INDIA DECIDES TO JOIN THE PARIS CONVENTION AND RATIFY THE PATENT COOPERATION TREATY. SO WHAT?
By Sudhir Ahuja, D P Ahuja & Co, Calcutta, India
The Indian government has taken a decision to join the Paris Convention. It has also decided to ratify the Patent Cooperation Treaty. It is, however, not clear as yet whether India is proposing to amend its Patent, Trademark and Designs Laws.
It is therefore not certain whether there will be any change in the patentability criteria or availability of service marks in the near future. The only thing which appears to be emerging clearly, is the fact that priority will now be able to be claimed from all Paris Convention countries, for patents and designs.
It will also now be possible to claim priority from European patent applications (EPC); this had previouly not been possible.
On the basis of the Indian Government's notification dated 3 January 1995 priority claims have been allowed for patents from 72 designated countries (which does not include Switzerland) along with the six earlier designated convention countries (United Kingdom, New Zealand, Ireland, Sri Lanka, Canada and Australia).
The new provisions will probably come into effect from 25 November 1998.
Unless the Trademark Law is amended priority cannot be claimed and service mark applications will not be possible.
So what has been the objective of India joining the Paris Convention and the Patent Cooperation Treaty (PCT) now? It is still not clear.
The Indian Government's press release on this subject has listed the following as advantages to be derived from the Convention:
(1) improved industrial climate; (2) improved information flow; (3) better and more extensive protection for Indian inventors abroad; (4) the benefit of national treatment for Indian inventors; (5) support for India's export efforts; (6) encouragement of scientific research and technological development; and (7) membership of the PCT and other treaties.
It goes on to say that India does not have to make any changes at all to the Patents Act 1970 in order to accede to the Convention. If we look at all the laws on industrial property, the only change required is a minor amendment to Section 78A of the Designs Act 1911 to extend reciprocal priority arrangements to all countries party to the Paris Convention. Presently, this is restricted to some commonwealth countries.
The most important benefit for India from membership of the Paris Convention is access to the PCT.
The only practical benefit appears to be that Indian applicants will be able to file applications in all the member countries claiming priority and also file PCT applications.
India will also now have the tag of being a Paris Convention country and a PCT signatory.
It may be recalled that a set of patent laws in accordance with the guideline prescribed under GATT was drafted a few years ago. However, change of governments in quick succession and political considerations have failed to get these legislated.
Furthermore, an ordinance was also enacted, but this too lapsed as the government was unable to draft relevant laws in time.
Foreign drug companies are continuing to file product patent applications in India with the hope that these will be provided with the promised patent/EMR protection in the near future. Incidentally, this is the country's obligation under TRIPs.
Any amount of pleas by the government that Black Box protection will be provided is legally hollow in the absence of amendments to the Act in any manner whatsoever.
However, there is no indication whatsoever, that the government proposes to grant pipeline protection to pharmaceutical and agrochemical products. The present Patents Act of 1970 suffers from certain shortcomings vis-à-vis TRIPs. These are:
(1) 'process' and not 'product' patents are only granted in respect of food, pharmaceutical and chemical sectors; (2) the duration of a patent is seven years in the case of food and pharmaceuticals and fourteen years in the case of all other sectors; (3) automatic compulsory licensing in the case of food, pharmaceuticals and chemical sectors without the patent holder being heard, even if the latter worked his patent in India; (4) no patent protection for life forms, such as microrganisms; (5) importation does not amount to working of the patent in India; and (6) the burden of proof, in case of infringement is on the plaintiff.
It is time the government avoided offering knee-jerk reactions to these vexed issues and instead took the opportunity to redraft and compose a modern Patent Act which would take India into the twenty-first century.
This article originally appeared in Patent World Issue #106, October 1998