Understand the international framework governing intellectual property, and apply treaty-based procedures to secure protection for a computing innovation in multiple jurisdictions.
Lecture 1 established what IP is; Lecture 2 established how a patent is obtained in one country. This lecture addresses the consequence of territoriality — how a national right is projected across borders, and where it stops.
These notes consolidate three syllabus topics — the international scenario, international cooperation and grant procedures, and patenting under the PCT. Sections 3–8 cover the treaty architecture; Sections 11–16 cover the procedures you will actually use.
One sentence carries the lecture: there is no such thing as an international patent. The PCT is a filing and search procedure, not a grant procedure. Section 13.3 develops the consequence.
Be precise with terminology. “International application”, “international patent”, “national phase application” and “regional patent” are not interchangeable, and sloppy usage signals incomplete understanding to an examiner.
1. Learning Outcomes
- Describe the Paris Convention, the Berne Convention and the TRIPS Agreement, and state the core principle of each.
- Explain WIPO’s role and differentiate multilateral, regional and bilateral mechanisms of IP cooperation.
- Interpret global patenting trends and the harmonisation debate, including TRIPS-plus obligations against TRIPS flexibilities.
- Analyse cross-border filing procedures and compare the Paris Convention route with the PCT route.
- Trace a PCT application through its international and national phases, with the governing deadlines and fees.
- Compare procedural and substantive patent grant requirements across the United States, Europe, Japan, China and India.
- Formulate a strategic filing recommendation for a software or AI invention in an international context.
2. Why International Cooperation Is Necessary
Recall from Lecture 1 that an IP right is territorial. A patent granted in India confers no rights in the United States. Yet a computer science innovation is deployed globally on the day it ships — so the mismatch between a territorial right and a borderless technology is structural, not incidental.
2.1 The Pre-Convention Era
Before the conventions, an inventor exhibiting at an international exhibition risked losing novelty in every country where they had not yet filed, and foreign nationals were routinely discriminated against by domestic IP offices. The 1873 Vienna Exposition is the usual marker: inventors refused to attend for fear of disclosure, and the resulting pressure led directly to the Paris Convention a decade later.
2.2 The Industrial Revolution as Catalyst
Expanding cross-border trade made divergent national regimes commercially intolerable. The nineteenth and twentieth centuries produced three answers: Paris (1883) for industrial property, Berne (1886) for literary and artistic works, and TRIPS (1994) for everything, with enforcement.
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.
3. The Paris Convention (1883)
3.1 Background and Scope
Signed on 20 March 1883 by eleven states — including Belgium, Brazil, France, Italy, the Netherlands, Portugal, Spain and Switzerland — the Paris Convention was the first major international treaty for the protection of industrial property. It now has over 180 contracting parties.
It applies to industrial property in the broadest sense: patents, utility models, industrial designs, trademarks, service marks, trade names, geographical indications, and the repression of unfair competition.
3.2 National Treatment — Article 2
Foreign nationals of any member state must be afforded the same protection as nationals of the country where protection is sought. This cornerstone principle prevents discrimination based on nationality.
3.3 The Right of Priority — Article 4
An applicant who files in one member state has a priority period during which subsequent filings in other member states are treated as if filed on the original date.
| Type of right | Priority period |
|---|---|
| Patents and utility models | 12 months |
| Industrial designs | 6 months |
| Trademarks | 6 months |
A researcher at IIT Delhi develops a novel federated learning algorithm and files a provisional patent application in India on 15 March 2025. On 10 February 2026 — within the twelve-month priority window — she files a corresponding application in the United States.
The US application is treated, for novelty purposes, as if filed on 15 March 2025, thereby excluding any prior art published between those dates.
This single provision is the most useful the student researcher will ever use: it permits one home filing and then twelve months to decide on foreign filings without losing the original date, dramatically reducing cost and risk.
3.4 Independence of Patents — Article 4bis
Patents obtained in different member states are independent of one another. The grant, scope or termination of a patent in one country does not affect its status in another.
3.5 Common Rules and Limitations
The Convention sets minimum standards: patents may not be denied solely because the product is imported; compulsory licensing is permitted under certain conditions to prevent abuse; and the patent owner may prevent importation of products manufactured without consent.
