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ARTICLE 5 PATENT PCT FILING

ARTICLE 5 PATENT PCT FILING

For every inventor, the patent protects their exclusive rights and protects their inventions from the duplications. Most of the patent protections are within the jurisdiction of the desired country which you get protection for your country. But in certain other jurisdictions, it may have the chance of having duplication of your same inventions. So to protect your invention in multiple countries, the international community has developed the Patent Cooperation Treaty (PCT) system. In this PCT system, we can file patents in multiple countries with a single application with the efficiency of time and cost. These systems help many of the inventors in the global markets and protect their intellectual property rights.

PATENT COOPERATION TREATY (PCT)

The Patent Cooperation Treaty (PCT) revolutionises the process of obtaining patent protection globally. This international treaty enables individuals from a Contracting State to secure patent rights for their inventions simultaneously across numerous countries. Rather than navigating the complexities of filing separate national or regional patent applications, a single PCT application streamlines the process. In simple terms, the PCT emerges as a strategic and efficient avenue for navigating the complexities of global patent protection, promoting consistency and simplicity in the patent application process.

Eligibility and Filing through Indian Patent Office: Any individual who is a citizen of a Patent Cooperation Treaty’s Contracting State can file a PCT application. In India, this application is facilitated through the Indian Patent Office.

Patents: Exclusive Rights for a Specific Period: Patents confer exclusive rights to patentees for a defined period, granted by the government. While a single application for global patent protection does not exist, applicants can safeguard their inventions in various countries. This involves filing priority patent applications in respective countries within one year of the initial invention filing.

PCT Application for International Reach: The PCT, associated with the World Intellectual Property Organization (WIPO), serves as an international patent law treaty. It offers a streamlined avenue for filing patent applications internationally among its contracting states. An application submitted under the PCT is termed an international application or PCT application.

INTERNATIONAL PATENT APPLICATION FILING PROCESS :

The applicant can file an international patent application through the World Intellectual Property Organisation (WIPO) website (www.wipo.int) or via receiving offices in respective countries. Filing a conventional patent application to several countries within 12 months of the priority date or opting for a PCT application within the same timeframe extends the window to 30 months. The WIPO organization furnishes an International Search Report (ISR), aiding applicants in determining their countries of interest.

  • The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO).
  • The PCT System 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 PCT System comprises 152 Contracting states.
  • The granting of patents remains under the national or regional legislation of the national or regional patent offices. It is called the “national phase.”
  • In the national phase, each patent office is responsible for processing the application in accordance with its national patent laws, and for deciding whether to grant patent protection. The time required for that processing varies across patent offices.

 

PROCEDURE FOR FILING PCT APPLICATION :

  1. Filing of International Application in a Receiving Office (RO):
  •   Initiate the process by filing a patent application in India, which serves as the foundation for the PCT filing.
  •   The PCT filing involves two phases: the international phase and the national phase.
  1. INTERNATIONAL PHASE:
  •   Within 12 months from the Indian patent application filing date, submit the PCT application, specifying the countries where protection is sought.
  1. International Search by an International Searching Authority (ISA):
  •   The International Searching Authority (ISA) conducts an in-depth international patent search.
  •   Within 4 months, the registry provides an International Patent Search Report along with a detailed opinion on patentability.
  1. Publication of PCT Application:
  •   The PCT application is published 18 months after filing the Indian patent application.
  1. International Preliminary Examination by an International Preliminary Examining Authority (IPEA):
  •   An International Preliminary Examining Authority (IPEA) conducts a comprehensive examination.
  •   Issues an international preliminary examination report, providing insights into patentability.
  1. NATIONAL PHASE:
  •   File patent applications in each designated country within 31 months from the Indian patent application filing.
  1. Grant of Patent by National Patent Offices:
  •   Respective national patent offices grant patents after the applicant complies with their specific national requirements.
  •   Each country’s patent grant follows its individual evaluation process.

ADVANTAGES :

  1. Global Reach with a Single Application:
  •   The PCT application provides a legal effect similar to a regular national patent application in all PCT member states.
  •   Offers a simplified and unified process, making the world of patent protection accessible through a single application.
  1. Deferred Internationalisation Costs:
  •   Postpones significant expenses related to internationalising a patent application.
  •   Enables applicants to defer the costs of filing individual national applications until they have a clearer understanding of the patent’s viability.
  1. Informed Parenting Decisions:
  •   Acts as a strategic tool for making informed patenting decisions.
  •   The international search and preliminary examination provide valuable insights into the patentability of the invention.
  1. Efficient National Phase Entry:
  •   Facilitates a systematic approach for entering the national phase in selected countries.
  •   Applicants can evaluate the international search results and preliminary examination reports to decide which countries are strategically important for protection.
  1. Extended Timeframe:
  •   The PCT process extends the timeframe before applicants need to commit to the substantial expenses associated with national phase entries.
  •   Offers flexibility in planning and budgeting for the subsequent stages of patent prosecution.
  1. Consolidated Application Process:
  •   Simplifies and consolidates the patent application process, reducing administrative burdens for applicants.
  •   Streamlines the procedure for seeking protection in multiple jurisdictions.
  1. Enhanced Patents Quality:
  •   The PCT system enhances the quality of patents by subjecting the application to an international search and preliminary examination.
  •   Provides an opportunity to address potential issues before entering the national phase.
  1. Unified International Standard:
  •   Establishes a standardized and internationally recognized format for patent applications.
  •   Promotes a uniform approach to patent filing, making the process more accessible and transparent.

WHAT IS THE DEADLINE FOR FILING NATIONAL STAGE :

The PCT International Phase Application to be filed directly within the 12-month period from the filing date of filing the Indian patent application.

The PCT National Phase applications in each of the designated countries should be filed within 31 months of filing the Indian patent application. Individual countries may allow more time and, in practice, the deadline for most countries is either 30 or 31 months from the priority date.

THE FEE ASSOCIATED WITH PCT FILING :

It is imperative for applicants to regularly monitor the World Intellectual Property Organization (WIPO) website for any updates or changes in fee structures. Being vigilant about fee adjustments ensures accurate budgeting and compliance with the latest requirements. Understanding the breakdown of fees allows applicants to navigate the PCT filing process effectively and make informed decisions at each stage of international patent protection.

Therefore, ensuring comprehensive awareness of the fee structure associated with Patent Cooperation Treaty (PCT) filing is crucial for applicants. Here is a breakdown of key fees:

  1. Transmittal Fee:
  •   This fee is associated with transmitting the PCT application to the International Bureau (IB).
  •   It covers administrative processing and initial review costs. 
  1. Priority Fee:
  •   Incurred when claiming priority from a previously filed application.
  •   Reflects the cost of securing the right to an earlier filing date.
  1. Search Fee:
  •   An essential fee for conducting an international search on the patent application.
  •   The search fee contributes to the expenses of the International Searching Authority (ISA).
  1. International Filing Fee:
  •   This fee is a fundamental component of the PCT filing process.
  •   Covers the cost of filing the international application and initiating the PCT procedure.
  1. Supplementary International Search and Preliminary Examination Reports:
  •   Additional fees may apply if supplementary international search and preliminary examination are requested.
  •   These reports provide further insights into the patentability of the invention.
  1. Centralised International Publication:
  •   Publication fees are associated with making the international application publicly available.
  •   This contributes to the dissemination of information about the invention to the global patent community.

Applicants and patent offices of contracting states benefit from uniform formality requirements, international search, and the fee associated with PCT Filing.

 

ARTICLE 5 PATENT PCT FILING
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