CSEG3060 · Research Methodology in Computer Science
Paris, Berne and TRIPS · WIPO and international cooperation · global patenting trends and harmonisation · filing abroad under the PCT
There is no such thing as an international patent. The PCT is a filing and search procedure — not a grant procedure.
Unit V · Lecture 3 of 3 · 60 minutes · CO3 · B.Tech (CSE) Semester V
Dr. Mohsin Furkh Dar · School of Computer Science, UPES
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Learning outcomes · CO3
Describe the Paris Convention, Berne Convention and TRIPS, and state the core principle of each
Explain WIPO’s role and the mechanisms of multilateral, regional and bilateral IP cooperation
Interpret global patenting trends and the harmonisation debate, including TRIPS-plus versus TRIPS flexibilities
Compare the Paris route and the PCT route, and choose between them for a given filing strategy
Trace a PCT application through its international and national phases, with the governing deadlines
Compare software and AI patentability across the US, Europe, Japan, China and India
The problem
An inventor exhibiting at an international exhibition risked losing novelty in every country they had not yet filed in. Foreign nationals were routinely discriminated against by domestic IP offices.
Cross-border trade made divergent national regimes commercially intolerable. The 1873 Vienna Exposition is the usual marker: inventors refused to attend for fear of disclosure.
Paris, 1883 — industrial property
Berne, 1886 — literary and artistic works
TRIPS, 1994 — everything, with teeth
They establish national treatment, minimum standards and procedural mechanisms for filing across borders. They do not create a global IP right. Substantive patent law — what is patentable, how it is examined, how long it lasts — remains national.
Framework · 1 of 3
Industrial property in the broadest sense: patents, utility models, industrial designs, trademarks, service marks, trade names, geographical indications, and the repression of unfair competition.
Signed 20 March 1883 by 11 states; over 180 contracting parties today.
| Patents and utility models | 12 months |
| Industrial designs | 6 months |
| Trademarks | 6 months |
File once at home, then have twelve months to decide on foreign filings without losing the original date. This single provision dramatically reduces cost and risk.
Foreign nationals of any member state must receive the same protection as nationals of the country where protection is sought. No discrimination by nationality.
Patents in different member states are independent. Grant, scope or termination in one country does not affect status in another.
Paris sets only broad principles and minimum standards. It provides no system of international registration or examination. That gap is what the PCT, 87 years later, was built to fill.
Worked example — a researcher at IIT Delhi files a provisional in India on 15 March 2025. On 10 February 2026, within the 12-month window, she files in the United States. The US application is treated, for novelty, as if filed on 15 March 2025 — excluding any prior art published between those dates.
Framework · 2 of 3
Automatic protection. Protection requires no registration, formality or deposit. Once a work is created and fixed in a tangible medium it is protected in all member states. This contrasts sharply with patent law.
National treatment. Works originating in one member state receive the same protection elsewhere as works of national origin.
Independence of protection. Protection abroad is independent of protection in the country of origin — a work in the public domain at home may still be protected elsewhere.
Economic rights: translation (Art. 8) · reproduction (Art. 9) · public performance and communication (Art. 11) · broadcasting (Art. 11bis) · recitation (Art. 11ter) · adaptation and arrangement (Art. 12)
Moral rights (Art. 6bis): paternity and integrity
Duration (Art. 7): life of the author + 50 years as the general rule; many states now provide life + 70. India provides life + 60.
Computer programs are explicitly included under “literary works” in jurisdictions implementing Berne — a position affirmed by the WIPO Model Provisions and by TRIPS.
Any limitation or exception to the reproduction right must: (1) be confined to certain special cases; (2) not conflict with normal exploitation of the work; and (3) not unreasonably prejudice the legitimate interests of the author.
Transposed into TRIPS and the WIPO Copyright Treaty, this test now governs fair dealing and fair use analysis worldwide.
Framework · 3 of 3
| Copyright and related rights | Arts. 9–14 |
| Trademarks | Arts. 15–21 |
| Geographical indications | Arts. 22–24 |
| Industrial designs | Arts. 25–26 |
| Patents | Arts. 27–34 |
| Layout designs of ICs | Arts. 35–38 |
| Undisclosed information | Arts. 39–40 |
Art. 27(1) — patents must be available in all fields of technology, product or process, if new, inventive and industrially applicable; and without discrimination as to place of invention, field of technology, or whether the product is imported or locally produced.
Art. 33 — the term shall not end before 20 years from the filing date.
Art. 31 — compulsory licensing is permitted under specific conditions: public non-commercial use, anti-competitive practices, or dependent patents.
Plus national treatment and most-favoured-nation treatment: any advantage granted to one member’s nationals extends to all.