Paris sets only broad principles and minimum standards. It provides no system for international registration or examination. Substantive patent law remains governed by national law. That gap is precisely what the Patent Cooperation Treaty, 87 years later, was built to fill.
4. The Berne Convention (1886)
4.1 Background and Scope
Completed in 1886 and revised several times, most recently in Paris in 1971, the Berne Convention is administered by WIPO and has over 180 contracting parties. It protects “literary and artistic works”, including books and writings, lectures, dramatic and musical works, cinematographic works, drawings, paintings, architecture, sculpture, photographic works, applied art, and translations and adaptations.
Computer programs are explicitly included under “literary works” in jurisdictions implementing Berne — a position affirmed by the WIPO Model Provisions and by TRIPS.
4.2 Three Core Principles — Article 5
- Automatic protection. Protection requires no registration, formality or deposit. Once a work is created and fixed in a tangible medium it qualifies for protection in all Berne member states. This contrasts sharply with patent law, where registration is mandatory.
- National treatment. Works originating in one member state must receive the same protection in other member states as works of national origin.
- Independence of protection. Protection is independent of whether the work is protected in its country of origin. A work in the public domain at home may still be protected abroad.
4.3 Minimum Standards
Economic rights: translation (Art. 8), reproduction (Art. 9), public performance and communication (Art. 11), broadcasting (Art. 11bis), recitation (Art. 11ter), and adaptation and arrangement (Art. 12).
Moral rights (Art. 6bis): the right of paternity, and the right of integrity — to object to distortion or modification harmful to honour or reputation.
Duration (Art. 7): the general rule is life of the author plus 50 years. Many member states now provide life plus 70; India provides life plus 60.
4.4 The Three-Step Test — Article 9(2)
Any limitation or exception to the reproduction right must:
- be confined to certain special cases;
- not conflict with a normal exploitation of the work; and
- 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.
5. The TRIPS Agreement (1994)
5.1 Background
The Agreement on Trade-Related Aspects of Intellectual Property Rights was negotiated during the Uruguay Round of GATT and entered into force on 1 January 1995 as part of the Marrakesh Agreement establishing the World Trade Organization.
TRIPS represented a paradigm shift. Unlike Paris and Berne — WIPO-administered treaties focused on cooperation among IP offices — TRIPS is a trade agreement with binding enforcement through the WTO dispute settlement system. That is what changed everything.
5.2 Core Obligations
TRIPS obliges all WTO members to grant national treatment to foreign right holders and most-favoured-nation treatment — any advantage granted to nationals of one member must be extended to all members.
| IP domain | TRIPS provisions |
|---|---|
| Copyright and related rights | Articles 9–14 |
| Trademarks | Articles 15–21 |
| Geographical indications | Articles 22–24 |
| Industrial designs | Articles 25–26 |
| Patents | Articles 27–34 |
| Layout designs of integrated circuits | Articles 35–38 |
| Undisclosed information (trade secrets) | Articles 39–40 |
| Anti-competitive practices | Article 40 |
5.3 Patent Provisions
- Patentable subject matter (Article 27(1)). Patents must be available for inventions in all fields of technology, whether products or processes, provided they are new, involve an inventive step, and are capable of industrial application.
- Non-discrimination (Article 27(1)). Patents must be granted without discrimination as to place of invention, field of technology, or whether products are imported or locally produced.
- Term of protection (Article 33). The patent term shall not end before 20 years from the filing date.
- Compulsory licensing (Article 31). Permitted under specific conditions, including public non-commercial use, anti-competitive practices, or dependent patents.
5.4 Enforcement and Dispute Settlement
TRIPS Part III requires members to provide effective enforcement: civil and administrative remedies; provisional measures including border enforcement; and criminal procedures for wilful trademark counterfeiting and commercial-scale copyright piracy.
Its crucial innovation is the integration of IP disputes into the WTO dispute settlement system, with binding rulings by WTO panels and the Appellate Body.
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.
5.5 The Doha Declaration (2001)
Recognising public health concerns in developing countries, the Doha Declaration on TRIPS and Public Health 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.”
6. Comparative Overview of the Three Frameworks
| 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 |
It is the whole difference. Paris and Berne relied on good faith between IP offices. TRIPS made IP obligations enforceable through trade sanctions, which is why compliance became non-optional in 1995 — and why Indian patent law changed.
