Chapter 22 : The Patent Act,1970

CHAPTER XXII – INTERNATIONAL ARRANGEMENTS

Section 133: Convention Countries

This section, the first in the Chapter on International Arrangements, defines which countries qualify for special, reciprocal treatment under the Indian Patents Act.

• Definition: A country, group of countries, union, or inter-governmental organization is recognized as a Convention Country if it is a signatory or party to an international or regional agreement to which India is also a signatory or party, AND it grants similar privileges to Indian patent applicants or citizens as it grants to its own citizens in respect of the grant and protection of patent rights.
  • Real-World Example: The United States is a member of the Paris Convention, as is India. Because the U.S. grants Indian citizens priority rights for patent applications (reciprocity), it is a Convention Country. This designation is critical because it allows an applicant to use the filing date of their first application in the U.S. as their priority date when later filing in India (under Section 135).

Section 134: Notification as to countries not providing for reciprocity

This section details the consequences for countries that are not recognized as Convention Countries (i.e., those that do not provide reciprocal rights to Indian citizens).

• No Reciprocity, No Rights: If the Central Government officially notifies a country as one that does not accord the same patent rights to Indian citizens as it does to its own nationals, then no national of that country is entitled, either alone or jointly with any other person, to the following:
  • 134(a) Apply for or Own a Patent: To apply for the grant of a patent or be registered as the proprietor of a patent in India.
  • 134(b) Own by Assignment: To be registered as the assignee of the proprietor of a patent in India.
  • 134(c) Apply for or Hold a Licence: To apply for a license or hold any license under a patent granted under this Act.
  • Real-World Example: If the Central Government, by notification, determines that a specific foreign country, Country X, systematically denies patent protection or priority rights to Indian citizens, then citizens of Country X cannot apply for, own, or license any patents in India. This protects Indian interests by conditioning access to the Indian patent system on fair treatment abroad.

Section 135: Convention Applications

This section establishes the foundational rule for the priority date benefit granted to applicants from Convention Countries.

135(1) Priority Date Rule (The 12-Month Window)

Where a person has filed a patent application in a Convention Country (the “basic application”), they, or their legal representative/assignee, can make an application in India for the same invention within twelve months of the basic application date. If they do so, the priority date of their claim in the Indian application is the date of making the basic application.

• Real-World Example: A Japanese inventor files a patent application in Japan (a Convention Country) on January 1, 2024 (the basic application date). They file the corresponding Convention Application in India on December 15, 2024. Even though the Indian application was filed nearly a year later, its priority date is legally considered to be January 1, 2024. This is crucial because all prior art searched against the invention stops at that earlier date.
• Explanation (Multiple Basics): If applications for similar protection were made in two or more Convention Countries, the 12-month period is calculated from the earlier or earliest of those applications.
  • Real-World Example: An inventor files in Country A on Jan 1, 2024, and in Country B on March 1, 2024. They file in India on Jan 15, 2025. Since this date is outside the 12 months from the earliest application (Jan 1, 2024), they lose the priority benefit of both applications.

135(2) Cognate Inventions in a Single Application

If a person has applications in one or more Convention Countries for two or more inventions that are related (cognate) or one is a modification of the other, they can file a single Convention Application in India, provided it is done within twelve months from the date of the earliest foreign application.

• Proviso (Fees): Despite combining multiple cognate inventions into one application, the required fee is the same as if separate applications had been filed for each invention, and the supporting documentation (Section 136) must be provided for each underlying application.
  • Real-World Example: An inventor develops a new type of motor (Invention A) and a modified control system for that motor (Invention B, a cognate). They filed separate applications for A and B in Germany (a Convention Country). They can file a single application in India covering both A and B, but they must pay the total fees as if they had filed two separate applications.

135(3) PCT National Phase Applications

In cases of an application filed under the international Patent Cooperation Treaty (PCT) that designates India and claims priority from a previously filed application in India, the same 12-month priority rules from sub-sections (1) and (2) apply, treating the Indian application as the “basic application.”

• Proviso (Examination Request): If the applicant files both an initial Indian application and a subsequent PCT National Phase application, they can only make a Request for Examination (under Section 11B) for one of the applications filed in India.
  • Real-World Example: A company files an Indian provisional application, then later files a PCT application claiming priority from that Indian one. When the PCT application enters the Indian national phase, they must choose which file (the original Indian file or the national phase file) they want the Patent Office to examine. They cannot pursue both as independent patent grants.

Section 136: Special provisions relating to convention applications

This section details the mandatory document requirements and administrative conditions that apply specifically to an application claiming priority based on a foreign filing (a Convention Application).

136(1) Mandatory Filing Requirements

Every Convention Application filed in India must fulfill the following technical requirements:

• 136(1)(a) Complete Specification: It must be accompanied by a complete specification at the time of filing in India.
  • Real-World Example: Unlike ordinary applications, which can start with a provisional specification, a Japanese company filing a Convention Application in India must submit the full, detailed patent document (claims, description, etc.) right away.
• 136(1)(b) Priority Details: It must specify the exact date and the Convention Country where the first application for protection was originally filed.
  • Real-World Example: The application must clearly state, for example, “First filed on March 15, 2024, in the Republic of Korea.” This validates the 12-month priority claim window.
• 136(1)(c) First Filing Declaration: It must formally state that no other application for protection regarding this invention was made in any Convention Country before that specified date (by the applicant or the person they derive title from).
  • Real-World Example: If a European inventor claims the priority date of their German filing, they must confirm that they did not file an application for the same invention in France or Italy even earlier, which would invalidate the priority claim based on the German date.

136(2) Developments or Additions

The complete specification filed with the Convention Application is permitted to include new claims for developments of, or additions to, the original invention.

