Procedure for Filing International Application under PCT

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The patent application can be filed in different countries through various procedures. Direct filing to the respective country where the applicant directly files separate patent applications at the same time in all of the countries in which patent is desired (for some countries, regional patents are available). Paris convention filing is also one of the most suited processes where the applicant has filed the first patent application in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, with the benefit of claiming the filing date of the first application in all other countries. Lastly, the Patent Cooperation Treaty under which the applicant applies the PCT, directly or within the 12 months provided for by the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.

What is PCT?

The Patent Cooperation Treaty (PCT) is an international treaty with more than 153 Contracting States. It is administered by the World Intellectual Property Organization (WIPO). The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. There are multiple advantages such as a single application in a single language filed in a single country called the international application. This single application has the effect of filing simultaneously in different countries (designated countries).

Steps involved in PCT

  • Filing of the international application in a Receiving Office (RO)
  • International Search by an International Searching Authority (ISA)
  • International Preliminary Examination by an International Preliminary Examining Authority (IPEA)

For the applicant who is the National/Resident of India, they can file their 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). The international application must have a Request (Form PCT/RO/101) accompanied by a description, claims, abstract (and drawings if required) of the invention in English or Hindi. The international application to be filed in triplicate

Regarding the payable fees, there are transmittal fee, International Filing Fee, and Search fee (all fees to be paid within one month from the date of receipt of the international application)

The transmittal fee is payable to the Receiving Office within one month from the date of filing the international application

PCT

For international filing fees, the readers are requested to visit here for more details as per the country wise.

The search fees are as follows

PCT

After the filing of the patent application, The Receiving Office India (RO/IN) accords as the international filing date the date of receipt of the international application which will be considered to be the actual filing date in each country designated in the Request. The office will check the following (i) the applicant is a resident/national of India; (ii) the international application is in English or Hindi; (iii) the international application contains at least the following elements:

  • an indication that it is intended as an international application,
  • the designation of at least one Contracting State,
  • the name of the applicant, as prescribed,
  • a part which on the face of it appears to be a description,
  • A part which on the face of it appears to be a claim or claims.

For the Home, Record and Search copies, the RO will keep one copy of the international application for a record named ‘Home Copy’ and will send one copy of the international application to the International Bureau (IB) of WIPO named ‘Record Copy’ and finally sends one copy of the international application to the International Searching Authority (ISA) named the ‘Search Copy.’ Thereafter, the international application will now be subject to international searching authority for international search. An applicant may opt for international preliminary examination by an International Preliminary Examining Authority (IPEA)

ISA and IPEA

Few Patent Offices in the world have been recognized by WIPO to function as International Searching Authority and International Preliminary Examining Authority under the PCT. The details of the Patent Office working as ISA and IPEA can be found here. The applicant can choose anyone ISA/IPEA for the international search and preliminary examination. The ISA establishes International Search Report (ISR) which identifies the published patent documents and technical literature (“prior art”) which may influence whether the invention is patentable. ISA also establishes the Written Opinion of Search Authority (WOSA) on the invention’s potential patentability. After the Search, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). For opting for IPE the Residents/Nationals of India can file a Demand (Form PCT/IPEA/401) for international preliminary examination in the Delhi branch of the Indian Patent Office which acts as IPEA/IN. The fees are-

PCT3

After the payment of fees, IPEA will carry out an additional patentability analysis where it will send Written Opinion(s) to Applicant and the applicant may make amendments to the international application. The report will also be published.

National Phase

After the end of the PCT procedure, either after international search or after an international preliminary examination and before 30/31 months from the priority date, applications for the grant of patents can be filed before the national (or regional) patent offices of the countries in which patent protection is desired. The filing procedure, fee, and processing are as per the requirements of national law relating to patents in each country. The filing date is the international filing date in all such countries.  For a grant of patent in India, the applicant has to file a national phase application in India before the expiry of 31 months from the priority date of the application. The international patent application as has been filed under the PCT is treated as a corresponding application in India.

All the above information has been taken from the official website- https://ipindia.gov.in/

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to us at in case of any queries please contact/write back us at support@globalpatentfiling.com.

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