Framework · 3 of 3, continued
Members must provide civil and administrative remedies, provisional measures including border enforcement, and criminal procedures for wilful trademark counterfeiting and commercial-scale copyright piracy.
Crucially, IP disputes enter the WTO dispute settlement system, with binding panel and Appellate Body rulings.
India — Patent Protection for Pharmaceutical and Agricultural Chemical Products (DS50, 1997). Challenged India’s lack of product patent protection for pharmaceuticals, and led directly to the amendments that culminated in 2005.
United States — Section 110(5) of the US Copyright Act (DS160, 2000). Concerned exemptions for music performance in restaurants and bars.
Recognising public health concerns in developing countries, Doha clarified that TRIPS should not prevent members from taking measures to protect public health. It affirmed the right to use compulsory licensing and parallel importation of patented pharmaceuticals, and a 2003 waiver permitted export of products manufactured under compulsory licence.
The operative language: TRIPS “should be interpreted and implemented in a manner supportive of WTO members’ right to protect public health and, in particular, to promote access to medicines for all.”
Consolidation
| Feature | Paris Convention | Berne Convention | TRIPS |
|---|---|---|---|
| Year | 1883 | 1886 | 1994 |
| Subject matter | Industrial property | Literary and artistic works | All IP |
| Administration | WIPO | WIPO | WTO |
| Registration required | Yes, for patents and marks | No — automatic | Varies by right |
| Core principle | National treatment; right of priority | Automatic protection; national treatment | Minimum standards; MFN; enforcement |
| Binding dispute settlement | No | No | Yes — WTO mechanism |
| Term | Variable | Life + 50 minimum | 20 years for patents |
| Coverage | ~180 countries | ~180 countries | 164 WTO members |
Institutions
Paris, Berne, the PCT, the Madrid System for marks, the Hague System for designs, Lisbon, Budapest.
The operational machinery behind PCT, Madrid and Hague filings.
Intergovernmental negotiation on emerging issues — genetic resources, traditional knowledge, and AI.
Capacity building for developing countries: training, legislative advice, and databases such as PATENTSCOPE.
Arbitration and mediation, including domain-name disputes through the WIPO Arbitration and Mediation Center.
WIPO administers the International Patent Classification (IPC) and the Nice Classification for trademarks — the vocabulary your classification search in Lecture 2 depends on.
The landscape · 1 of 2
Global patent applications have grown from roughly 1 million in the early 2000s to over 3.5 million in recent years.
Driven by rising R&D investment, strategic patenting by corporations, the spread of patent systems into emerging economies, and growth in software, biotech, AI and clean energy.
Activity remains highly concentrated. CNIPA (China), USPTO, JPO, KIPO and the EPO account for the overwhelming majority of filings.
China overtook the United States as the largest filing office around 2011–12, and the gap has widened substantially since. Five of the top ten offices are now in Asia.
India has emerged as a significant pharmaceutical and IT filer, while remaining historically cautious about expansive patentability · Brazil has strengthened its system while retaining health flexibilities · African IP is moving toward a regional framework under the AfCFTA protocol · China has moved from being primarily a receiving country to a major source of PCT filings.
The landscape · 2 of 2
Remains genuinely contested, with the USPTO and EPO applying different tests. Indian law excludes computer programs per se under Section 3(k) but admits software-implemented inventions with a technical effect.
The consequence: the same invention may be patentable in one jurisdiction and ineligible in another. Filing strategy has to account for this.
Several jurisdictions have had to decide whether an AI can be named as inventor. The Thaler v. Comptroller General line of cases — in the UK, at the EPO and elsewhere — has consistently held that an inventor must be a natural person.
Tension between open-source licensing and patent aggression has produced defensive institutions: the Open Invention Network, the LOT Network, and patent non-assertion pledges.
Patents covering technologies written into standards — 4G/5G, Wi-Fi, video codecs — raise complex FRAND licensing questions: fair, reasonable and non-discriminatory terms, and what those words mean when billions are at stake.
The debate
Setting baseline obligations — the TRIPS approach.
Aligning the actual content: definitions of patentability, term, scope.
Aligning administration and examination standards.
A single supranational right — the European Patent with Unitary Effect.
