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PCT FILING PROCEDURE IN INDIA : AN ANALYSIS

Updated: Jan 5

Author: Monalisa Choudhury, IV year of B.A.,LL.B(Hons.) From National Law University & Judicial Academy Assam.


INTRODUCTION

The Patent Cooperation Treaty (PCT) is an agreement strengthening international cooperation towards harmonization of patenting at the international level. Major objective of the PCT is to ease the method of patenting thus making it more efficient, effective and economical within the interests of applicants seeking patents in several countries. The treaty makes it possible to get patent protection for an invention simultaneously in a number of nations by filing an `International Patent Application’. Such an application is filed by anyone who could be a national or resident of a contracting country party to the PCT. The treaty enables the filing, with one Patent Office, of one application in a single language having effect in each of the contracting countries, which the applicant `designates’ in his/her application. The PCT becomes relevant only if the applicant is keen on filing an application in several countries. If he/she is interested on filing a patent in one country only, the PCT has no relevance.


The PCT provides a framework for circulation of technical information among the Contracting countries. It promotes the exchange of technical information contained in a very patent document among the countries signatory to the treaty and also with the scientific community concerned with the particular invention.


The treaty only simplifies the procedure for an applicant to get patents for his/her invention in a number of states designated for the same. Although the PCT application is termed as an `international application’ the treaty doesn't provide for the `international patent’ which is left to the particular country within which the patent is sought by the applicant. The PCT isn't a platform for grant of patents. Patents still are granted by various National Patent Offices (referred to as `Designated Offices’) within which patent protection is sought by designating the application in that particular country.


The article aims to discuss the functionality of the Patent Cooperation Treaty with a view of analyzing the recent developments in PCT System. The article shall also focus on elucidating the procedure of filing PCT Applications (both international and national phase) for India.


PCT SYSTEM : TRACING THE RECENT DEVELOPMENTS

Recently, a number of changes have been made to enhance the functionality of the PCT system. The changes are enlisted as:

a) PATENTSCOPE

PATENTSCOPE gives a user free access to over 67 million patent documents additionally to over 3.3 million PCT applications. It consists of the national patent data collections of several Patent Offices. PATENTSCOPE features a varied number of powerful tools, including cross-lingual and compound search in addition to artificial intelligence.


Interface is now available in 10 languages. The 'Documents' tab consists of the new section termed as 'Search and Examination-Related Documents'. A brand new secure access system associated with PATENTSCOPE is running via https. Moreover, Cross-Lingual Information Retrieval (CLIR) (Cross-Lingual Expansion) has been developed allowing the search of a term/phrase and its variants in several languages. By entering the key term in one language, the system will suggest you all possible variants and can then translate the term(s), also facilitating the search of patent documents in other languages.


b) WIPO Pearl

A new feature called "WIPO Pearl" has now been added to the WIPO database which is a web terminology database used for searching multilingual contents. This is available in altogether 10 PCT languages. It helps to market accurate use of key terms across various languages and also makes it easier to look and share scientific and technical knowledge. All the content under "WIPO Pearl" is validated by WIPO language experts and experienced terminologists.


c) Licensing availability

Applicants whoever are keen on executing licensing agreements in respect to their PCT application can intimate the International Bureau (IB) and request them to furnish the required information on PATENTSCOPE. Applicants should submit a "Licensing Availability Request" and fill form PCT/IB/382 and submit it to the IB using an ePCT "Action". It should be noted that this request is made at the time of filing or within 30 months from the priority date. Applicants can file multiple licensing requests or update previously submitted ones (within 30 months from the priority date). The licensing indications are going to be then appeared on PATENTSCOPE under the "Bibliographic data" tab together with a link to the submitted licensing request.


