Difference Between Paris Convention and PCT
Working in the international economy means that certain rules, including intellectual property laws, will be extended across nations. An inventor who wishes to protect his invention across the world may protect it by filing a patent in each country or may file an international patent application. The application for an international patent is governed by two main international conventions.
Firstly, the Paris Convention on Industrial Property Protection governs every international filing right. Parties to the Paris Convention can also form part of the Patent Cooperation Treaty (PCT). The PCT allows inventors to file an international patent application. Let us get to know more about the Paris Convention and the PCT.
Paris Convention
The Paris Convention was signed in Paris, France, on 20 March 1883. The World Organization for Intellectual Property (WIPO) administers this convention. There were several revisions in the convention in Brussels in 1900, at Washington in 1901, at Hague in 1925, in London in 1934, at Lisbon in 1958, and in Stockholm in 1967. There are over 170 Countries that are members of the Paris Convention.
The convention applies to industrial property such as trademarks, patents, utility models, service marks, trade names, and industrial designs. Furthermore, it also applies to appellations of origin, an indication of source, and repression of unfair competition. It is one of the main instruments of international law for the protection of industrial property. Thus, the countries to which this Convention applies shall constitute a union for the protection of industrial property.
Apart from providing specific rules of substantive law, the Paris Convention guarantees to each Member State a basic right called ‘the right to national treatment. It also sets out another basic right known as ‘the right to priority.’
National Treatment
The Paris Convention provides that every Contracting State shall provide the same protection as according to its nationals in respect of industrial property as to nationals of the other Contracting State. Nationals of non-contracting states are therefore entitled to national treatment under the Convention.
This principle, thus, prohibits two sets of rules for the protection of industrial property – one for nationals and the others for foreigners. If a member state does not provide any industrial property protection to its citizens, the Paris Convention states it does not require to provide the same to foreigners either.
Right to Priority
The convention provides for the Right to Priority in the case of patents and utility models, marks, and industrial designs. The right of priority means that, based on a regular first application in one of the Contracting States, the applicant may, within a certain period apply for protection in any of the other contracting states. The duration is 12 months for patents and utility models and 6 months for industrial design and marks. Besides, the Paris Convention also regards applications filed later in other Contracting states as if they were filed on the date of the first application.
Let us look into the pros and cons of using the Paris Convention to protect our Intellectual property rights.
Paris Convention – Pros:
1. The Paris Convention gives the broadest rights of trademarks, patents, utility models, industrial design, geographical indication, and trade names to individuals and firms.
2. One cannot refuse or terminate a patent on the ground that the patent has been terminated or refused in another Country. Moreover, a country has no duty to recognize the patent if it refuses to do so in any other way.
3. The convention allows a great deal of constitutional freedom for each country. It also ensures fair treatment for nationals and foreigners.
4. The 12-month convention cycle helps the applicant to seek funding, perform market research, and turn the concept into a commercial product. The convention enables one to achieve all these with a single filing without causing a loss of rights in other countries.
5. The Convention does not seek to bring national laws into force or create the concept of reciprocity for national treatment.
Paris Convention – Cons:
1. At times foreigners acquire patents to gain monopolies rather than develop inventions locally. This is the focal point of the Convention’s struggle.
2. The dispute over import monopolies in the Paris Convention was limited to Article 5 of the Convention on the misuse of patents.
3. The Convention is lacking in the effort to adequately analyze where the public interest lies. It also doesn’t efficiently address the production of technology gifts beyond the market principle. Moreover, the convention doesn’t analyse how the market principle itself can be changed.
Patent Cooperation Treaty
The Patent Cooperation Treaty is a special agreement within the scope of the Paris Convention. A State must become a member of the Paris Convention before becoming a member of the PCT. The PCT aims to simplify and make the process for securing patents more efficient. It was revised in 1979 and updated in 1984. The PCT enables one to obtain patent protection for an invention simultaneously in a large number of countries through an international patent application.
Any person who is a national or resident of a Contracting State can apply an application to the national patent office or the International Bureau of WIPO in Geneva. The PCT shall prescribe the specific specifications to which any international application may adhere. Applications must join the national process in any country or region of interest 30 months (31 months in certain countries) after the priority date of the PCT application (or the PCT application itself if the priority is not set out in the Paris Convention).
Patent Cooperation Treaty – Pros:
1. Inventors can file a single international phase patent application to gain protection in 117 countries that are PCT signatories simultaneously.
2. The formality criteria, the international search, and preliminary review reports, as well as centralized international publications by the PCT system, are standardized.
3. The PCT contributes to scientific development advancement.
4. It protects innovations optimally by law.
5. It simplifies and makes innovations more economical.
6. It improves the status of the country in the area of intellectual property worldwide.
7. The PCT enables efficient patent portfolio management.
8. Assess and develop incentives to preserve an innovation before it incurs major costs in foreign countries.
Patent Cooperation Treaty – Cons:
1. High charges for filing fees.
2. PCT is difficult because the formal requirements of its Member States are complex.
3. PCT time limits can also be expensive.
4. It takes a longer duration to obtain patents through PCT.
There are both benefits and drawbacks to the issuance of a patent application. Hence, one should consider the interests and circumstances of the applicant. Although the PCT has advantages, the initial charges are relatively high. Applicants with a small budget and an interest in only a limited number of countries may, therefore, prefer to send direct applications to the Paris Convention rather than to send a PCT application. One can make three or more requests to the Paris Convention at the cost of the PCT submission, in particular, if there are no translations involved.
The intellectual property world offers several scopes for the protection of inventions irrespective of borders. Hence, it depends on the inventors to make the best use of the opportunities to protect their inventions.
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