7. The World Intellectual Property Organization
WIPO is a specialised agency of the United Nations and the principal institutional forum for international IP cooperation. Its five core functions are:
- Treaty administration. WIPO administers Paris, Berne, the PCT, the Madrid System for the international registration of marks, the Hague System for industrial designs, Lisbon and Budapest.
- International registration systems. The operational machinery behind PCT, Madrid and Hague filings.
- Policy coordination. Intergovernmental negotiation on emerging issues including genetic resources, traditional knowledge and artificial intelligence.
- Technical assistance. Capacity building for developing countries — training, legislative advice and databases such as PATENTSCOPE.
- Dispute resolution. Arbitration and mediation services, including domain-name disputes through the WIPO Arbitration and Mediation Center.
WIPO also administers the International Patent Classification (IPC) and the Nice Classification for trademarks — the vocabulary on which the classification search of Lecture 2 depends.
WIPO runs the procedures; the WTO enforces the obligations. The two organisations cooperate under a 1995 agreement to provide technical and legal assistance on TRIPS implementation. Confusing WIPO-administered treaties with TRIPS is a common examination error.
8. Regional and Bilateral Cooperation
8.1 Regional Patent Systems
- European Patent Convention (EPC) and the EPO. A single grant procedure producing a European patent validated nationally in designated states. The 2012–13 package created the Unitary Patent and Unified Patent Court — a true EU-wide patent and the clearest example of unification rather than harmonisation.
- ARIPO and OAPI. The African Regional Intellectual Property Organization (anglophone Africa) and the Organisation Africaine de la Propriété Intellectuelle (francophone Africa).
- Eurasian Patent Convention (EAPC). Regional coverage of Eurasian states.
- Gulf Cooperation Council Patent Office, and the proposed ASEAN patent system.
8.2 Harmonisation Treaties
- Strasbourg Agreement (1971, amended 1979) — established the International Patent Classification used by patent offices worldwide.
- Patent Law Treaty (2000) — a WIPO-administered treaty harmonising formal requirements: filing procedures, representation and restoration of priority rights.
- Substantive Patent Law Treaty negotiations (2000–2006) — aimed at harmonising substantive law (prior art, novelty, inventive step, grace period). These stalled over disagreement between developed and developing countries, particularly on disclosure requirements and prior user rights.
8.3 Bilateral Agreements
Free trade agreements increasingly carry IP chapters imposing obligations beyond TRIPS — so-called TRIPS-plus provisions, such as longer patent terms, data exclusivity and stricter enforcement. The Patent Prosecution Highway (PPH) programmes between offices are a more benign bilateral mechanism, allowing accelerated examination where another office has already found claims allowable.
9. Global Trends in Patenting
9.1 Volume and Geographic Concentration
Patent applications worldwide have grown from roughly 1 million in the early 2000s to over 3.5 million in recent years, reflecting increased global R&D investment, strategic corporate patenting, the expansion of patent systems into emerging economies, and growth in software, biotechnology, AI and clean energy.
Activity nevertheless remains highly concentrated. CNIPA (China), the USPTO, the 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; five of the top ten offices are now in Asia.
9.2 Sectoral Distribution
- Digital communication and computer technology, including AI and machine learning innovations
- Electrical machinery and energy — batteries, semiconductors, renewables
- Pharmaceuticals and biotechnology
- Transportation — electric vehicles, autonomous driving
- Medical technology — diagnostics and devices
9.3 Four Live Controversies in Computer Science Patenting
- Software patent eligibility remains genuinely contested, with the USPTO and EPO applying different tests, and Indian law excluding computer programs per se while admitting software-implemented inventions with a technical effect.
- AI-generated inventions. 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.
- Open source and patents. Tension between open-source licensing and patent aggression has produced defensive institutions such as the Open Invention Network, the LOT Network, and patent non-assertion pledges.
- Standard-essential patents. Patents covering technologies written into standards — 4G/5G, Wi-Fi, video codecs — raise complex FRAND licensing questions.
9.4 Developing Countries
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-related 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 international PCT filings.
10. Harmonisation of IP Laws
10.1 The Spectrum
- Minimum standards harmonisation — setting baseline obligations. The TRIPS approach.
