In today’s globalised economy, since innovation knows no boundaries and neither should intellectual property protection. For inventors and businesses developing new technologies, products, or processes, safeguarding those innovations in multiple countries used be a complex and expensive task and therefore why This is the Patent Cooperation Treaty (PCT) was enacted.

The PCT, which is administered by the World Intellectual Property Organisation (WIPO), has simplified the process of seeking patent protection internationally, i.e. instead of filing separate patent applications in every country, the PCT allows inventors to file a single international application that can later be used to pursue patents in over 150 member nations.

However, while the PCT streamlines the process, it doesn’t grant an “international patent.” Each country still decides whether to approve a patent under its national laws. Therefore, we need to understand how the system works, especially from an Indian applicant’s perspective which is essential to avoid procedural missteps and maximise protection.

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty, concluded in 1970 and it is administered by WIPO, that was created to make the process of filing patents internationally more efficient. This treaty enables applicants to file one standardised patent application (known as an international application) instead of multiple separate national applications and once filed, this application serves as a foundation for later filings in individual countries known as the national phase. The PCT application reserves the applicant’s right to seek protection in all 150+ contracting states for up to 30 or 31 months from the earliest filing (priority) date. In essence, the PCT gives applicants time, flexibility, and cost efficiency while ensuring that their invention is recognised internationally as “patent pending.”

PCT Filing from India

For Indian applicants, the journey toward international patent protection usually begins with a national patent filing in India. This initial step establishes the priority date, a crucial reference point for all subsequent filings. And after that, within 12 months of this national filing, the applicant can submit a PCT international application, which can be filed either through the Indian Patent Office (IPO), which acts as a Receiving Office (RO) under the Treaty or directly through WIPO’s online filing system.

The international application must include:

• A description of the invention;

• Claims defining the scope of protection sought;

• An abstract summarising the invention;

• Drawings, if applicable; and

• A request form designating the contracting states.

After filing the PCT application, it will be assigned an international filing date, which has the same legal effect as filing in all PCT member countries. This initial phase gives Indian inventors significant strategic advantages as it allows them to delay the cost of multiple international filings, assess market potential, and seek investors or partners before committing to the expensive national filings.

The International Phase of the PCT Application process

The international phase starts after the PCT application has been filed either through the Indian Patent Office (IPO), which acts as a Receiving Office (RO) under the Treaty or directly through WIPO’s online filing system. This phase include a series of procedural steps that are managed by WIPO and designated international authorities, and this process generally lasts up to 30 or 31 months from the earliest priority date.

Here’s how it works:

1. International Search and Written Opinion

An International Searching Authority (ISA) conducts a search to identify if there is any prior art, or existing patents or publications related to the invention. After conducting this search, the ISA then issues two key documents mentioned below:

• The International Search Report (ISR), which consists of a listing of relevant prior art; and

• A Written Opinion, which provides an initial assessment of the invention’s novelty, inventive step, and industrial applicability.

All these reports and documents provide applicants with valuable insight into their invention’s patentability before entering national phases, which are costly, so if the report reveals potential issues, the applicant can revise their strategy or amend claims accordingly.

2. International Publication

After 18 months from the priority date, WIPO publishes the international application in its online database known as PATENTSCOPE, which makes the inventions publicly accessible and officially marks them as “patent pending” in all designated states.

3. Optional International Preliminary Examination

Applicants might also request an International Preliminary Examination (IPE) for a more detailed analysis of patentability. Although it is optional, but this step is useful for applicants who want to strengthen their applications before national filings.

These stages together give the applicant a clearer picture of their patent’s global potential, which helps them in making an informed decision about which countries to enter later.

The National Phase of PCT Application

After the international phase is completed, the PCT application enters into the national phase, where actual patent rights are pursued in individual countries, where each country examines the application independently according to its domestic laws. So during this phase, the applicant needs to file separate national applications in the desired countries and comply with their formalities, such as submitting translations, paying filing fees, and responding to office actions.

Key Timelines:

• The national phase should be entered within 30 months (in most countries) or 31 months (in India) i.e. from the earliest priority date.

• And missing this deadline might lead to a complete loss of rights in that jurisdiction.

Therefore, the PCT system does not grant a patent; it simply provides us a procedural bridge that simplifies and synchronises the process across borders, i.e. as emphasised in the WIPO’s official publication, “The PCT makes it possible to seek patent protection in multiple countries efficiently, while deferring significant costs and administrative burden.”

PCT National Phase Filing in India

When an applicant chooses to seek protection in India through the PCT route, they must enter the national phase within 31 months from the priority date.

The following documents must be submitted to the Indian Patent Office:

• Form 1 - Application for Grant of Patent

• Form 2 - Complete Specification (including description and claims)

• Form 3 - Statement of foreign applications

• Form 26 - Power of Attorney (if filed through an agent)

• Certified English translations (if required)

Foreign applicants should appoint a registered Indian patent agent and provide an address for service in India, and after this submission, the application proceeds to examination, where the application is assessed by the Indian Patent Office in accordance with its compliance with Indian patentability criteria i.e. novelty, inventive step, and industrial applicability. Once this application gets approved, the invention is granted patent protection in India, preserving the international priority established under the PCT.

Conclusion

So to conclude, the Patent Cooperation Treaty (PCT) is not just a procedural framework but it also provides the applicant a strategic gateway to global innovation and for Indian businesses, startups, universities, and individual inventors, it offers a simplified, cost-effective, and time-efficient way to secure patent protection across more than 150 countries and by allowing a single international application, that helps in avoiding heavy costs, and helps in providing early insights into patentability, the PCT also empowers applicants to make informed, strategic decisions about in which country and how to protect their inventions. Plus, it also increases international credibility through the globally recognised “patent pending” status. However, this process requires a great deal of attention to deadlines, documentation, and national phase requirements, areas where taking professional legal guidance is suggested.

Author :- Prashasti Bhati, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References:

1. https://www.wipo.int/en/web/pct-system

2. https://www.quadranttechnologies.com/navigating-pct-application-filing-in-india/

3. https://www.patentrenewal.com/post/understanding-the-wipo-patent-cooperation-treaty-application-process

4. https://ip-coster.com/IPGuides/patent-pct-india

5. https://www.wipo.int/edocs/pubdocs/en/wipo-pub-274-2022-en-patent-cooperation-treaty-pct.pdf