Convention Applications

1The Patents Act defines a convention application as an application made under section 135 of the Act. (Patents Act 1970, s 2(1)(c)). A convention country is defined as a country or a country which is member of a group of countries or a union of countries or an Intergovernmental organisation referred to as a convention country in section 133. (Ibid, s 2(1)(d)).

2The priority date of a claim in a convention application is the date of making the basic application in the convention country. (Ibid, s 135(1).) Convention applications have to be filed along with a complete specification as there is no provision for filing a provisional specification. (Ibid, s 136(1)(a).) As per s 135(1) of the Act, where a person has made an application for a patent in a convention country (basic application) and that person makes an application for the same invention under the Act within 12 months from the date on which the basic application was made, the priority date of a claim in the complete specification which is based on matter disclosed in the basic application, will be the date of making the basic application. The priority date of a claim of the complete specification, if the claim is based on matter disclosed in the basic application, is the date of making of the basic application. (The claim must be based on the matter disclosed in the basic application. See Westminster Bank Ltd's Patent [1967] FSR 359, p 366, (1967) RPC 600; Hercules Incorporated's Application [1968] FSR 254, pp 262-263, (1968) RPC 203; Polaroid Corpn (Land's) Patent (1981) RPC 111 (CA).) Where an application is filed under the PCT designating India and claiming priority from a previously filed application in India, the priority date of the claim of the complete specification shall be the date of making of the previous application, if the claim is based on the matter disclosed in the previous application. (Patents Act 1970, s 135(3).)

3'Matter disclosed' in a priority document means the information concerning the invention disclosed in that document. (Beloit Technologies Inc v Valmet Paper Machinery Inc (1995) RPC 705, p 733.) Section 137(3) explains the instances when a matter shall be deemed to have been disclosed in a basic application. A matter shall be deemed to have been disclosed in a basic application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgement of a prior art) in that application, or any documents submitted by the applicant for protection in support of, and at the same time as that application. However, no account shall be taken of any disclosure effected by any such document, unless a copy of the document is filed at the Patent Office with the convention application or within the prescribed period.

4References to 'protection' and 'application for protection' found in the Act must be given a wider interpretation. These expressions embrace any application in a convention country which can fairly be regarded as the initiatory step towards obtaining a patent in that country in respect of any invention disclosed in that application or obtaining provisional or interim protection of the applicant's chances of obtaining a patent in respect of that invention. (Polaroid Corpn (Land's) Patent (1981) RPC 111, p 122 (CA).)

5To determine whether an application relates to an invention for which protection has been sought in a convention country, it is not enough to discover what is disclosed by the foreign application for protection. An attempt must be made to identify the invention for which protection is sought. (Stauffer Chemical Company's Application (1977) RPC 33, p 50.) The application may also disclose features which form no part of the invention for which protection is sought and are only mentioned incidentally. The test to be applied in determining whether the priority date of a claim is the date of an application for protection in a convention country is to determine whether the claim is fairly based on the matter disclosed in the foreign application. (Canon KK's Application (1980) RPC 133, p 143.)

Basic Application not a Convention Application

6Sections 25(1)(i) and 25(2)(i) of the Patents Act reproduce the language of s 135 in that they require an application to be made in India within 12 months of the basic application made in the convention country, failing which there could be a ground for rejection of the application. The reference to convention application in ss 25(1)(i) and 25(2)(i) require the above sections to be read along with s 135. It will be possible to oppose an application or a patent on the ground that the basic application from which priority is claimed was not a convention application as per the Patents Act.

Three Requirements of Section 135

7To avail the benefit of convention priority for an application made in India, the following three conditions must be satisfied: (In Danieli AC Officine Maccaniche SPA v Controller of Patents and Designs (2000) 1 Cal LT 7 (HC), (2000) PTC 219, p 223.)

(1) The applicant should have made an earlier application for a patent in a convention country (known as the basic application); (2) An application for the patent in India has to be made under the Act; (3) The application in India must be made within 12 months from the date of the basic application.