- Substantive harmonisation — aligning the actual content of laws: definitions of patentability, term, scope.
- Procedural harmonisation — aligning administrative procedures and examination standards.
- Unification — creating a single supranational right, as with the European Patent with Unitary Effect.
10.2 Five Drivers
- Trade integration. As goods and services cross borders, divergent IP laws create compliance costs.
- Technology convergence. Digital technologies make territorial distinctions increasingly anachronistic.
- Patent quality concerns. Inconsistent standards, notably on software patentability, invite forum shopping.
- Administrative efficiency. Common procedures reduce duplication for applicants and offices.
- Anti-counterfeiting. Global supply chains require coordinated enforcement.
10.3 Six Obstacles
- National sovereignty. Countries guard their legal traditions, particularly on public health, traditional knowledge and economic development.
- Diverse legal traditions. Common law and civil law systems approach IP differently.
- Development levels. Developing countries resist harmonisation perceived as locking in standards favourable to advanced economies.
- Political economy. Powerful industries lobby for or against harmonisation depending on competitive position.
- Emerging issues. Rapid technological change in AI, blockchain and biotechnology outpaces diplomatic processes.
- Enforcement variability. Even with harmonised laws, enforcement quality varies dramatically.
The standing tension in international IP discourse:
TRIPS-plus obligations in bilateral and regional FTAs — USMCA, EU FTAs — impose requirements beyond TRIPS such as longer patent terms, data exclusivity and stricter enforcement.
TRIPS flexibilities — compulsory licensing, parallel importation, transition periods — are contained in TRIPS itself and are what developing countries seek to preserve.
The 2001 Doha Declaration came down firmly on the side of the flexibilities where public health is concerned.
11. Cross-Border Filing Strategy
Before initiating cross-border filing, a computer science researcher should evaluate six questions:
- Commercial markets. Where will the invention be manufactured, sold or licensed? File where the money is, not where the laboratory is.
- Competitor activity. Where do competitors file, and where is infringement most likely?
- Enforcement infrastructure. Which jurisdictions offer effective patent enforcement? A right you cannot enforce is an expense.
- Cost–benefit analysis. Filing costs must be weighed against anticipated returns. A five-country national phase runs USD 15,000–80,000 including attorney fees and translations.
- Publication strategy. Premature publication prejudices patentability, and grace periods are limited and jurisdiction-specific.
- Open-source considerations. Public disclosure through GitHub, arXiv or a conference paper affects novelty, requiring careful timing relative to filing.
Publishing a paper on arXiv before filing destroys novelty in a strict-novelty jurisdiction. Researchers must either time publications around filings, or file before disclosure. There is no third option.
12. The Paris Route versus the PCT Route
| 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 |
| Translation | Immediate | Deferred to national phase |
| 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.
13. The Patent Cooperation Treaty
13.1 Genesis and Structure
Concluded in 1970 and in force from 1978, the PCT is administered by WIPO and now has over 150 contracting states. It unifies the procedural initial stages of patent filing across those states.
India joined the PCT on 7 December 1998, designated the Indian Patent Office as a Receiving Office, and later acquired status as an International Searching Authority and International Preliminary Examining Authority — so an Indian applicant can now have the international search conducted domestically.
13.2 Five Bodies
| Body | Role |
|---|---|
| International Bureau (IB) | Housed within WIPO in Geneva; administers the treaty, publishes applications, transmits documents |
| Receiving Office (RO) | The national or regional office, or WIPO itself, where the application is filed |
| International Searching Authority (ISA) | Conducts the prior-art search; issues the ISR and Written Opinion |
| International Preliminary Examining Authority (IPEA) | Performs the optional, non-binding preliminary examination under Chapter II |
| Designated / Elected Offices (DO/EO) | The national or regional offices that examine and grant in the national phase |
13.3 Five Objectives
- Unified filing procedure. A single international application has the effect of a national filing in every designated state.
- Avoidance of duplication of effort. Search and examination are streamlined so that work is not repeated in every office.
- Extended priority period. Substantial national filing costs are deferred by an additional 18 months.
- Information dissemination. Publication of applications and search reports provides technical information to the public.
- Facilitating technology transfer. Technical information is made accessible, particularly to developing countries.