Trade integration — divergent laws create compliance cost · technology convergence — digital technologies make territorial distinctions anachronistic · patent quality — inconsistent standards invite forum shopping · administrative efficiency · anti-counterfeiting across global supply chains
Initiatives: the IPC under the Strasbourg Agreement (1971) · the Patent Law Treaty (2000), harmonising formal requirements · the Substantive Patent Law Treaty negotiations (2000–06), which stalled over disclosure requirements and prior user rights · the EPC and Unitary Patent · ARIPO, OAPI, EAPO, the GCC Patent Office
National sovereignty — especially on public health, traditional knowledge and development · diverse legal traditions — common law versus civil law · development levels — resistance to standards seen as locking in advantages for advanced economies · political economy — industry lobbying · emerging issues — AI and blockchain outpace diplomacy · enforcement variability even where laws align
Strategy
Where will the invention be manufactured, sold or licensed? File where the money is, not where the lab is.
Where do competitors file, and where is infringement most likely to occur?
Which jurisdictions actually offer effective patent enforcement? A right you cannot enforce is an expense.
Filing costs across jurisdictions weighed against anticipated returns. A five-country national phase runs USD 15,000–80,000 with attorney fees and translations.
Premature publication prejudices patentability, and grace periods are limited and jurisdiction-specific.
Disclosure through GitHub, arXiv or a conference paper affects novelty. Timing relative to filing is a decision, not an accident.
Publishing a paper on arXiv before filing in a strict-novelty jurisdiction destroys novelty. Researchers must either time publications around filings, or file before disclosure. There is no third option.
Two routes
| Dimension | Paris Convention direct filing | PCT route |
|---|---|---|
| Initial cost | Lower — no PCT fees | Higher — PCT fees payable up front |
| Delay before national filings | None — must file within 12 months | Approximately 18 additional months |
| Procedural consolidation | None | Unified international phase |
| Search report available | No, unless requested individually | Yes — the ISR from the ISA |
| Suitable for | Single-country filings or rapid prosecution | Multi-jurisdiction filings with a delayed decision |
| Jurisdictions typically pursued | 1–2 | 3 or more |
If you know now which one or two countries you want and you are ready to prosecute, the Paris route is cheaper and faster.
If you want three or more jurisdictions, or you need time and information before committing, the PCT buys you both — at a price.
The PCT does not grant an international patent. It is a filing and search procedure. National phase entry remains complex and jurisdiction-specific, and fees accumulate across both phases. Every patent you end up with is still a national patent.
The PCT · 1 of 4
International Bureau, within WIPO in Geneva. Administers the treaty, publishes applications, and transmits documents.
Receiving Office — the national or regional office, or WIPO itself, where the application is filed.
International Searching Authority — conducts the prior-art search and issues the ISR and Written Opinion.
International Preliminary Examining Authority — performs the optional, non-binding preliminary examination under Chapter II.
Designated / Elected Offices — the national or regional offices that actually examine and grant in the national phase.
Concluded in 1970, in force from 1978, with over 150 contracting states. India joined on 7 December 1998, designated the Indian Patent Office as a Receiving Office, and later acquired ISA and IPEA status — so an Indian applicant can now have the search done domestically.
Unified filing — one application with the effect of a national filing in every designated state · avoiding duplication of search and examination effort · extended priority period, deferring national costs · information dissemination through publication of applications and search reports · facilitating technology transfer, particularly for developing countries.
The PCT · 2 of 4
Filing. A single application at a competent Receiving Office — Form PCT/RO/101 or ePCT — comprising a request, description, one or more claims, drawings if applicable, and an abstract. Pay transmittal, search and international filing fees. The filing date becomes the international filing date if PCT Article 11 minimums are met.
International search, ~16 months from priority. The ISA issues the International Search Report — relevant prior art with classification codes — and a Written Opinion, a preliminary, non-binding view on novelty, inventive step and industrial applicability. The applicant may amend claims before publication.
International publication, ~18 months from priority. The International Bureau publishes the application as filed, any amended claims, and the ISR, via PATENTSCOPE. Publication confers provisional protection in designated states.
Supplementary international search (optional). A second ISA covers prior art the main search may have missed — non-English documents, specialised databases.
International preliminary examination (optional, Chapter II). Demand filed on Form PCT/IPEA/401 within 22 months of priority. The IPEA issues the IPRP — non-binding, but persuasive, and it lets you amend to address substantive objections before incurring national costs.
The PCT · 3 of 4
The international search and examination may be used by national offices. Several, including the EPO and JPO, offer accelerated examination on the strength of PCT results, and the Patent Prosecution Highway formalises this.
What does not carry over: the grant decision. Each office applies its own patentability law — which is why a claim that survives at the EPO may fail under §101 in the United States or Section 3(k) in India.
Applicants may file a direct regional application (for example a European application at the EPO), enter the PCT regional phase (the route most PCT applicants use for European validation), or validate through a regional office such as ARIPO designating multiple African states.
