Frequently Asked Questions

In which countries PCT applications can be filed?

There are 152 countries which are the member of Patent Cooperation Treaty (PCT). All of them accepts PCT applications.

How long does the PCT process takes to get processed?

In most of the cases, it takes upto 18 months from the international filing date (or 30 months from the priority date of initial application.)

What is “Claim Priority”?

“Claim Priority” refers to a PCT application filed on the basis of priority date of the national or regional application filed in national or regional patent office. The advantage of “Claim Priority” is that a patent shall not be invalidated by reasons of any acts accomplished in the interval, such as another filing, the publication or sale of the invention.

What are the languages in which one can file an international patent application?

An international patent application can be filed in any language accepted by the receiving office. If the application is filed in language other than the one accepted by the receiving office then translations for such applications have to be submitted within the prescribed deadlines.

How many types of applications are there for international fling?

International filing can be done by applying through modes:
Conventional Application
PCT/Paris Conventional Application

Can the patent application be filed electronically in India?

Yes, India accepts and processes international patent applications electronically.

In what language is the PCT application filed in India?

An international patent application can be filed at the Indian Patent Office in triplicate either in English or Hindi language. However, an application in Hindi shall be accompanied by a duly verified English translation.

Is India also International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA)?

Yes, India is working as ISA and IPEA since October 15, 2013 and can be chosen by the Indian applicants.

Is Written Opinion of the 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, to involve an inventive step and to be industrially applicable.

Can the applicant amend the claims in response to the ISR?

Yes, the applicant is given an opportunity to amend the claims article 19.

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 specific request has been made by the applicant in form 18A. This specific request is called as express request.

Is there any difference between express and expedited request for examination?

Express request is filed to request Indian Patent Office to process the patent application before expiry of 31 months and by filing this request, 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. Whereas, expedited examination request is filed by the applicant to jump the queue of examination requests. This request cannot be filed only when applicant is either startup registered in India or he has chosen India as ISA or IPEA for the corresponding international application.

Is Unity of Invention concept also applicable to International Application?

Yes. The international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept.

What are the competent International Search Authorities and International Preliminary Examining Authorities that Indian applicant can choose?

So as per the existing scenario, for Indian Applicants, 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) and India (IN) can be chosen as competent ISAs and IPEAs.

How much is the period to enter India as National Phase under PCT?

National Phase applications entering India can be filed within non-extendible 31 months from the priority date.

Can the description be amended during the international phase?

The description can be amended during the international phase only if the applicant files a demand for international preliminary examination. The description can also be amended during the national phase before each designated or elected Office.

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 International Application.

In which cases, applicant needs to take permissions before filing of International Application?

Applicant needs to take permissions before filing of International Application if:

  • He is resident of India; and
  • Invention was developed in India; and
  • He does not want to file patent application in India or
  • Period of six weeks has not been over since the filing patent application in India

This permission is required to be taken by section 39. Section 40 and section 118 deals with provisions in case of contravention of the section 39.

Within how many days, applicant gets the permission under section 39 for filing International Application?

In case of inventions not related to Atomic Energy: Twenty-one days from the date of filing of such request. In case of inventions related to Atomic Energy: Twenty-one days from the date of receipt of consent from the Central Government.