As a rule of thumb, Patent rights are territorial in nature. It means that in order to protect an invention in India, a patent has to be granted in India. There is no worldwide patent per se that can give protection through a single application. However, international protection of an invention is possible through the following means:
- 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).
- File patent application in India, and within 12 months of the priority date file convention Applications in desired countries.
- File PCT application within 12 months of the priority date.
Patent Cooperation Treaty (PCT) is an international treaty with more than 150 Contracting States and makes it possible to seek patent protection for an invention simultaneously in numerous 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”.
Without a PCT application, a patent application must be filed in all territories where you wish to protect it within 12 months from the first filing. Alternatively, if a PCT application is filed within 12 months from the first filing, time for entering a national phase in all the other PCT member state countries will be in 30 months from the original filing date.
The PCT application is a very useful strategy in the inventor or applicant has the intention to go global, the time extension will allow him to test the product into the market while gathering external capital to be invested in the protection process
1. 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)
2. 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.
3. International preliminary examination by an International Preliminary Examining Authority (IPEA)
After the establishment of ISR/WOSA and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes an 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.
4. 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.
- Priority Application Details.
- Patent Application to be filed
- Details of the Applicant/Inventor(s).
- Power of Authority
1. How can we help an Applicant efficiently file in foreign jurisdictions?
Protecting Intellectual Property in a foreign jurisdiction can be a daunting endeavour for even the most sophisticated Applicants. At every step of the way, we strive to provide extra value to our Clients. Our close foreign affiliates/associates in all the global jurisdictions along with our own offices in the US, Thailand, Malaysia, Bangladesh, Sri Lanka 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 and prosecution of patent applications in different countries.
2. Can a Patent Application be filed electronically in India?
Yes, India accepts and processes national phase/convention patent applications electronically.
3. In what language is the 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 a specific request has been made by the applicant in Form 18A. This specific request is called an express request.
7. Is there any difference between Express and Expedited Request for Examination?
Yes. Express request is filed to request the Indian Patent Office to process the patent application before the expiry of 31 months. By filing this request, the 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 the applicant is either a DPIIT Recognized Startup registered in India, or when the applicant is a female applicant, or when the applicant is a Govt. Supported Institution, 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 that 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. When should we consider filing a PCT application?
A PCT application is usually beneficial if you are looking to protect your invention in 3 countries or more.
12. 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 under Article 34. The description can also be amended during the national phase before each designated or elected Office.
13. What is the fee for filing PCT International Application?
PCT applicants generally pay three types of fees when they file their international applications:
- An international filing fee.
- A search fee which can vary depending on the ISA chosen.
- A transmittal fee which varies depending on the Receiving Office.
- For exhaustive costs incurred per stage, please visit the WIPO website.
14. 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 of the International/PCT Application.
15. In how many countries can I get protection by filing a PCT application?
As of now, 148 countries are signatories to the Patent Cooperation Treaty. Protection maybe obtained in any or all of the 148 countries through the PCT application procedure.
16. In which cases does 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 a resident of India
- Invention was developed in India
He/She does not want to file a patent application in India or a 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.
17. Within how many days does an applicant get permission under Section 39 for filing an International Application?
In case of inventions not related to Atomic Energy: Twenty-one days from the date of filing of such requests. In case of inventions related to Atomic Energy: Twenty-one days from the date of receipt of consent from the Central Government.
18. Within how many days does an Applicant get permission under Section 39 for filing an 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 (ISR). For a complete list of ISAs, please visit the link: www.wipo.int.
19. What is the criteria for selecting the International Search Authority?
The availability of a particular International Search Authority (ISA) to the nationals or residents of a country is determined by the Receiving Office where the international application was filed. Every receiving office (RO) allows applicants the access to at least one ISA. Some Ros also provides a choice of more than one competent ISAs. If an RO is one of those, the Applicant can choose any one of them, taking into account differing requirements relating to language, fees, etc.
20. 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.