Patent Filing Process: India and PCT

Mar 12, 2023 | Indian Patents Act 1970, IPR & Business, Patent, PCT, Startups

A patent is statutory grant by Government for the inventions (a Product or a process) that are novel, industrially useful and non-obvious to a person skilled in the art. It gives its owner the exclusive right to prevent or stop others from making, using, offering for sale, selling or importing a product or a process, based on the patented invention, without the owner’s prior permission.

Date of filing patent application is very significant in patent law. The day of first disclosure of the invention to patent office is called as “Priority Date”.

A very famous example to prove importance of first filing or getting earliest priority date is telephone patent controversy in 1870s, where two inventors Elisha Gray and Alexander Graham Bell both independently designed devices that could transmit speech electrically (the telephone) and both men rushed their respective designs to the patent office within hours of each other, Alexander Graham Bell patented his telephone first. Elisha Gray and Alexander Graham Bell entered into a famous legal battle over the invention of the telephone, which Bell won. Today we all know Alexander Graham Bell as inventor of telephone.

In order to claim the earliest priority date, the inventor may be interested in filing provisional patent application. The filing of provisional application enables the inventor to have “Patent Pending” status for the invention. In case, the applicant has filed provisional application, the complete specifications shall be filed within 12 months of filing provisional application. Provisional application can only be filed in Indian Patent Office [National Office] and not at PCT or convention country. Immediately on receiving the Provisional Specification the Patent office accords a filing date and application number to the Application.

The main advantages of filing provisional application are:

Drafting provisional application is less-time consuming compared to drafting complete specifications, hence it is quick method of claiming the earliest priority date

Gives 12-month time to the inventor to take decision on whether he wants to file complete specification or not. This 12-month period is also useful for the inventor to assess the invention commercially.

Applicant has to file complete specifications within 12-months of filing provisional application.

Prime stages from filing patent application till the grant are as follows:

Filing application: You may file complete or provisional application in India to claim earliest priority. However, if you don’t wish to file in India and directly want to file in foreign country, Foreign Filing Permission is required from Indian Patent Office. If provisional application is filed, the complete application shall be filed within 12 months from the date of filing provisional application. The complete specification can be filed directly as a PCT application after taking necessary permission if required.

Publication: The application is published by patent office after expiry of 18 months from the date of filing. Date of publication is very significant as upon publication the invention forms part of prior art. After publication, in case anyone is interested, the application may be opposed on various grounds such as lack of novelty, non-obviousness, industrial application etc. Indian patent law also provides a provision for early publication of application before the expiry of 18 month on request by the applicant.

Examination: After publication, examination of the application takes place and on the basis of examination, examination report is sent by the examiner that has to be replied in a given period of time.

Grant of patent: After replying examination, applicant may hear grant of the patent and this is the time when payment of annual renewal fee to maintain patent is also to be made. Grant of patent is published and in case anyone is interested, the patent may be opposed on various grounds such as lack of novelty, non-obviousness, industrial application etc.

 Foreign filing

If the applicant is interested in filing patent application in foreign country (ies), it shall be done within 12 months from the date of priority. Once foreign filing is done, we will submit “Priority Document[1]”, obtained from India Patent Office to the foreign country or PCT as the case may be.

Foreign filing of application can be of 2 types:

1. Convention application: When an application is filed directly in a country which is a member of Paris Convention is called as convention application. For example, if you file in India and then directly file in USPTO, the application filed in USPTO is called as Convention Application.
2. PCT application: This is application filed though Patent Cooperation Treaty (PCT) which is a filing platform (does not grant patents) and enables you to file application in multiple countries within 30 or 31 months from the priority date. The PCT is only a patent filing procedure and does not provide for the granting of patents. The granting of patents is the responsibility of each individual member countries (Contracting States).

The above timeline provides a graphical representation of the PCT procedure and sequence. Typically, first patent application is filed national or regional patent Office. This patent application is commonly referred to as the local application

Filing a PCT application

PCT application is filed within 12 months from the filing date of local (first) patent application with the Receiving Office of national or regional Patent Office. It can also be filed directly with the Receiving Office of WIPO, if permitted by the national security provisions of applicant’s national law [Refer Section-39 of Indian Patents Act, 1970].

PCT application will have the same legal effect as a separate application filed in each PCT country.

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International Search Report (ISR) and Written Opinion of the ISA

Every international patent application is subjected to an “international search” by an International Searching Authority (ISA). An Applicant of an International Patent Application is sometimes given the choice of having a search done on the invention at a patent office other than at the Receiving Office. The patent office which performs the search is called the “International Searching Authority.”