WIPO GREEN, which has been revised now, is additionally a related platform that matches owners of environmentally sound technologies (ESTs) with technologies that are seeking licensing or partnership agreements.


d) Third Party Observations

Under this feature, third parties get an opportunity to submit their respective prior art observations relevant to 'novelty' and 'inventive step'. It’s a Web-based system which uses ePCT or web-forms in PATENTSCOPE. Submissions are possible until the expiration date, which is 28 months from the priority date. Applicants may submit their comments in response to those observations until the expiration of 30 months from the priority date. This technique makes observations available in PATENTSCOPE and it notifies the applicant of submission of observations.


e) PCT Direct

New services are being offered by the EPO and Israel Patent and Trademark Office Database within which applicants can address their issues regarding patentability in search opinion established for the priority application by the office itself. Its aim is to enhance the efficiency and quality of the procedure adopted by ISA. The informal comments are filed along with the application termed "PCT Direct Letter".


f) Fee Reductions in WIPO Arbitration and Mediation Center (AMC)

25% lifetime reduction is obtainable on AMC's registration and administration fees, wherein a minimum of one party to the dispute has been named as an applicant or inventor in a very published PCT application (no relationship to the dispute is required).

AMC is an independent body that gives alternative resolution options for commercial disputes between private parties. It gives time and value efficient alternatives to litigation.


g) Time-limit for Supplementary search request

The deadline for requesting supplementary international search has been extended from 19 months to 22 months from the priority date (PCT Rule 45bis.1).


h) 90% fee reductions

An amendment was made to the PCT Schedule of Fees which clarifies an understanding that the 90% fee reductions in item 5 of the Schedule of Fees are intended just for persons filing a global application in their claim and not those filing a global application on behalf of an individual or entity which isn't eligible for the reduction.


INTERNATIONAL PATENT FILING VIA PCT

PCT provides a platform for applicants seeking patent protection for his or her inventions internationally. By one international application under PCT filing, applicants can simultaneously obtain protection for his or her invention in an exceeding number of nations. Currently, PCT has 153 Contracting States.


PCT being a world regime to safeguard inventions by granting patents, it does consist of some rules and procedure of its own for doing so. Among them some are mandatory (such as filing of the patent application, international search, international publication and national phase) and a few are optional (such as supplementary international search and international preliminary examination). When the applicant files the PCT application at the regional authority or directly at international authority, the same is examined by the ISA (International Search Authority) whether its patentable or not and published in international journals in order to make the whole world comprehend the invention making a room for the oppositions to be filed globally.


Though the examination and publication are done by international authority, the granting of patents remains under the control of the national or regional Patent Offices in the stage termed as "national phase".


General Procedure for Filing an application under PCT

The procedure for filing a patent application under PCT consists of a couple of phases. It starts with the filing of a global application (international phase) and ends with the grant of variety of national and/or regional patents (national phase). The international phase consists of the subsequent stages.

  • Filing of the international application by an applicant and its processing by the “Receiving Office”.

  • Generation of the International Search Report (ISR) and written opinion by International Searching Authorities (ISA).

  • Publication of the international application with ISR and written opinion by IB of WIPO.

  • Conducting a supplementary international search by one or more of the International Searching Authorities (authority apart from the one that conducted the major international search) and generation of Supplementary International Search Report (SISR). (Optional)

  • The international preliminary examination concludes with the establishment of the International Preliminary Report on Patentability (IPRP) by one among the International Preliminary Examining Authorities. (Optional)

  • Communication of published international application, ISR, and other reports (optional) to the national and/or regional Offices (designated states) by the IB where the applicant wishes to receive patent protection.

Based on published international application, the applicant proceeds with the formalities of the national phase like patent national and/or regional fees, translated copy of the international application (if required), patent agent or representative where required, within a given time-frame or limit. Thereafter, national and/or regional offices examine the same, and grant or refuse the national and/or regional application subject to their national laws.


Costs related to an Application

PCT applicants generally pay three forms of fees once they file their international applications:

  • an international filing fee,

  • a search fee which might vary reckoning on the ISA chosen, and

  • a small transmittal fee which varies looking on the receiving Office.


