Date : April 30, 2020
An individual or any other legal entity would decide to file a patent application to better leverage their technical innovation. For a person or entity desirous of obtaining better leverage from their technical innovation, one thing they should definitely consider is the country(ies) where they wish to file an application and thereby secure a patent protection. While doing so, a person or entity mostly decides to file a patent application only in their home country, that is, country they are resident of. They should however keep in mind that a patent protection is available only in the country where an applicant files an application for, or has, a patent. For example, if an inventor or applicant files a patent application only in India, then their invention would not automatically get protection in any other country outside India.
Suffice to say therefore, that an applicant should actively decide in which country(ies) they should actually file for a patent and exploit the market. Now, if one is thinking about filing patent application outside India, or for that matter outside their home country, then this write-up would provide a short and easy overview of the various options or approaches available.It would be pertinent to point out that the country of interest, that is the country(ies) where an applicant wishes to file a patent application, need not be the applicant’s home country and one can directly file outside their home country. For example, an Indian entity can directly file a patent application in US (for example) without filing a patent application in India. In such a case however, the applicant must check whether their national law requires a prior permission to file a patent application directly outside their home country – such a permission is required in India and US for example.
Now, jumping straight into the issue, irrespective of whether an applicant wishes to file directly outside their home country or first in the home country and thereafter outside, there are two broad routes available which can be colloquially termed as:
(i) Paris Convention route (or Convention route), and
(ii) PCT route
We’ll discuss them briefly along with the route of direct filing (with prior permission from authority) outside the home country.
Paris Convention route:
Paris Convention is an international treaty adopted in 1883. Among other things, this Convention allows patent applicants to file a first application known as a priority application and the date it is filed is called the priority date and then file the same patent application within 12 months in other countries which are party to the Convention, claiming the priority from the priority application.Due to this feature, these days, the term ‘direct filing’ is understood as ‘Paris Convention route’, particularly when it is compared to the PCT route.
Without this Convention a patent applicant would have to coordinate their patent filing at a global level to ensure simultaneous filing. Almost all countries of the world are party to the Paris convention, hence it creates an ease of working. Most applicants utilize this12month period for their further work and assessment of the invention/ project, including understanding the markets.
If the applicant is interested in only one foreign country, then with the requisite prior permission in place, the applicant can directly file the patent application in the country of interest – in such case the Paris Convention route is not availed since no priority is claimed. In case there are multiple countries, then the process would be mostly similar, just that the applicant can first file in a foreign country, and claim that to file in other countries within the 12 months timeline. In fact, if desired, the applicant can now use this to enter their home territory as well!
The PCT (Patent Cooperation Treaty) route:
The Patent Cooperation Treaty (PCT) is also an international treaty administered by WIPO (World Intellectual Property Organization). Most PCT member states are also signatory to the Paris Convention, therefore, under this route too, an applicant gets to retain the priority for up to 12 months. It allows filing of a single application in the applicant’s home country while preserving rights in other countries.
The process under PCT route allows an application to ‘delay’ filing (or entering) a patent application in another country by up to 30 months (additional 18 months from 12 months under Paris convention). Under the PCT route, a filing is typically done at one's home country patent office which then is known as "Receiving Office" and the filed application is called an "International Patent Application". Around the 30 months time period the applicant would have to decide and ‘enter’ the International Patent Application’ in countries of interest; this is called the ‘National Phase Entry’.The application then proceeds as a normal patent application in each country after National Phase Entry.
The PCT process also includes an ISR (International Search Report), which could be helpful for the applicant in assessing the kind of patentability related objections the invention can face and provides the applicant an opportunity to ‘fine-tune’ their application to improve their chances of overcoming objections from national offices later on. There is also an option for international examination which allows further opportunity to defend or amend the application. A downside of the PCT route is that considerably higher upfront costs are involved in this route.
Considering the nature and process, a PCT application would not be considered to support direct filing. Within the limitations of the process, even with PCT route, it is possible to file patent application(s) outside of the home country without filing any patent application in the home country. In such a case, an applicant, with the necessary prior permission from the authority can opt to file the International Patent Office with the International Bureau (IB), that is IB acts as the Receiving Office. Rest will proceed as usual and applicant can then decide in which all country(ies) it wants to enter the patent application, even entering in its home territory.