Intellectual Property has always played an increasingly significant role in today’s technology-driven industry. Patents are an important IP asset for an organization. Hence, the innovative strength of an organization subsequently can be measured through its patenting activities. Not only with the number of the patents, but the quality of the patent is what makes the corporation more demanding. We all know that acquiring a patent is a costly affair and even time-consuming. Hence, it is always advised to have a strategic approach to obtaining Patents. The commonly used term of International Patent should not be confused with the grant of patent internationally. The patent is territorial. It means, to protect an invention in India, the patent has to be granted in India and similarly elsewhere as well. There is no worldwide patent that can give protection through a single application.
For this, various options are provided to the applicant who seeks protection in multiple jurisdictions.
PCT Patent Application
The Patent Cooperation Treaty was signed on the last day of the conference on 19 June 1970. The Treaty entered into force on 24 January 1978, initially with 18 contracting states. In 2019, 153 states were members of the PCT, and applicants from 127 countries across the six geographical regions of the world filed PCT applications at 87 receiving offices (ROs). The 153rd country to enter the PCT is Samoa, on 2nd October 2019. Despite this broad geographical spread, most filing activity is concentrated in a small number of economies. Combined, the top 10 ROs accounted for nearly 94% of applications received in 2019. With 60,993 filings, the China National Intellectual Property Administration (CNIPA) received the highest number of PCT applications, followed by the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO).
This is the most convenient route if a patent applicant is trying to protect his invention in multiple countries as large numbers of countries are currently signatories to this treaty. PCT requires the filing of an international patent application within 12 months from the date of the local/domestic patent application from which priority is to be claimed. If the international application is filed within 12 months from the date of priority, the applicant gets a minimum of 30 months to decide whether he wants to enter other countries as a national phase or not. An additional advantage of PCT is the International Search Report which the PCT impaneled Search Authority provides a detailed opinion on the patentability of the invention disclosed in the PCT application. To enter India as a national phase, a period of 31 months is available. PCT applications can directly be filed without claiming any priority from domestic or local applications. The International application can be filed directly and in case of claiming priority from local applications, international patent applications have to be filed within 12 months from the date of filing the local application. In some cases, if this timeline is missed, priority can be restored.
The filing in the RO must be done within 12 months from filing the local application. The application filed is called an International Patent Application or simply, PCT Application
The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent Offices.
The publication is done within 18 months of filing the local application or the priority date, whichever is earlier (more info.)
National Phase Patent Applications
Patent applicants get a minimum period of 30 months from the date of filing of local applications or the date of filing of international applications (if they were filed directly) to decide whether or not to enter other countries to get protection. Many countries including India have an increased period of 30 months. This period varies from 30- 34 months which is 31 months while entering India. In many countries, translations are required to be done to comply with the language requirements of local patent offices.
The PCT application or the Paris convention application has to be filed within 12 months of the earliest date of filing of the local application failing which further foreign application corresponding to the original local application can be filed.
In the PCT process, an applicant gets at least 18 months from the time the international patent application (or usually 30 months from the filing date of the initial patent application of which the applicant claim priority) before beginning the national phase procedures with individual patent Offices and to fulfill the national requirements. During the international phase, the patent applicant gets an International Search Report (ISR) from the International Searching Authority (ISA) which gives a non-binding opinion on patentability. Based on this report, the patent applicants can decide whether or not to enter national phases.
To file the national phase application in India, the applicant has to provide some documents to the patent office. The complete specification has to be provided which includes description, claims (if amended, both as originally filed and as amended), abstracts and drawings. An English translation is required for the description. The details of applicant and inventor(s) including name nationality and addresses have to be provided along with the priority claim. Where PCT application claims a priority and the priority document was filed in compliance with Rule 17.1 of PCT with WIPO, a copy of Form of International Bureau 304 (PCT/IB/304) has to be filed with Indian Patent Office. Other documents such as the power of attorney, declaration of inventor-ship, verification of translation, etc., are also needed while filing a national phase application in India.
The experienced professionals at GPF are there to guide the clients through the process associated with the National Phase patent application. The team at GPF works with clients to provide and implement filing strategies based on the client’s demands and making it in a timely scheduled manner. (more info.)
Paris Convention Route Patent Application
A Paris Convention application is an alternative to the PCT patent application that is filed in the non-PCT member countries or filed directly in convention countries within 12 months from the first patent application filed in the home country. The first patent application filed in the home country is commonly referred to as a priority patent application. The priority date of the Paris convention patent application is the date of filing the first patent application in the home country. The Paris Convention patent application may be filed directly in the Contracting countries when the Applicants are very sure about the patentability of their invention and wish to secure a patent in the shortest possible time.
As soon the applicant file the patent application in the contracting state, it starts the 12-month period within which the applicant can file the application elsewhere and can claim the priority date of the priority application filed in the home country. To the extent that the content of the Paris Convention application is disclosed in the earlier priority document, it will be backdated to the priority date which is beneficial for the applicant.
The common advantage of using the Paris Convention as discusses earlier in the 12-month convention period which helps the applicant to seek funds or to perform market research and turn an idea into a commercial product. All of such exercises can be done by filing a Convention Application without risking a loss of rights in other countries.
The team at GPF consist of expert patent attorneys having a subsequent technological background for effectively filing with the patent application with perfect drafting of specification with the subject matter experts having years of experience. The dedicated support staff and attorneys are fully devoted to provide with all the advice required by the client for maximizing patent protection in multiple jurisdictions either through the Convention route or PCT. (more info.)
Patent Translation Service
To apply for a patent globally, many countries such as China, Japan, Korea, Brazil, among many others require translations in their language, making it critical to have translations done in such a manner that the most appropriate and technically relevant translated words are used consistently, as the similar words may have different meanings and interpretations in different geographical locations. Expertise and experience are therefore must-have attributes to convey the meaning of any technical term in its desired form. With the Patent Translation, it’s more than just a Google Translation. The importance lies with the meaning and nature of legal language associated with it. With a team of professionals across the world.
The team at GPF consist of experienced practitioners from varied fields who have expertise in doing translations for different nations. The GPF management team works hard to accommodate the scheduled timeline that is expected in different jurisdictions. Through association with Khurana and Khurana, Advocates, and IP Attorneys (which is among the leading IP and Commercial Law practices in India), GPF is aiming to raise the bar higher. (more info.)