Global Patent Filing - IPLF

Global Patent Filing

Patent Rights are territorial in nature. This means that in order to protect an invention in India, a patent application has to filed in India aiming at grant of corresponding patent in India. Likewise for all other countries. There is no process of a worldwide grant of patent that can give worldwide protection through a single application. However, international protection of an invention is possible through the following means.

  1. File patent application directly outside India (through Convention or Patent Cooperation Treaty (PCT) route) without filing a patent application in India after taking a Foreign Filing License (FFL).
  2. File patent application in India, and within 12 months of the priority date file Convention Applications in desired countries.
  3. File PCT application within 12 months of the priority date.

 

Priority date is when an invention is first filed, where in a provisional or a complete application. However, applications via Convention or PCT route have to be complete applications.

Convention application refers to a patent application filed in accordance with the terms of Paris Convention that facilitates direct filing in another country for all members of the convention. Members include India and all major countries. Filing through Paris convention has to be done within 12 months from priority date.

Patent Cooperation Treaty (PCT) is an international treaty with more than 145 Contracting States and makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. However, it should be noted that the granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. Such applications can be filed within 30-34 months (per jurisdiction) of the priority date, instead of usual 12 months. Besides, acting as a ‘single window’ during international phase, PCT simplifies documentation and logistics aspects. Further, the PCT also provides for an International Search Report on the invention that can give a glimpse of chances of patent grant in multiple jurisdictions.

What Is The Process?


Filing of international application in a Receiving Office (RO)

Nationals/Residents of India can file an international application with – the Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata as the Receiving Office (RO/IN) or – the International Bureau of WIPO as the Receiving Office (RO/IB)

International Search by an International Searching Authority (ISA)

ISA establishes International Search Report (ISR) which identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether the invention is patentable, ISA also establishes Written Opinion of Search Authority (WOSA) on the invention’s potential patentability.

International Preliminary Examination by an International Preliminary Examining Authority (IPEA)

After establishment of ISR/WOSA and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). If the applicant does not opt for IPE, the International Bureau of WIPO publishes the WOSA as International Preliminary Report on Patentability.

National Phase Entry

The National Phase of a PCT Application is very similar to a regular national filing. Though the Patent Office is the sole decision-making authority on the subject, typically, the grant of patent protection after the PCT National Phase entry is simpler than the filing of a regular national application, since most of the formal requirements are resolved in the International Phase of the Application.

Timeline

An Applicant ( that can be an inventor or his assignee) can either file a Provisional Application or a Complete Application, wherein in case of a Provisional Application, the corresponding Complete Specification is to be filed within 12 months from the Provisional Filing.

PCT/International Application is to be filed within 12 months from Priority Date (date when the earliest of Provisional/Complete Application is filed). Usually the Applicant gets 30 months from the Priority Date to file national phase applications in countries of choice.

During international/PCT phase, patent applicant gets International Search Report (ISR) from International Searching Authority (ISA) which gives a non-binding opinion on patentability. Based on this report, patent applicant can decide whether or not to enter national phases.

Details Required


  1. Priority Application Details
  2. Power of Authority

 

FAQ

1 How can we help an Applicant efficiently file in foreign jurisdictions?

Protecting Intellectual Property in a foreign jurisdiction can be a daunting endeavor for even the most sophisticated applicants. At every step of the way, we strive to provide extra value to our clients. Our offices at foreign jurisdictions, namely, Bangladesh, Myanmar, Nepal and Vietnam act as a constant support structure for providing our clients with excellent global IP services. Our team comprising of a number of foreign associates helps our clients in cost-effective filing in different countries and also manages the prosecution thereafter.

2 Can a Patent Application be filed electronically in India?

Yes, India accepts and processes international patent applications electronically.

3 In what language is PCT Application filed in India?

An international patent application can be filed at the Indian Patent Office in triplicate either in English or Hindi language. However, an application in Hindi shall be accompanied by a duly verified English translation.

4 Is India also an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA)?

Yes, India is working as ISA and IPEA since October 15, 2013 and can be chosen by the Indian applicants.