The PCT does not grant an “international patent”. It is a filing and search procedure, not a grant 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.
14. The International Phase
14.1 Filing the International Application
The applicant files a single application at a competent Receiving Office. It comprises a request (Form PCT/RO/101 or ePCT filing), a description of the invention, one or more claims, drawings if applicable, and an abstract. Transmittal, search and international filing fees are paid. The filing date becomes the international filing date, provided the application meets the minimum requirements of PCT Article 11.
14.2 International Search
After approximately 16 months from the priority date, the ISA conducts a comprehensive prior art search and issues:
- International Search Report (ISR) — relevant prior art documents classified according to international patent classification codes.
- Written Opinion of the ISA — a preliminary, non-binding opinion on novelty, inventive step and industrial applicability.
The applicant has two months, or three from the mailing date of the search report, to amend claims before publication — an opportunity to refine the scope of protection in light of what the search found.
14.3 International Publication
The application is published by the International Bureau approximately 18 months from the priority date. Publication includes the application as filed, any amended claims, the ISR and, later, the IPRP. It is accessible via PATENTSCOPE, and confers provisional protection in designated states.
14.4 Supplementary International Search (Optional)
The applicant may request a supplementary search by a different ISA, to cover prior art not retrieved in the main search — documents in non-English languages, or in specialised databases.
14.5 International Preliminary Examination (Optional, Chapter II)
Under Chapter II the applicant may file a demand (Form PCT/IPEA/401) within 22 months of the priority date. The IPEA issues an International Preliminary Report on Patentability (IPRP). Although non-binding on national offices, it carries persuasive weight and helps the applicant to:
- Assess the likely strength of the patent before incurring national phase costs.
- Amend the application to address substantive objections.
- Make informed decisions about which national phases to enter.
15. The National Phase
The national phase begins when the applicant files with individual designated or elected Offices. Five obligations arise:
- Deadline. Generally 30 months from the priority date; some Offices allow 31 or 32 months, for example Australia and Europe.
- Translations into the official language or languages of each designated state.
- National fees — filing, examination, grant and annuities applicable in each jurisdiction.
- Representation — engagement of local patent attorneys or agents in most jurisdictions.
- National examination according to each state’s own substantive patent law.
Carries over: the international search and examination may be used by national offices. Several, including the EPO and JPO, provide accelerated examination using PCT results, and the Patent Prosecution Highway formalises this.
Does not carry over: the grant decision. Each office applies its own patentability law — which is why a claim surviving at the EPO may fail under §101 in the United States or Section 3(k) in India.
15.1 Regional Filing Routes
For jurisdictions participating in regional systems, applicants may file a direct regional application (for example a European patent 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.
16. Timelines and Fees
16.1 Key Milestones from the Priority Date
| Milestone | Timeline |
|---|---|
| Priority date established | 0 months |
| International application filing (PCT) | up to 12 months |
| International search report and written opinion | ~16 months |
| International publication | ~18 months |
| Deadline for Chapter II demand | 22 months (varies by Office) |
| National phase entry deadline | 30 months (31 in some states) |
| Restoration opportunity | after 30 months, subject to conditions |
Restoration and extensions. PCT Rules 26bis.1 and 26bis.3 provide for restoration of the right of priority and of the international application in designated Offices. Many Offices allow late national phase entry under specific conditions with additional fees.
16.2 Fee Structure
International phase fees:
- Transmittal fee — charged by the Receiving Office; varies by Office.
- International filing fee — approximately CHF 1,330 for the first 30 sheets, with reductions for online filing.
- Search fee — charged by the chosen ISA, ranging from CHF 200 to CHF 2,000.
- Preliminary examination fee — charged by the IPEA under Chapter II.
- Supplementary international search fee — optional.
National phase fees vary significantly by jurisdiction and include filing, examination, grant and annuity fees. For a typical five-country filing, national phase costs may range from USD 15,000 to USD 80,000 including attorney fees and translations.
- 75% reduction on international filing, search and preliminary examination fees for natural persons and small entities from eligible developing countries.
- 90% reduction for academic institutions in certain states.
- Online filing discounts — for example CHF 200 off the filing fee via ePCT.
Most students are unaware these exist. They materially change the calculus for a university filing.
