Patent gives a territorial right, one can claim protection only in countries where application for patent is granted, patents is not a universal system it is a territorial right. An international patent filling should be Once you've submitted a national patent application, the novelty aspect diminishes upon publication, occurring 18 months after filing. Additionally, there's a 12-month window from the initial filing date to exclusively pursue filings in other countries.
PCT
Every patent filled in India gives protection only in India to the patents. However, Patent Cooperation treaty entered into in 1970s by over 150 nations. This provides a platform to apply for patents on a worldwide level. Patent cooperation treaty provides for a patent application system and not patent granting system. It basically streamlines the application process by which an applicant may file application to any or every contracting state instead of individually applying for patents in each country separately, which helps to save time and resources.1
Brief History Of Pct
The United States in 1966 advanced a resolution which was approved by the Executive Commission under the Paris Convention for the Protection of Industrial property. It suggested undertaking a study to determine if there was any mechanism to avoid duplication of applications for the same invention in different countries. In an effort to reduce such duplication, parties to the Paris Convention under this project succeeded in securing the milestone by finally drafting the Patent Cooperation Treaty in Washington, D.C. in 1970 which was adopted by 35 countries initially.2
How Does Patent Cooperation Treaty(Pct) Operate(Patent Filing Under Pct Application) - Patent Application In India
1) International Application- The residents and nationals of member states are eligible to file applications. During International application the applicant may request contracting states to apply for patent.3
The format selected for international filing conforms to the European Patent Convention.
Particularly Indian National or residents can file an international application with Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata as the Receiving Office or International Bureau of WIPO as Receiving office4
Prior art
The applicant is required to send applications to their respective 'receiving office'.
2) International Search- International search by an International Searching Authority
Application to RO or Application to International Bureau of WIPO sends one copy to International Search Authority. Every application is further subject to review and examination by the International Search Authority(ISA) or International Preliminary Examining Authority.(IPEA). WIPO over time has designated a few Patent offices around the world as International Searching Authority(ISA) or as International Preliminary Examining Authority(IPEA) under PCT, Indian Patent Office, Delhi was designated as ISA/IPEA in 15th October 2013.5
3) International Search Report- ISA furnishes a report to identify the published patent documents and other literature (prior art) which decides the eligibility of the invention for patent.
It is further accompanied by the Written Opinion of Search Authority (WOSA) to judge the potential of an invention to get a patent.6
4) Publication by WIPO- The report presented by ISA is published by WIPO after expiry of 18 months from the the priority date of the application.
5) International Preliminary Examination- International preliminary examination by an International Examining Authority (IEA), After ISR and WOSA and publication by WIPO next step is to opt for IPE which stands for International Preliminary Examination. The authority publishes an International Preliminary Report on Patentability(IPRP).7
If an applicant does not opt for IPRP, WOSA is published as IPRP by the International Bureau of WIPO.8
IPEA is responsible for carrying a detailed report on patentability analysis of the application, it carries out verification and may suggest changes to international Applications.
6) National Phase- Subsequent to compliance with the above procedures, at the end of PCT procedure and before 30 months from priority date, application for grant of patents can be filled before national or regional offices of the desired nations.
The applications should be submitted in accordance with the filling process of the respective countries. PCT member countries have 30 or 31 month national stage deadline.9
Is Pct A Delay Mechanism? How Does The Delay Mechanism Work?
Submitting a single PCT application enables you to designate member PCT countries, delaying the national phase entry deadline to 30 months from the priority date (some countries allow 31 months). This cost-effective filing, priced at a few thousand dollars, essentially provides an option to extend the foreign filing deadline by 18 months (from 12 to 30 months). This additional time can be crucial for securing capital or monetizing your invention. It also allows you to assess whether the invention merits protection in numerous foreign countries without committing significant funds upfront. Without the PCT application, you'd be compelled to make substantial financial decisions at the 12-month deadline, risking later realization that the investment might not have been justified.10
Provisional Application Under Pct
Filing a provisional patent application establishes an earlier filing date, and for the coverage to take effect, a non-provisional application must be submitted within a year of the provisional one.
PCT provisional patent applications can set a 30-month filing date or extend an earlier date by 30 months. If a non-provisional application follows, the PCT provisional application date can be used, provided it hasn't expired.
Provisional PCT patent applications don't confer actual patent IP rights but serve as a holding measure until the non-provisional application is prepared. Successful use involves converting the provisional PCT application into a non-provisional one in each desired region or country for patent protection.
Advantages Of PCT
- By utilizing the PCT, applicants gain an additional 18 months to carefully consider whether they want to seek patent protection in foreign countries. This extended timeframe allows them to engage local patent agents, handle translations, and manage the payment of national fees more thoughtfully.11
- Applicants can have confidence in the fact that, if their international application adheres to PCT standards, no designated office has the authority to reject it based on formal grounds during the national phase. This assurance streamlines the application process.12
- The combination of the international search report and written opinion gives applicants a valuable tool to assess the potential patentability of their invention with a reasonable degree of certainty.
- The optional international preliminary examination provides applicants with the opportunity to make amendments to their international application before it undergoes processing by various patent offices, ensuring that it meets all necessary requirements.13
- Patent offices benefit from the PCT as well since the international search report, written opinion, and, if applicable, the international preliminary report on patentability significantly reduce or even eliminate the need for extensive search and examination work.
- In countries with PCT-Patent Prosecution Highway (PCT-PPH) agreements, applicants can take advantage of fast-track examination procedures during the national phase, expediting the overall process.14
- The international publication of each application with an accompanying international search report allows third parties to form well-informed opinions about the potential patentability of the claimed invention.
- For applicants, international publication on PATENTSCOPE serves as a global announcement of their applications, effectively advertising their inventions and facilitating the search for potential licensees.15
In summary, the PCT offers a range of advantages, including extending the timeframe for decision-making, simplifying the application process, providing confidence in the international validity of the application, and offering tools for effective evaluation. It not only benefits applicants but also contributes to the efficiency of patent offices and enhances transparency for third parties.
Effect Of Pct
International Application is same in each designated State as if a national application had been filled with national patent office of that state.
Footnotes
1. Jstor, Patent Cooperation Treaty: Effects on Domestic and Foreign Patent Practice, https://www-jstor-org.elibraryhnlu.remotexs.in/stable/40705916, last visited on 15 Dec 2023
2. Id
3. Jstor, Patent Cooperation Treaty: Effects on Domestic and Foreign Patent Practice, https://www-jstor-org.elibraryhnlu.remotexs.in/stable/40705916, last visited on 15 Dec 2023
4. GOI, Patent Filling, https://ipindia.gov.in/writereaddata/images/pdf/pct-filing.pdf
5. Id
6. Id
7. Id
8. Id
9. Id
10. PatentTrademarkBlog, What is PCT application?, How to Get Foreign Utility Patent, last visited on 18 Dec 2023.
11. WIPO, Summary of PCT(1970), https://www.wipo.int/treaties/en/registration/pct/summary_pct.html, last visited on 17 Dec 2023
12. Id
13. Id
14. Id
15. Id
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
