It is a trite law that patent rights are territorial in nature. This implies that in order for seeking protection for an invention in India, the applicant should endeavor to receive a patent in India itself. There is no existing concept of an international/worldwide patent per se that can extend the protection of the product/technology through a single application. However, at the same time, it is not impossible to internationally protecting an invention. This becomes possible through the completion of some essential steps which are as follows:
- The person who seeks to protect his/her invention from an international perspective needs to file a patent application directly outside India under the Patent Cooperation Treaty (PCT), without filing any patent application in India itself. The applicant also needs to acquire a Foreign Filing License (FFL) to complete the process.
- Thereafter, the applicant needs to file a patent application in India, and within 12 months of the priority date file convention Applications in the desired countries.
- Thereafter, the applicant needs to file a PCT application within 12 months of the priority date.
The PCT is an international treaty which has more than 150 Contracting States across the world. This convention helps in making the process of seeking patent protection for an invention simultaneously in various countries both possible and feasible. Under the PCT mechanism, the applicant can obtain a patent by filing a single “international” patent application instead of filing numerous national or regional patent applications individually. However, it is very pertinent to note over here that the right of granting a patent still remains with the national or regional patent offices under the national phase. Without a PCT application, the applicant shall need to file a patent application in all territories where he/she seeks protection. These applications must be filed within 12 months from the first filing. Alternatively, if a PCT application is filed within 12 months from the date of the first filing, the time granted to the applicants for entering a national phase in all the other PCT member state countries will become 30 months from the original filing date. The PCT application is a very useful strategy in the inventor, or the applicant has the intention to commercialize the invention in various different countries. Moreover, PCT provides the advantage of the time extension, which allows the inventor to test the product in the market.
1. Filing of international application in a Receiving Office (RO)
Any Indian National/Resident can file an international application with the Indian Patent Office located in various cities viz Delhi, Chennai, Mumbai, or Kolkata, and such city shall be the Receiving Office (RO/IN) in such a filing. Alternatively, the filing could also be done at the International Bureau of WIPO as the Receiving Office (RO/IB).
2. International search by an International Searching Authority (ISA)
The ISA establishes an International Search Report (ISR) that helps in identifying the published patent documents and technical literature (“prior art”) which may influence the patentability of the invention. ISA also provides for Written Opinion of Search Authority (WOSA) on the invention’s potential patentability.
3. International preliminary examination by an International Preliminary Examining Authority (IPEA)
The applicant may opt for International Preliminary Examination (IPE) and establish an International Preliminary Report on Patentability (IPRP) once the establishment of ISR/WOSA is made and publication is done by WIPO. In case the applicant pts out of IPE, then 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 quite similar to that of a regular national filing of the patent application. The sole deciding authority of a PCT application in the Patent Office and its decision is final in most regards. Generally, the grant of protection to a patent application once it has entered into the PCT national phase is much easier and simpler than the regular national filing of a patent, because a lot of formal requirements are already sorted in the International phase of the patent 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?
A PCT application can be filed 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. Since 15th October 2013, India has been working as ISA and IPEA.
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?
An Indian applicant can choose the following as competent ISA and IPEA; 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).
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.
13. What is the fee for filing PCT International Application?
For filing PCT applications, there are generally 3 types of fees paid by the applicant:
- 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 the filing of an International Application if:
- He/She is a resident of India
- The 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.
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 whereas in case of inventions related to Atomic Energy, the permission is granted generally within twenty-one days from the date of receipt of consent from the Central Government.
18. 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.
19. Which ISAs and IPEAs are available for IA filed at RO/IN?
An Indian applicant can choose the following as competent ISA and IPEA for international search and preliminary examination; 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).