Indeed, not all Receiving Offices are qualified to act as International Searching Authorities, and therefore International Applications filed at such Receiving Offices are regularly referred to a different patent office than where the International Application was initially filed for purposes of having a search of the prior art made. Even when the patent office functioning as the Receiving Office also has the status of an International Searching Authority, agreements may have been entered into which allow another patent office to serve as the International Searching Authority at the election of the Applicant.

An International Search Report and a written opinion from the competent ISA will be provided to the applicant within 16 months from the filing date of local application. The written opinion complements the ISR by providing a preliminary non-binding patentability assessment of the invention taking into consideration the references contained in the ISR.

India as ISA and IPAE

WIPO (World Intellectual Property Organisation) has recognized the Indian Patent Office as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT).

The recognition as an ISA and IPEA would be beneficial for India in several ways. International applications received by the WIPO under the PCT route sent to India for search and preliminary examination would generate revenues in the form of fees usually paid to ISA and IPEA. The new status would allow Indian companies and inventors to avail patentability search and obtain International Preliminary Examination report (IPER) and written opinions on a much faster and cheaper way.

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International Preliminary Report on Patentability (Chapter I of the PCT)

ISA sends report on patentability to the applicant. After having considered the written opinion of the ISA, the applicant may decide not to continue with the assessment of PCT application and not file a demand for international preliminary examination[2]. In this case, WIPO will attach a cover sheet to this written opinion effectively converting it into the international preliminary report on patentability (Chapter I of the PCT). The international preliminary report on patentability (Chapter I of the PCT) is available for public inspection 30 months after the priority date of PCT application (the date of first-filed local patent application).

International Publication

The International Bureau of WIPO will publish PCT application on PATENTSCOPE® shortly after 18 months from the priority date of applicants PCT application. Publication provides technical disclosure of applicant’s invention fuelling greater technological progress and development.

PATENTSCOPE® is a free search service offered by the World Intellectual Property Organization (WIPO). It is made up of two databases, each with its own search interface.

Supplementary International Search (Optional)

Under PCT system, the applicant is given an option of supplementary international search carried out by participating International Searching Authorities, upon request by the applicant. The request for supplementary international search may be filed any time prior to the expiry of 19 months from the priority date.  The supplementary search is completely optional but may be of interest in cases where a more complete overview of the prior art is desired, particularly in respect of specific languages. The supplementary international search service is not available across all International Searching Authorities.  Those offering this service do so against the payment of a fee. The supplementary international search report prepared by the International Searching Authority should be available by 28 months from the priority date.

 Filing of a Demand for International Preliminary Examination (Chapter II   of PCT) (Optional)

This part of the PCT procedure is optional. If the applicant is not entirely satisfied with the contents of the written opinion, he may decide to continue the assessment of invention under the PCT by filing a demand for international preliminary examination with a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA.

Applicant is given at least 22 months from the priority date of his PCT application to file demand for international preliminary examination with the competent IPEA.

International Preliminary Report on Patentability (Chapter II of PCT)

An international preliminary examination may optionally be requested (“demanded”) by the applicant. The international preliminary examination is conducted by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examination Report (IPER).

At about 28 months from the priority date, the IPEA sends an international preliminary report on patentability (Chapter II of PCT) containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of applicants invention. This report is a non-binding opinion on patentability and is only provided to applicants who have filed a demand for international preliminary examination.

National Phase Entry

National phase follows international phase. Entry into the national phase represents the end of the international phase of the PCT procedure and the start of the national patent grant procedure. During national phase the applicant can file patent application in the countries of his choice within prescribed time. A PCT application has to enter into nation phase with in 30 or 31 month from the priority date.

The international preliminary report on patentability (either under Chapter I or Chapter II), received during the international phase of the PCT procedure, will help the applicant to evaluate the chances of obtaining a patent in the countries of his interest. The international preliminary report on patentability also provides guidance to patent Offices on whether a patent should be granted for the invention.

Once entered in to the national phase, the patent application is subjected to the patent laws, regulations and practices of each country. Rejections on form and content may not be raised provided that they conform to the requirements of the PCT.

When a PCT application is filed in India at national phase, it is processed under following stages:

1. On receipt of an application, the Office accords a date and serial number to it. PCT national phase Applications and non-PCT Applications are identified by separate serial numbers.

2. All applications and other documents are digitized, verified, screened, classified and uploaded to the internal server of the Office.

3. Patent applications and other documents are arranged in a file wrapper and the Bibliographic sheet is prepared and pasted on the file cover, so that the files move on for storing in the compactors.

4. The Application is screened for:

a. International Patent Classification.

b. Technical field of invention for allocation to an examiner in the respective field.

d. Correcting/completing the abstract, if required. If found not proper, the abstract will be recasted suitably, so as to provide better information to third parties.