Cost of Filing a PCT Application for India

  • Transmittal fee of e-filing- Natural Person- 3200 INR, Small Entity – 8000 INR, Others – 16000 INR and for physical filing – Natural Person- 3250 INR, Small Entity – 8800 INR, Others – 17600 INR

  • International filing fee for Indian Applicant – 1471 USD (Fee per sheet over 30 is 17 USD and reduction in fee for PCT easy filing 11 USD)

  • Search fee for Indian applicant choosing Indian Patent Office as ISA, for individuals 2500 INR and others 10,000 INR.

  • Preliminary Examination fee where the ISR was issued by ISA/IN for persons is 2500 INR and others 10,000 INR and where the ISR wasn't issued by ISA/IN for individuals is 3000 INR and others 12,000 INR.


NATIONAL PHASE PCT APPLICATION

Within 31 months from the priority date, the patent application enters the National Phase PCT application. The National Phase of a PCT application resembles a national filing within a respective country. The choice to grant patent protection in a very nation finally rests on the Patent Office of that particular country. However, the filing of a PCT application is far simpler than the filing of a normal national application since most of the formal requirements are resolved within the international phase itself. Also, the national examiners most frequently follow the Search Report conducted during the International Phase.


Documents to be Furnished

  • Furnishing of a translation (in English). Required contents of Translation are: Description, claims (if amended, both as originally filed and as amended, along with any statement under PCT Article 19), any text matter of drawings, abstract.

  • A copy of the international application is required given that the applicant has not received Form PCT/IB/308 and also the Patent Office hasn’t received a duplicate of the international application from the International Bureau under PCT Article 20.


Miscellaneous Documents Required

  • Name, address and nationality of the inventor if they were not furnished within the "Request" section of the international application.

  • Instrument of assignment or transfer where the applicant is really not the inventor

  • Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a very notification from the International Bureau (Form PCT/IB/306)

  • Declaration of inventorship by the applicant

  • Address for service in India (but no representation by an agent is required)

  • Power of attorney if an agent is appointed

  • Verification of translation: Verification does consist of a straightforward statement by the Applicant or his agent that the said translation is correct and complete.

  • International application or translation to be furnished in two copies

  • Furnishing, where applicable, of a nucleotide and/or organic compound sequence listing in electronic form;

In case there are corresponding applications in other countries, the applicant must file within six months from the date of entry into the national phase, an announcement concerning any corresponding applications filed in other countries. The statement must be made on Form 3.

The application needs to be filed at any of the four Patent Offices located at Delhi, Kolkata, Chennai or Mumbai, reckoning on the domicile, business or place of the Applicant. If the applicant for the patent has no business, place or domicile in India, the suitable Patent Office is going to be the address of service in India.


Procedure : National Phase PCT Application in India

  • Publication: Every application is published after 18 months from the date of filing. Thus, letter of invitation for earlier publication is made in Form 9 together with the prescribed fee. Once published, the patent application is deemed to be available to the general public domain.

  • Request for Examination: An Applicant should file Request For Examination (RFE) within 48 months from filing. The Controller forwards the documents to the Examiner within a month from the date of publication or one month from RFE, whichever is later. Within a period of three months from the time of receiving the documents from the Controller, the Examiner establishes the examination report. The Controller forwards the Report (also referred to as First Examination Report, FER) to the applicant or his agent within 6 months from the date of publication or from the date of RFE, whichever is later. An applicant has got to conform to the requirements imposed on him within a period of 12 months from the date on which the FER is forwarded to him, else the patent application is deemed as abandoned.

  • Grant of Patent: After the instructions/ objections of the Controller are complied with, the patent application together with the whole specification is published in Patent Journal. The said application is receptive of oppositions for a period of 4 months or for such further period as prescribed. If no oppositions are filed or if the opposition has successfully been overcame, the application will proceed for grant of the patent.


Fees

The official fee for filing a PCT Application (Patent Cooperation Treaty) and request for examination would be minimum US$470 for an outsized entity and US$94 for a smaller entity, and it varies depending upon the quantity of pages and claims.


PCT FILING IN INDIA: AN OVERVIEW

PCT is normally filed with the National Patent Office of the Contracting State of which the applicant could be a citizen or resident or, at the applicant’s option, with the International Bureau of WIPO in Geneva. If the applicant comes up as a national or resident of a Contracting State party to the EU Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international application may additionally be filed with the EU Patent Office (EPO), the African Regional IP Organization (ARIPO), the African IP Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.


