Hague, PCT, Madrid -> Timeline -> My Dilemma + Proposal

There’re some procedural similarities & differences between PCT, Madrid & Hague System, which the present blog discusses, as how they are poles apart, but, still have similar foundational structure. So far, previous blogs briefly discussed: Online Contracts, parts of IP (Pat/D/TM/C) / IT Act, Domain Arbitrations, Domestic/International prosecution etc.

Now, basic thumb rule is: (Hague -> Design) -> (PCT -> Patent) -> (Madrid -> Trademarks). All based on Single Application System for International Filing. In previous blogs, I’ve already briefly elucidated PCT, Madrid & Hague. This blog is restricted to timeline & a proposal, as why change is needed. PCT filed within 12 months, Industrial Design, 6 months & Madrid, 6 Months -> (Article 4 of Paris Convention,  Rule 9(4)(a)(iv) of Madrid Regulation)s from earliest priority. Whilst Madrid is based on NICE classification, Hague is on Locarno classification for Industrial Designs. Patent is subjective & depends on claims, anticipation, priority. Timeline differs. In Patent, one gets around 18 months of additional timeline to enter National Phase (Total in 30-31 Months from date of priority –> Article 22 of PCT) rather directly (within 12 months from date of priority), had not entered through PCT, after going through the process of International Filing -> International Search -> Publication -> Supplementary Search, minus, National Phase Entry -> Decision. In the Madrid, the timeline is based on the Response (Refusal/Accept/Invalidation) generated by the designated offices, that is somewhere between 12-18 months (Rule 17 to 19 of Madrid Regulations), post publication in Gazette. And almost similar for the Hague based too (Rule 18 of Hague Regulation) (depending on publication). Whilst in Madrid, one requires a basic application/registration; in PCT, Nope (subject to secrecy or other foreign application demanding, filing clauses & protocols (eg. S. 39 of Patent Act)), & so as in Industrial Design alike PCT.    

My issue is with the International Search, Supplementary Search (no matter if optional) & then National Phase Search in PCT. This is too procedural & waste of time. The similar issue I’ve with the Madrid & Hague System. At the International Prosecution Level, we must have only a single source of Examination System, binding on the National Phase Offices. Such Examination must include the data from National/Regional Databases. When Application reaches National/Regional/Designated Office Phase, it must only be subjected to procedural defects / invalidations / irregularity / oppositions. Except Oppositions, which would be subjected to Domestic laws; other defects shall be removed at WIPO only, including Reply to Examination (cited prior art or existing marks or industrial designs). In person Hearing can be directed to any Panelist of the Designated Office, arranged by WIPO. If WIPO is playing an interface for something, it must define certain methods, implemented by Everyone. And as Oppositions & beyond Actions (including limitations) are unanticipated, let that part take place at Domestic Level. Here, Designated Offices would get their share of filing & conducting preliminary hearings at Examination. WIPO would play an interface. And all Registrations through Hague, Madrid, PCT would then be arranged then by WIPO, as been currently done. 😊

© Pranav Chaturvedi