5. Requests for examination are also accorded separate serial number.

Advantages of PCT

The PCT is an important part of the international patent system and application filed at PCT is also called as international application or PCT application. It provides a worldwide system for the simplified filing of patent applications that:  

• Brings the world within reach
• Postpones major costs and provides the applicant with additional time to consider his various patenting options
• Provides a strong basis for patenting decisions
• Used by the world’s major corporations, universities and research institutions when they seek international patent protection

A single PCT application has the same legal effect as a national patent application in each of the PCT Contracting States. Without the PCT, one may have to file a separate patent application in each country of interest.

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[1] It is a certified copy of the application which is issued by Indian Patent Office and it is required by foreign country as a record or Indian filing.

[2] Filing demand for international preliminary examination is optional.

International Patent Filing – Reasons & Strategies

Apr 15, 2022 | Indian Patents Act 1970, IPR & Business, Patent, PCT, Startups

For various reasons, every inventor wants to file for a patent internationally after filing it in his/her home country. Sometimes it’s about the status that is associated with having a patent filed in the US or Europe, but having an international patent may also enhance the valuation of the technology which ultimately may impress investors and fetch better value to the inventor. Oftentimes, inventors drop the idea of filing for patent internationally because it is expensive, complicated, and long procedure.  Laws across the countries are also not unified in terms of procedures, fee and timelines leading to more and more confusions at every stage,

It is firstly of crucial importance to understand the term “International Patent”. In reality, there is nothing called international patent or global patent. Despite there being ways to file for a patent internationally, there is no single authority to grant international patents with validity across the globe. Patents are required to be filed in and granted by each country where the inventor wishes to seek protection.

Few things are required to be focused on, when filing a patent outside India. For a resident of India, Section 39 [Residents not to apply for patents outside India without prior permission] of Indian Patents Act 1970 states that the patent must be filed in India first and can be filed in any foreign country within a period of 12 months. Once this 12-month period expires, the inventor loses the chance of filing outside India.

Two ways to file patent application internationally

There are 2 ways to file a patent in foreign countries. These are:

A. Patent Cooperation Treaty (PCT) Route

An inventor may file a single patent cooperation treaty (PCT) application or international application within 12 months from the date of filing a patent application in India. PCT is an international patent law treaty that provides a unified system for filing patent applications in each of its contracting states. It is a convenient platform to assist inventors that are seeking patent protection internationally (in the contracting states of PCT) for their inventions. It also helps patent offices with their patent granting decisions by providing comprehensive search reports for the patent application along with opinion on patentability. PCT publishes the patent application filed with it and maintains an online database called Patentscope which facilitates patent searches as well as gives public access to a wealth of technical information in the form of patents.

PCT examines the application, issues examination report and enables inventors to file their application within 30/31 months from the date of priority in any of the member states of PCT. After this, the patent is processed and granted by the national offices of the countries where patent protection is sought, based on the procedures and requirements of the respective offices.  PCT enables patent filing in its member states & gives extra time to the inventor to decide about the countries they want to file their application in.

B. Convention Route

The countries which are members of the Paris Convention are called convention countries and an application filed in a convention country is called a convention application. Unlike PCT, convention application is required to be filed in the convention country within 12 months from the priority date.

Reasons to file international application

Filing international application without clarity on the reason to file is not a good idea. It does not help inventors in long run and may actually lead to a very stressful situation if the prosecution is left midway, further making the overall process financially cumbersome. Following parameters should be considered when deciding about the countries to file patent application in:

1. Your future business plans

Patents must be filed in the countries where the inventor wishes to expand the business in the future. It must be remembered that there is a specific time period within which inventors must file the patent application in specific countries. Once this period has lapsed, it is not possible to file an application at a later stage. Therefore, if it is desired by the inventor to expand the business in countries like the US or Japan 5 years later, it would make sense to file patents in these countries within the required time frame.

2. Potential of technology in given jurisdiction

Sometimes, it makes sense for an inventor to file for patent in some countries even if the inventor does not have business there. Countries like the US have a mature system of buying, selling and enforcing patents. If technology has good potential in a specific country, a patent should be filed in that country. Further, licensing and selling options may also be explored to facilitate easier transition of the patented technology to the market.

3. Your budget

Filing and prosecution of a patent is a long process and strictly regulated by several timelines. A patent may be lost if the inventor does not respond to the office in time or fails to pay the necessary fees. Further, there are standard expenses for each country and renewal fees to be paid post grant of the patent. This leaves a very small window for postponing expenses and timelines, making the overall process of getting a foreign patent extremely time consuming, complex and expensive. The tentative costs of filing, prosecution and maintenance must be assessed in advance and only then should a decision about foreign filing be taken.

Keeping in mind budget, type of invention and area of business, the decision to file patent internationally shall be taken.

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