• Rule: These additions must be developments or modifications that the applicant would be legally entitled to file as a separate new patent application under Section 6 (Persons entitled to apply).
  • Real-World Example: An inventor files a basic application in the US for a novel drone battery. While preparing the Indian Convention Application, they perfect a new, highly efficient charging circuit for that battery. They can include claims for the original battery and the new charging circuit in the same Indian complete specification.

136(3) Restriction on Post-Dating

A Convention Application cannot be post-dated (have its date officially moved forward) to a date later than the date on which the application could have been legally made in the first place (i.e., the original 12-month window expiry).

• Real-World Example: If the 12-month window for an application closes on December 31, 2024, the applicant cannot ask the Controller to officially post-date their Indian filing to January 15, 2025, even if they would normally be allowed to post-date an ordinary application by six months.

Section 137: Multiple Priorities

This section provides the procedure for consolidating multiple related foreign patent applications into a single Convention Application in India, and how the critical priority date is assigned in such complex scenarios.

137(1) Combining Inventions

If an applicant has made two or more related applications in one or more Convention Countries, and those inventions are so closely related that they legally constitute a single invention, they may file one single application in India.

• Filing Window: This single application must be filed within twelve months from the date of the earlier or earliest of those applications.
  • Real-World Example: A company files patent A (new engine block material) in Canada in March and patent B (new casting process for that material) in Australia in May. Since A and B are closely related, they can file one single application in India covering both, but the deadline is based on the earlier March filing date.

137(2) Priority Date Assignment

When consolidating multiple basic applications, the priority date of any claim in the Indian complete specification is the date on which the matter supporting that claim was first disclosed in any one of the basic applications.

• Real-World Example:
  • Claim 1 (The Engine Block Material) was described in the March Canadian application. Its priority date is March.
  • Claim 2 (The New Casting Process) was first described in the May Australian application. Its priority date is May.
  • This sub-section ensures that the claims get the earliest legal protection possible based on where the supporting information first appeared.

137(3) Defining Disclosure in Basic Applications

For the purposes of this Act, the subject matter is considered “disclosed” in a basic application if it was explicitly claimed or described (excluding general disclaimers or prior art acknowledgments) in the application itself or in any supporting documents submitted at the same time as that application.

• Condition for Documents: To rely on disclosure found in these supporting documents, a copy of the document must be filed at the Indian Patent Office along with the Convention Application, or within a prescribed period after filing.
  • Real-World Example: A French basic application for a chemical process referred to a detailed formula sheet filed concurrently. To claim priority for a claim based on that formula, the Indian application must include a copy of the formula sheet, otherwise, the disclosure within that sheet is ignored.

Section 138: Supplementary provisions as to convention applications

This section outlines the requirements for submitting foreign documents, translations, and dealing with applications filed via the Patent Cooperation Treaty (PCT).

138(1) Foreign Specification Copies

When required by the Controller, the applicant must provide copies of the specifications or corresponding documents filed or deposited in the patent office of the Convention Country, verified to the Controller’s satisfaction, within the prescribed period from the date the Controller requests them.

• Real-World Example: The Indian Controller is reviewing a Convention Application. To verify its contents, they formally request a certified copy of the original specification filed in Germany. The applicant must submit this certified copy within the time limit set by the Controller.

138(2) Translation Requirements

If any specification or other foreign document provided is in a language other than English, a translation into English must be furnished, verified by affidavit or otherwise to the Controller’s satisfaction, when required.

• Real-World Example: The Japanese basic application is in Japanese. The Controller demands an English translation of the specification. This translation must be provided along with a sworn statement (affidavit) from the translator confirming its accuracy.

138(3) Establishing the Filing Date

The date on which an application was filed in a Convention Country is deemed to be the date that the Controller accepts, based on a certificate from the official chief of the foreign patent office or other satisfactory evidence.

• Real-World Example: To resolve a dispute over the correct priority date, the Indian Controller relies on a formal certificate signed by the head of the United Kingdom Patent Office confirming the exact date the basic UK application was stamped and filed.

138(4) PCT International Application Treatment

An international application filed under the Patent Cooperation Treaty (PCT) that designates India automatically has the effect of a regular Indian application (under Section 7, 54, and 135). The title, description, claims, abstract, and drawings filed in the PCT application are taken as the complete specification for the purposes of the Act.

• Real-World Example: A European inventor files one PCT application designating 100 countries, including India. When it enters the Indian national phase, India automatically accepts the documents filed in the international stage as the Indian complete specification, avoiding the need for a full re-filing.

138(5) PCT Filing Date

The official filing date of the Indian national phase application is the international filing date originally given under the Patent Cooperation Treaty.

• Real-World Example: An inventor files a PCT application on July 10, 2023. Even if the application enters the Indian national phase two years later, its legal filing date is back-dated to July 10, 2023.

138(6) Amendments in PCT Stage

Any amendments proposed by the applicant during the international phase of the PCT (before the international searching or preliminary examining authorities) shall be treated as an amendment made before the Indian Patent Office, provided the applicant explicitly desires it.

• Real-World Example: During the PCT examination, a US applicant narrows their claims in response to an international search report. When this application enters India, the applicant can choose to carry those already-made amendments into the Indian file, saving time and simplifying the process.

Section 139: Other provisions of Act to apply to convention applications

This section ensures that most general patent rules still apply to internationally filed applications.

• General Rule: Except where Chapter XXII specifies otherwise, all other provisions of this Act apply to a Convention Application and the resulting patent just as they apply to an ordinary application and patent.
  • Real-World Example: A Convention Patent is still subject to the same renewal fee deadlines, the same grounds for revocation (Section 64), and the same rules for compulsory licensing (Chapter XVI) as a patent initially filed only in India.