17. Patent Grant Procedures Across Jurisdictions
17.1 Comparative Overview
| Element | United States | Europe (EPO) | Japan | China | India |
|---|---|---|---|---|---|
| Novelty | Absolute, with grace period 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 | 20 years from filing | 20 years from filing | 20 years from filing | 20 years from filing |
Novelty: Europe has no grace period, so an arXiv preprint is fatal there even where the United States would forgive it.
Software approach: the same claim may be granted in Tokyo, narrowed in Munich and refused in Delhi.
18. Software and AI Patentability Across Jurisdictions
18.1 United States — the Alice/Mayo Framework
Step 1: does the claim recite a patent-ineligible concept — a law of nature, a natural phenomenon, or an 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-related claims have been invalidated under this framework, particularly pure business method patents and abstract algorithms. Claims tied to specific technological improvements, technical effects or novel hardware architectures are considerably more likely to survive.
18.2 European Patent Office — Technical Character
Under the COMVIK approach (T 641/00) and the EPO’s Guidelines for Examination (2024 revision), a computer-implemented invention is examined for technical character. An invention producing a technical effect beyond the normal interactions between software and hardware is patent-eligible.
The 2024 Guidelines clarified that: AI and machine learning are acceptable as technical means when applied to a technical purpose; mathematical methods alone are not patentable but may be patentable when contributing to technical character; and training methods for neural networks may be patentable where the trained network has a technical application.
18.3 China and India
China has emerged as a leading jurisdiction for AI-related patent filings. Examination guidelines recognise AI, big data and blockchain as technical fields where concrete technical solutions are disclosed.
India excludes computer programs per se under Section 3(k), though software-implemented inventions demonstrating a technical effect or technical advancement remain patentable under the revised CRI guidelines. In practice this is the narrowest of the four positions.
Claim the technical improvement, not the idea.
A claim framed as “a method of training a neural network wherein the gradient update is computed using a novel pruning threshold” survives where “a computerised method of doing X” does not.
19. Worked Case: A Federated Learning Algorithm in Five Countries
A university research team in India develops a novel federated learning algorithm with privacy-preserving enhancements. The team wishes to protect the invention in the United States, Europe, China, Japan and South Korea.
19.1 Without the PCT — the Paris Route
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 the team’s own searching.
19.2 With the PCT
| Month | Step |
|---|---|
| 0 | Indian provisional establishes priority |
| 12 | One PCT application filed at the Indian Patent Office as Receiving Office |
| 16 | ISR and Written Opinion arrive — the first real external evidence on patentability |
| 18 | International publication on PATENTSCOPE; may attract licensees or investors |
| 22 | Optional Chapter II demand to refine claims against the Written Opinion |
| 30 | Enter the national phase only in the countries still worth it |
The PCT route buys eighteen additional months of information and market evidence, and the option to abandon before spending if the ISR is unfavourable.
19.3 The Work That Remains
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.
20. Summary
- Paris (1883) — national treatment and the 12-month right of priority; no international registration system.
- Berne (1886) — automatic protection without formalities, moral rights, and the three-step test.
- TRIPS (1994) — minimum standards across all IP, with binding WTO dispute settlement. That is the difference from everything before it.
- WIPO runs the procedures; the WTO enforces the obligations.
- Filing is concentrated in five offices, led by China since 2011–12, and dominated by digital and computer technology.
- Harmonisation runs from minimum standards to unification, driven by trade and convergence, obstructed by sovereignty and development concerns.
- The PCT is a filing and search procedure, buying 18 extra months and an ISR — not an international patent.
- Software patentability diverges sharply: Alice/Mayo in the US, technical character at the EPO, Section 3(k) in India.
21. Exam Preparation
- Founding dates and original signatories of the Paris and Berne Conventions.
- The 12-month and 6-month priority periods under Paris.
- The three-step test under Berne Article 9(2).
- The 20-year minimum patent term under TRIPS Article 33.
- The seven IP domains covered by TRIPS.
- The Doha Declaration principles.
- The distinction between national treatment and most-favoured-nation treatment.
- The PCT timings: 12-month priority, 16-month ISR, 18-month publication, 22-month Chapter II demand, 30-month national phase entry.
- The five PCT bodies: IB, RO, ISA, IPEA, DO/EO.
