Frequently Asked Questions
There are 152 countries which are the member of Patent Cooperation Treaty (PCT). All of them accepts PCT applications.
In most cases, it takes up to 18 months from the international filing date (or 30 months from the priority date of initial application.)
“Claim Priority” refers to a PCT application filed on the basis of the priority date of the national or regional application filed in a 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.
An international patent application can be filed in any language accepted by the receiving office. If the application is filed in a language other than the one accepted by the receiving office then translations for such applications have to be submitted within the prescribed deadlines.
International filing can be done by applying through modes:
1. Conventional Application
2. PCT or Paris Conventional Application
Yes, India accepts and processes international patent applications electronically.
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.
No, ISA provides the applicant with a preliminary non-binding written opinion on the question of whether the claimed invention appears to be novel, to involve an inventive step, and to be industrially applicable.
Yes, the applicant is given an opportunity to amend the claims article 19.
Indian Patent Act provides that no action shall be taken on the patent application entering India through PCT before the expiry of 31 months from the priority date unless a specific request has been made by the applicant in form 18A. This specific request is called an express request.
The express request is filed to request the Indian Patent Office to process the patent application before the expiry of 31 months and by filing this request, the 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 the applicant is either startup registered in India or he has chosen India as ISA or IPEA for the corresponding 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.
National Phase applications entering India can be filed within non-extendible 31 months from the priority date.
The description can be amended during the international phase only if the applicant files a demand for the international preliminary examination. The description can also be amended during the national phase before each designated or elected Office.
It is 20 years from the date of filing an 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.