5 Is Written Opinion of ISA binding on the Applicant?

No, ISA provides the applicant with a preliminary non-binding written opinion on the question whether the claimed invention appears to be novel, involves an inventive step and is industrially applicable.

6 What is Express Request for Examination?

Indian Patent Act provides that no action shall be taken on the patent application entering India through PCT before expiry of 31 months from the priority date unless specific request has been made by the applicant in form 18A. This specific request is called as express request. For more information, Click here.

7 Is there any difference between Express and Expedited Request for Examination?

Yes. Express request is filed to request Indian Patent Office to process the patent application before expiry of 31 months. By filing this request, application does not jump the queue of examination requests. This request can be filed by any patent applicant entering India through PCT as National Phase. On the other hand expedited examination request is filed by the applicant to jump the queue of examination requests. This request can be filed only when applicant is either a startup registered in India or when India has been indicated as the competent International Searching Authority (ISA) or elected as an International Preliminary Examining Authority (IPEA) in the corresponding international application.

8 Is Unity of Invention concept also applicable to International Application?

Yes. Just like any patent application, the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept.

9 What are the competent International Search Authorities and International Preliminary Examining Authorities that an Indian Applicant can choose?

As per the existing scenario for Indian Applicants, any of the Austrian Patent Office (AT), Australian Patent Office (AU), European Patent Office (EP), China Intellectual Property Office (CN), United States Patent & Trademark Office (US), Swedish Patent Office (SE) and India (IN) can be chosen as competent ISAs and IPEAs.

10 What is the time period by which one needs to enter India for National Phase under PCT?

National Phase applications entering India can be filed within non-extendible 31 months from the priority date.

11 Can description be amended during the International Phase?

Yes. The description can be amended during the international phase but only if the applicant files a demand for international preliminary examination. The description can also be amended during the national phase before each designated or elected Office.

12 What is the fee for filing PCT International Application?

PCT applicants generally pay three types of fees when they file their international applications:

  1. an international filing fee.
  2. a search fee which can vary depending on the ISA chosen.
  3. a transmittal fee which varies depending on the Receiving Office.

For exhaustive costs incurred per stage, please visit the WIPO website link  here.

13 What is the term of Patents granted in respect of National Phase Applications filed in India?

It is 20 years from the date of filing International Application.

14 In which cases an Applicant needs to take permissions before filing of International Application?

An applicant needs to take permissions before filing of International Application if:

  • He is resident of India; and
  • Invention was developed in India; and
  • He does not want to file patent application in India or
  • Period of six weeks has not been over since the filing patent application in India

Section 39 of the Indian Patents Act sets out details of above while Section 40 and Section 118 deal with provisions in case of contravention of the section 39.

For Section 39, Click Here.

15 Within how many days does an Applicant get permission under Section 39 for filing International Application?

In case of inventions not related to Atomic Energy: Twenty-one days from the date of filing of such request. In case of inventions related to Atomic Energy: Twenty-one days from the date of receipt of consent from the Central Government.

16 Within how many days does an Applicant get permission under Section 39 for filing International Application?

Once a PCT application is filed, an International Search Authority (ISA) performs a search of the prior art, and provides the results to the applicant in the form of an International Search Report. For a complete list of ISAs, please visit the link: www.wipo.int

17 What is the criteria for selecting International Search Authority?

The availability of a particular International Search Authority to the nationals or residents of a country is determined by the Receiving Office where the international application was filed. Every Receiving Office allows applicants the access to at least one ISA. Some Receiving Offices provide a choice of more than one competent ISA. If a receiving Office is one of those, applicant can choose any one of them, taking into account differing requirements relating to language, fees, etc.

18 Which ISAs and IPEAs are available for IA filed at RO/IN?

An applicant from India can choose any one of the following ISA/IPEA for international search and preliminary examination: Indian Patent Office, Australian Patent Office, Austrian Patent Office, European Patent Office, State Intellectual Property Office of the People’s Republic of China, Swedish Patent and Registration Office or the United States Patent and Trademark Office.