Two recurring errors: confusing WIPO-administered treaties with TRIPS; and using “international application”, “international patent”, “national phase application” and “regional patent” interchangeably.
21.1 Short-Answer Questions
- What is the right of priority under the Paris Convention, and why is it commercially important? 3 marks
- Differentiate between automatic protection under the Berne Convention and registration-based protection under the Paris Convention. 3 marks
- List the seven categories of IP covered by TRIPS. 3 marks
- What is the three-step test, and in which treaty article is it found? 2 marks
- State the minimum term of patent protection under TRIPS. 1 mark
- Explain the principle of territoriality in patent law and how it necessitates international cooperation. 3 marks
- Distinguish between the international phase and the national phase of a PCT application. 3 marks
- Outline the principal functions of WIPO as they relate to patent applicants. 3 marks
- What is the role of the International Searching Authority, and how does its report influence subsequent prosecution? 3 marks
- Why is the PCT not considered a granting treaty? What implications does this have for applicants? 3 marks
21.2 Long-Answer and Analytical Questions
- Compare and contrast the Paris Convention and the Berne Convention with respect to scope, principles and protection mechanism. 10 marks
- Discuss the tension between TRIPS flexibilities and TRIPS-plus obligations in bilateral free trade agreements. 10 marks
- Analyse the Novartis v. Union of India decision in light of TRIPS obligations. 10 marks
- Compare the patentability of computer-implemented inventions under the Alice/Mayo framework in the United States with the “technical character” requirement at the EPO. Discuss the implications for AI-related applications. 12 marks
- Discuss the structural objectives of the PCT and explain how they benefit inventors seeking multi-country protection. 10 marks
- Compare and contrast the PCT route with the Paris Convention route. Which is more advantageous for a CS startup, and why? 10 marks
- Critically evaluate the role of bilateral and regional IP agreements in facilitating cross-border patent protection, using specific examples such as the EPO, PPH programmes and FTA IP chapters. 10 marks
- Discuss the strategic value of opting for Chapter II preliminary examination. Under what circumstances should an applicant skip it? 8 marks
21.3 Applied and Numerical Questions
- An inventor in India files a patent application on 1 March. By what date must she file corresponding applications in other Paris Convention states to preserve priority? 2 marks
- An inventor files a provisional application on 1 January 2024. Calculate: (a) the last date to file a PCT application claiming priority; (b) the approximate date of international publication; (c) the deadline for national phase entry. 5 marks
- A computer science research team at an Indian university develops a novel federated learning algorithm and contemplates international protection. Outline a strategic filing plan, discussing the role of the Paris priority right, the PCT international phase, and national phase entry considerations. Justify your choices with reference to commercial markets, filing costs and enforcement. 15 marks
- A multinational technology company has developed a novel AI-based cybersecurity solution. Outline a PCT-based strategy for securing protection in the US, EU, China, Japan and South Korea, including timelines, fees and procedural considerations. 15 marks
(a) 1 January 2025 — 12 months from priority. (b) Approximately 1 July 2025 — 18 months from priority. (c) Approximately 1 July 2026 — 30 months from priority, or 31 months in certain Offices.
22. Suggested Reading
- WIPO. PCT Applicant’s Guide. The comprehensive procedural reference; read the International Phase volume.
- WIPO PCT website, https://www.wipo.int/pct/ — official treaty text, forms and current fee schedules.
- Paris Convention for the Protection of Industrial Property (1883) — read Articles 2, 4 and 4bis directly.
- Berne Convention for the Protection of Literary and Artistic Works (1886) — read Articles 5, 6bis, 7 and 9(2) directly.
- Agreement on Trade-Related Aspects of Intellectual Property Rights (1994) — read Articles 7, 27, 31 and 33 directly.
- Doha Declaration on the TRIPS Agreement and Public Health (2001), WTO.
- EPO. Guidelines for Examination, Part G-II 3.6 (Computer-Implemented Inventions), 2024 revision.
- Indian Patent Office. Guidelines for Examination of Computer Related Inventions (CRI), 2017.
- WIPO. World Intellectual Property Indicators — the annual source for the filing statistics in Section 9.
- Novartis AG v. Union of India, (2013) 6 SCC 1; Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).