8The phrase in s 135(1) that the applicant 'makes an application under this Act for a patent within twelve months after the date on which the basic application was made' is similar in its content with the phrase in ss 25(1)(i) and 25(2)(i) that the 'application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant'. Interpreting the first requirement of s 135(1), the Calcutta High Court has stated that a literal interpretation of the said section will require a determination as to whether the convention country is a convention country as per the Patents Act 1970 on the date on which the basic application is made. Speaking for the Division Bench, Ruma Pal J said: (In Danieli AC Officine Maccaniche SPA v Controller of Patents and Designs (2000) 1 Cal LT 7 (HC), (2000) PTC 219, pp 224-25.)

The appellant's submission will depend on the crucial phrase in section 135 which requires the basic application to be an 'application for a patent in respect of an invention in a convention country'. On a literal interpretation, the phrase plainly means that the basic application must be made to a country which is a convention country when the basic application is made in order to qualify the applicant for a priority claim under section 135. In other words, an application made to a country which may subsequently be declared as a convention country will not do.

9In the above case, the Calcutta High Court rejected the patent application claiming wrong convention priority on an Italian application on the sole ground of priority. The court held: (Ibid, p 227.)

The notification, was not given retrospective effect and the privileges of reciprocity were therefore extended to the 72 countries including Italy for the first time in 1995. The appellant's basic application was made in 1994 when Italy was not a convention country. There has therefore been no discrimination between the appellant and the applicants with pending applications under the 1911 Act and the Tribunal rightly held that the application of the appellant under section 135 could not be proceeded with. The appeal is accordingly dismissed without any order as to costs.

10Thus, an application or a patent may be opposed on the ground that it wrongly claims an application to be a convention application under the Patents Act. Strictly speaking, the provisions of ss 25(1)(i) and 25(2)(i) can be employed only where the application filed in India is time-barred. But a combined reading of ss 25(1)(i) and 25(2)(i) along with ss 133 and 135 of the Patents Act 1970 will show that an application or a patent may be opposed on the ground that the basic application was filed in a country which was not a convention country as per the Patents Act. In other words, ss 25(1)(i) and 25(2)(i) indirectly allow for the opposition on the ground that the priority was wrongly claimed based on a convention application. The Controller may permit the applicant or the patentee to amend or disclaim the priority date so as to get over the objection under this ground. If the applicant or the patentee refuses to amend, the Controller may reject the application or revoke the patent so granted. The finding of the Division Bench of the Calcutta High Court in Danieli AC Officine Maccaniche SPA v Controller of Patents and Designs clearly shows that priority is a legal requirement which must be satisfied and is not a matter which is left to the discretion of the applicant or patentee. ((2000) 1 Cal LT 7 (HC), (2000) PTC 219 (DB), where the application was rejected on this ground.)

Convention Country

11Any country which is a signatory or party or a group of countries, union of countries or Inter-Governmental organisations that are signatories or parties to an international, regional or bilateral treaty, convention or arrangement to which India is also a signatory or party and which afford to the applicants for patents in India or Indian citizens similar privileges as are granted to its own citizens or citizens of their member countries in respect of grant of patents and protection of patent rights shall be a convention country under the Patents Act. (Patents Act 1970, s 133.) Pursuant to its powers under s 133(1), the Central Government has notified a list of countries and inter-Governmental organizations as convention countries. This includes custom territories, EPO, ARIPO and other inter-governmental organisations. Where a person makes an application for a patent in a convention country and follows it up with an application for patent in India for the same invention within 12 months from the date of the application in the convention country, the priority date of the application made in India shall be the date of application in the convention country. (Patents Act 1970, s 135.) The expression 'applicant' will be construed to include one or more applicants. (Patents Act 1970, s 6(2). See Switzer's Patent (1958) RPC 415, p 417.)

12Section 133 was amended and came into effect from 1 January 2005. For applications filed before this date, the earlier provision will apply. Section 133 before the said amendment read: 133. Notification as to Convention Countries (1) With a view to the fulfillment of a treaty, convention or arrangement with any country outside India which affords to applicants for patents in India or to citizens of India similar privileges as are granted to its own citizens in respect of the grant of patents and the protection of patent rights, the Central Government may, by notification in the Official Gazette, declare such country to be a convention country for the purposes of this Act. (2) A declaration under sub-section (1) may be made for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Act is in force shall be deemed to be a convention country for the purposes of those provisions only. Explanation—For the purposes of this Chapter ‘country’ includes group or union of countries or Inter-Governmental organisation.