PCT PATENT APPLICATION
IPR Studio have Patent Attorneys fully acquainted with the legalities of PCT Patent Procedures
IPR Studio have Patent Attorneys fully acquainted with the legalities of PCT Patent Procedures
Safeguarding an invention or protection of patents is considered as a dire need among various research institutions, companies & universities. Patent can solely be protected when it is jurisdiction-specific, hence it can only be safeguarded for the country where it has been filed. Through the international application of patent, the applicant can avail patent protection based upon the priority date of preliminary application in other countries and jurisdictions as well. Hence, there lies a need for international patent protection.
There are two options for international patent protection-
WHAT IS PCT?
Patent Cooperation Treaty (PCT) is an international treaty with more than 150 Contracting States, monitored and operated by the World Intellectual Property Organisation (WIPO). PCT aids in seeking patent protection in various countries simultaneously, by filing a single international application instead of filing several separate national/ regional patent applications. The authority to grant patents lies with the national or regional patent office of that particular jurisdiction, which is called the “national phase”
WHEN TO FILE PCT APPLICATION?
A patent applicant who wishes to safeguard their invention in more than one country can file an international patent application through the Paris convention route or through the PCT route. The PCT application gives a time span of 30 months, after the filing from the priority date (in case there is national/ regional patent application with a national or regional patent Office) in order to determine which States the applicant is desiring to seek protection. This time span allows the applicant to determine and appoint local patent agents, prepare important translations, pay national fees etc.
HOW TO FILE PCT APPLICATION?
The approach towards a PCT application filing can be in two ways-
PROCEDURE FOR FILING PCT APPLICATION
The applicant files the PCT application at the regional patent office or directly at the international authority, this application is then examined and scrutinised by the International Search Authority (ISA) in order to determine whether it is patentable or not and thereafter it is published in international journals in order to allow the public at large to know about it and invite oppositions, globally. The final call regarding the granting of patents, lies within the purview and control of the national or regional patent Offices in what is called the “national phase”. The procedures have been analysed below-
A) FILING
An international application needs to be filed with a national/ regional patent office or a direct international application needs to filed with WIPO. The application needs to comply with the PCT formality specifications; a Request Form (Form PCT/ RO/101) along with descriptions, abstracts & drawings which may be required, any claims of the inventions need to be presented during the filing.
The international patent application needs to be one language (English or Hindi). The international patent application can be of any language which the ‘receiving office’ accepts, however, if a language is not accepted by the International Searching Authority (ISA) conducting the international search, furnished a translation of the said application needs to be done for the purposes of international search. In addition to this, the international application needs to be filed in triplicate and a set of fees needs to be paid. All of these activities need to be done within the time span of 12 months of the filing of a local application.
B) INTERNATIONAL SEARCH
“International Searching Authority” (ISA) are the world’s major patent Offices, the availability of a specific ISA to the residents/ national of a country is decided upon the Receiving Office where the international application had been filed. Some receiving Offices provide the option of more than one qualified ISA; in case such a situation occurs the party applying can choose any one of them.
A PCT international search is a highly refined search, which identifies published patent documentation and technical literature (‘prior art’) which can act as a hindrance to the applicant’s invention and its potential to be patentable.
The written opinion of the ISA and the international search report aids in evaluating the applicant’s chances of successfully obtaining the patent. This written opinion is to be made available to the public at large simultaneously with the application and is to be published 16 months from the filing of the application in the home country.
C) INTERNATIONAL PUBLICATION
After the expiration of 18 months from the subsisting filing date in the home country, the international application comes within the public domain. WIPO publishes these applications, together with the international search reports, written opinions of ISA and certain other documents into a database, called PATENTSCOPE. PATENTSCOPE is a high powered, fully searchable database which is flexible, multilingual interface wherein the PCT international applications are published. It helps in translating tools in order to encourage users and the public in general to understand the contents of these published applications.
D) SUPPLEMENTARY INTERNATIONAL SEARCH (optional)
The Supplementary International search binds the ISA to allow, at the request of the applicant, to publish document which are not found in the preliminary international search conducted by the ISA, due to diversity of prior art in different languages and different technical fields.
The additional search has the calibre to reduce risks involved in the new patent documents and other technical literature. The supplementary international search report is identical in content and appearance to the primary international search report. However, it does not entail the document which are already existing and have already been cited in the international search report, unless required. In addition to this, unlike the primary international search, no written opinion is established with supplementary international search report. This needs to be published within the time span of 22 months from the filing the application at home country
E) INTERNATIONAL PRELIMINARY EXAMINATION (optional)
International Preliminary Examination is conducted by one of the ISAs on the applicant’s request, to carry out an additional patentability analysis on standards on which the written opinion of the ISA was based. An international preliminary examination serves as the sole possibility in order to actively participate in the examination process & influence the findings of the examiner before the commencement of the national phase. The examination revolves around ,any amendments to the applications in order to repress documents which were identified in the international search report and conclusions reached in the written opinion of the ISA.
An international preliminary report on patentability will be issued at the end of the procedure, which aids in providing a stronger basis on which evaluation can take place and the chances of obtaining patents, in most cases on an amended application and in cases where the report is favourable, enables a stronger basis to continue with the applicant’s application before the national and regional patent Offices where the applicant’s wants to enter the national phase.
F) NATIONAL PHASE
After the applicant has determined which State they wish to proceed with their international application, they are required to fulfil the specifications for entry into the national phase. These requirements encompasses paying national fees and, in some cases, filing translations of the application. The national/ regional patent Offices in this step determine the whether to accept or reject the patent application after thoroughly scrutinizing and analysing the patent. The PCT international search report and the written opinion makes it easier for these Offices to determine the same. These steps in relation to PCT application, needs to be taken before the end of the 30th month from the priority date.
COST OR FEE PAYABLE FOR FILING
The are three type of fees payable in relation to international PCT applications-
SIGNIFICANT DEVELOPMENTS
There are certain significant initiatives taken by the Indian Patent Office in order to cater to the PCT filings. Expedited examination is permitted for start-ups and applicant can select Indian Patent office as their ISA or IPA. This step has been taken in order to broaden the scope of applicants and encourage inventors to enable invention patented expeditiously. Start-ups now are eligible to avail the benefit of 80% fee reductions in patents and additionally fee reimbursement for facilitators. MSME or Small Entities are also given the privilege of- 50% Fee reduction and 55 % patent applications by Indian MSMEs. 10% lower fees is payable for E- filing, which has led to an increase of e-filings from 30 percent to more that 90 percent. In addition to this Video conferencing mode has been furnished to enable better communications between the applicants and patent agents thereby increasing and maintaining a greater level of customer service.