EPC / EPO — a single grant validated nationally, plus the Unitary Patent · ARIPO and OAPI — anglophone and francophone Africa · EAPC — Eurasian states · GCC Patent Office
The PCT · 4 of 4
| Priority date established | 0 months |
| PCT international application filed | up to 12 months |
| ISR and Written Opinion | ~16 months |
| International publication | ~18 months |
| Deadline for Chapter II demand | 22 months |
| National phase entry | 30 months (31 in some) |
| Restoration opportunity | after 30 months, conditional |
PCT Rules 26bis.1 and 26bis.3 allow restoration of the right of priority in designated offices; many offices permit late national phase entry on additional fees.
International phase: transmittal fee (varies by RO) · international filing fee ~CHF 1,330 for the first 30 sheets · search fee, CHF 200–2,000 depending on the ISA · preliminary examination fee under Chapter II · supplementary search fee if requested.
National phase: varies greatly — filing, examination, grant and annuities. A typical five-country filing runs USD 15,000–80,000 including attorney fees and translations.
Reductions that apply to you: 75% off international filing, search and preliminary examination fees for natural persons and small entities from eligible developing countries · 90% for academic institutions in certain states · ePCT online filing discounts.
Comparative law · 1 of 2
| Element | United States | Europe (EPO) | Japan | China | India |
|---|---|---|---|---|---|
| Novelty | Absolute, with a 12-month grace for the inventor’s own disclosures | Strict; no grace period for technical disclosures | Strict; 6-month grace for own disclosures | Strict; limited academic-conference exception | Strict; limited grace for exhibitions |
| Examination request | Not automatic | Automatic on filing, with request | Automatic | Automatic | Within 48 months of priority |
| Average pendency | ~20–24 months | ~24–30 months | ~16–18 months | ~18–22 months | Variable, often long |
| Opposition | Post-grant review, IPR | 9-month opposition after grant | Post-grant opposition | Post-grant invalidation | Pre- and post-grant |
| Software approach | Alice/Mayo — restrictive | Technical character — CII Guidelines | Generally favourable | Increasingly permissive | Restricted, Section 3(k) |
| Term | 20 years from filing — everywhere, by TRIPS Article 33 | ||||
Comparative law · 2 of 2
Step 1: does the claim recite a patent-ineligible concept — a law of nature, natural phenomenon, or abstract idea?
Step 2: if so, is there an inventive concept sufficient to transform the claim into a patent-eligible application?
Many software and AI claims have been invalidated under this framework, especially pure business methods and abstract algorithms. Claims tied to specific technological improvements or novel hardware architectures are far more likely to survive.
A computer-implemented invention is examined for technical character: it must produce a technical effect beyond the normal interaction between software and hardware.
The 2024 EPO Guidelines clarify that AI and machine learning are acceptable as technical means when applied to a technical purpose; mathematical methods alone are not patentable but may contribute to technical character; and training methods for neural networks may be patentable where the trained network has a technical application.
Now a leading jurisdiction for AI-related filings. Examination guidelines recognise AI, big data and blockchain as technical fields where a concrete technical solution is disclosed.
Computer programs per se and algorithms are excluded. Software-implemented inventions demonstrating a technical effect or technical advancement remain patentable under the revised guidelines. This is the narrowest of the four in practice.
Putting it together
File a provisional in India to establish the priority date. Then, within 12 months, file five separate national applications — five sets of translations, five sets of attorney fees, five prosecutions, all committed before any search result is available.
The decision to spend in all five countries must be made at month 12, on no information beyond your own searching.
Month 0 — Indian provisional establishes priority
Month 12 — one PCT application at the Indian Patent Office as RO
Month 16 — ISR and Written Opinion arrive; first real evidence on patentability
Month 18 — publication on PATENTSCOPE; may attract licensees
Month 22 — optional Chapter II demand to refine claims
Month 30 — enter national phase only in the countries still worth it
Eighteen additional months of information and market evidence, and the option to abandon before spending if the ISR is unfavourable.
Even with the PCT, the claims will likely need different emphasis in each national phase: framed around technical character for the EPO, around a specific technological improvement for the USPTO under Alice, and around technical effect for India under Section 3(k). The PCT buys time and information — it does not buy uniformity.
Consolidation · end of Unit V
For your group project, decide: Paris or PCT? Name the countries, justify each against the six questions on slide 12, and state the one date by which you must stop publishing.
Lecture 1 — what IP is and what it protects. Lecture 2 — how a patent is actually obtained. Lecture 3 — how that national right is projected across borders, and where it stops.
End of Unit V — next, Unit VI: Patent Rights and New Developments in IPR: transfer of rights, licensing and infringement, patent databases, and IPR in computer software.