PCT provides a platform for applicants seeking patent protection for his or her inventions internationally. By filing one international application under PCT, applicants can simultaneously obtain protection for his or her invention in huge number of nations.


Procedure to file PCT application (PCT Filing)

In 1998 India became a signatory to Patent Cooperation Treaty. The patent cooperation treaty provides an individual exact thirty months time from the date of the first filing to file the application. Additionally it provides International search reports. This report will guide one regarding filing of an application further in other countries.


One can file PCT application either with a regional office like Indian Patent Office or with the International Bureau- World Intellectual Property Right organization office in Geneva, Switzerland. PCT application must be filed within twelve months from the date of Regional/ Indian patent filing date by claiming priority. Now if one directly wants to file an application via Patent Cooperation treaty and not in regional office, for that one simply needs to take permission from the Indian authority.


Usually, one can file a PCT application (PCT Filing) with the International Bureau because it's highly economical. International application fees, International searching authority fees and priority fees are involved with stages. Priority fees is only applicable just in case one has filed the patent application in regional office. After filing PCT application, the said application shall be examined within nine months only if one has got the PCT application directly with the International Bureau or sixteen months if he or she has filed PCT application with claiming priority. International Preliminary Examination concludes with the establishment of the International Preliminary Report on Patentability (IPRP) by one among the International Preliminary Examining Authorities. (Optional) Communication of published international application, ISR, and other reports (optional) to the national and/or regional Offices (designated states) by the IB where the applicant wishes to receive patent protection.


A Few Important Initiatives taken by the Indian Patent Office (IPO) to facilitate PCT Filings

IPO as DAS

The Indian Patent Office (IPO) commenced operating as both, a Depositing and an Accessing office of DAS with effect from 31 January 2018. If the applicant has requested as a depositing Office, it shall submit certified copies of patent applications and style applications as priority documents in DAS, including PCT applications filed at the Office on or after 31 January 2018. As an Accessing Office, it shall recognize all the relevant priority documents available thereto through DAS platform for the needs of any application that the deadline for submitting the priority document has not expired by 31 January 2018. Priority documents will be transmitted to IB through WIPODAS.


Currency issue resolved

A new INR A/C has been opened under the name of CGPDTM at the Central Bank of India FOREX division and therefore the USD A/C in SBI Overseas bank has been closed now. The applicant can make payments directly through NEFT /RTGS towards IB fee and ISA and submit the UTR /Ref numbers via email to RO/IN. RO will prepare debit instructions to the bank and transmit the payment subsequently to IB and ISA. It shall also intimate the said through e-mail to any or all International authorities. Transmittal and Priority fee also can be paid through form 30 via the net payment portal.


CONCLUSION

There are certain ways to file a patent application within a country of interest. The selection is typically subject to a business strategy, and balanced by cost considerations. If protection of the invention is required in a handful of countries, it's usually most economical to file directly into those countries and claim priority to any provisional application which has been filed – called (Paris) Convention applications. Alternatively, where an applicant requires a large number of countries, it's more common to file a Patent Cooperation Treaty (PCT) application (and claim priority). However, it is indeed possible to pursue Convention applications in parallel with a PCT application.


The strategy of filing Convention applications incurs relatively-expensive filing costs sooner compared to filing a PCT application, where the key filing costs are deferred for 18 months – a period named the International Phase. In other words, the PCT application takes the place of the individual foreign patent applications that will otherwise be required. After the International Phase, during a period named as National/Regional Phase, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought.


The decision of whether to file Convention applications or a PCT application (and subsequently enter the national/regional phase) depends on the budget and therefore the commercial strategy. Assuming a PCT application is filed, there's an additional decision on whether to file a requirement, which depends on factors like the commercial stage of the merchandise, the interest of licensees, the scope of the planned national/regional filings, the budget, and also the scope of the prior art cited in ISR.