving the international applications as RO which were first filing of the application in the case of Puneet Kaushik.

The Honorable High Court ruled in Puneet Kaushik that filing of a PCT application before the Receiving Office India RO/IN, even inside India, would be deemed as an application outside India, as the processing of the application is mainly by the International Bureau (IB) and hence permission under Section 39 ought to have been taken by the Applicant. It may be noted that the ruling is silent on the processing of the application by the RO prior to its transmittal to the IB. The International Filing date was not accorded the date of receipt of the documents for the international application by the Receiving Office, which is not in compliance of Article 11v of the PCT which directs the Receiving Office to accord the International filing date as the date of receipt of the international application.

It is pertinent to note that an initial internal processing of a PCT application is first done by the receiving office under Article 11 of PCTvi and only after said initial processing is the PCT application transferred outside the receiving office to the International Bureau. The step of transfer or transmittal as provided under Article 12 of the PCT is subject to PCT regulations Rule 22vii. Interestingly, this Rule clearly states that the transmittal of the application outside the RO/IN is to be done only when the national law does not prohibit said transfer due to national security reasons.

The Indian national law under Section 35 of the Indian Patents Act provides for such a security scrutiny for all patent applications before the Controller so as to screen the inventions related to defense purposes.

CONCLUSION

PCT Application is definitely a beneficial tool for the patent applicant planning to obtain protection outside India. However, a PCT applicant ought to be careful in cases of filing first in India, because if he does not apply for a permission to file outside India prior to the PCT filing, he may be contravening section 39. The aforesaid judgementviii deems a PCT application filed before the Receiving Office India (RO/IN) to be an application filed outside India.

At the same time, a Section 39 request for permission after national security screening, if filed along with the first PCT application, can delay the accordal of International filing date by RO/IN up to 21 days from the actual receipt of the PCT documents, depending on the time taken by the Controller to decide on the Section 39 request.

Any delay in accordal of International Filing Date is neither in the spirit of Article 11 and 12 of the PCT nor in accordance with the intent of National Security related screening under section 39 of the Indian Patent Act which prevents an invention related to defence to move outside India prior to its screening. The appeal to the judgement has been heard by the Division Bench and the decision is reserved. This decision is to be watched by PCT applicants filing first in India to get clear guidance on their PCT filing strategy.

Endnotes:

i http://patentscope.wipo.int

ii Section 35 of the Indian Patent Act 1970

iii LPA at the Division Bench of Delhi High Court to W.P.(C) 1631/2013

iv (W.P.(C) 1631/2013)

v PCT Treaty http://www.wipo.int/pct/en/texts/

vi Ibid.

vii Ibid.

viii As per order of W.P.(C) 1631/2013

Disclaimer - The views expressed in this article are the personal views of the author and are purely informative in nature.