How The Patent Cooperation Treaty Works In India

The Patent Cooperation Treaty (PCT) is an international treaty designed to provide a single system of obtaining patent protection in multiple countries. The PCT simplifies and streamlines the initial stages of an international patent filing by allowing inventors, startups, research institutions, and businesses to file one international application that will be processed by all participating countries.

The World Intellectual Property Organization (WIPO) administers the PCT system and provides the framework for applicants to submit their international patent applications through a unified system. The PCT does not grant an international patent; however, it does facilitate the filing, searching, and processing of the patent application in the respective national jurisdictions through the use of a single system.

This article explains what the Patent Cooperation Treaty, the PCT application process, how the PCT works, the PCT filing procedure, and the role of the PCT in India and its role in the international patent system. Whether you are an inventor, a startup, or a business enterprise seeking global patent protection, professional assistance from TMWala can help you simplify the process of PCT filing and ensure compliance with international patent requirements.

What Is The Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) was created by the World Intellectual Property Organisation (WIPO). The convention allows access to patent protection in more than one country for a similar invention through just one application (and its translations) filed with WIPO under the PCT.

The PCT system is meant to simplify the international patent process. An applicant will benefit from having to file just one application rather than filing for protection in each country separately at this initial stage.

The PCT patent application does not result in the grant of an international patent; rather, it acts as the starting point for processing an application through the PCT system. Patent rights are continued to be granted by individual national or regional patent offices as per the laws prevailing in their country. However, the PCT just provides a common framework to assist patent applicants in pursuing patent protection internationally.

Convention Application In Patent Vs. Pct Application

A convention application in patent law requires separate filings in different individual companies while also claiming priority from an earlier application. In contrast, a PCT patent application permits the applicant to file one PCT patent application and to initiate the process through a single international filing, and later to decide the countries in which patent protection is to be pursued.

Patent Prosecution Process

When the PCT application moves into the national phases, it moves to the patent prosecution procedures at the patent office of each respective jurisdiction. This will involve the examination of the PCT application, issuance of office actions, potential amendment of the PCT application, and ultimately issuing a patent or a refusal of patent protection

How PCT Works

To understand how PCT works, there are two principal stages: the international phase and the national phase.

International Phase:

When an applicant files an international patent application under PCT, the international phase starts. During this phase, the application will go through the same process as defined by the treaty, processed according to the internationally based procedures.

The international phase consists of the following activities:

• Prepare and submit the international application
• Conduct an international search
• Issue a written opinion
• Publish the application internationally
• Conduct an optional international preliminary examination

The international phase will give the applicant valuable information for assessing whether their invention is patentable, as filing an international patent gives the applicant time to file a national patent application without incurring substantial national filing costs.

National Phase:

Upon completion of the international phase, the applicant may proceed to file for patent protection at the national level (PCT National Phase Entry) in the countries where they would like to seek patent protection.

At the national phase, each patent office will examine the application under its country’s patent laws and decide whether or not to grant patent protection.

PCT Filing In India

India, being a member of the Patent Cooperation Treaty, actively participates in the PCT system.

The Indian Patent Office may serve as a Receiving Office by accepting PCT filing in India from applicants who wish to obtain patent rights in India and many other countries. Most Indian patent applicants look to the PCT procedure as it provides procedural benefits to applicants and gives them additional time to evaluate whether their inventions will provide a viable economic return through commercial exploitation.

The Indian Patent Office plays a vital role in the international Patent Cooperation Treaty (PCT) System by providing assistance to the applicant, accepting and processing international applications from Indian applicants, and performing an international search and international preliminary examination on behalf of applicants who have submitted their applications to the Indian Patent Office as the Receiving Office. For more information, visit https://www.ipindia.gov.in/pages/patents/pct-isa-ipea

PCT Application Process:

It consists of the following important stages:

1. Preparation of the Patent Application
   Prior to filing, an applicant must prepare and submit a patent application. The patent application consists of all the necessary information about the invention (e.g., title, description, drawings or diagrams [if needed], claims, abstract) and is usually provided in writing. The applicant should also perform a patentability search before filing to determine if any prior art exists that might be relevant to the new invention, as well as assess if the invention is novel/has patentable characteristics.
2. Establishment of Priority Rights
   If the applicant has filed a domestic patent application prior to the international application, the PCT Applicant can claim priority to that earlier application.
   The Priority date and the Patent Rights are very important in determining the effective filing date against which the patentability/novelty and on/inventive step of an application will be determined.
3. Filing of the International Application
   The applicant must file the PCT Patent Application with the appropriate receiving office.
   When the application is successfully filed, the application receives an international filing date. This date will be recognized in all PCT countries.
4. International Search
   After the PCT patent application is filed, it will be sent to the International Search Authority for searching of prior art. The purpose of the International Search is to search the prior art and determine whether any prior art found could detract from the novelty/inventiveness of the claimed invention.
5. Issuance of PCT Search Report
   The PCT Search Authority provides a search report designating any prior related art that is relevant to the subject matter of your application. The search report will contain a written opinion from the ISA regarding the probability of your invention being patentable.
   The PCT Search Report is a valuable tool for evaluating the merits of your invention and deciding whether to proceed with any future filings.
6. International Publication
   The WIPO publishes your application, and the public can view it. The publication of your application will inform patent offices and interested entities around the world about your invention and make your application freely accessible to everyone worldwide.
7. Optional International Preliminary Examination
   At the applicant’s request and if available in your contract, an International Preliminary Examination Authority will conduct an international preliminary examination of patentability. This examination is an additional opportunity for you to address any patentability issues before entering national jurisdictions.
8. National Phase Entry
   The final step in the international patent application process is to enter the PCT national phase of protection. The applicant is required to enter the countries in which they desire patent protection and follow the procedural requirements of each respective jurisdiction.

For more information, visit:https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=IN&doc-lang=en

PCT Filing Timeline In India

The PCT filing timeline in India follows the common framework established under the Patent Cooperation Treaty. It includes the following:

• Priority Filing
• International Filing
• International Search
• International Publication
• National Phase Entry

With this timeline, applicants have additional time to evaluate markets. Seek investments to assess the commercial value of their invention before incurring expensive national filing costs.

PCT Filing Fees In India

The PCT filing Fees in India have the following components:

• International filing fee
• Search fee
• Transmittal fee
• Additional fees when applicable

PCT Fee Table – https://www.wipo.int/documents/d/pct-system/docs-en-fees.pdf

Role Of The World Intellectual Property Organization

WIPO is responsible for administering the Patent Cooperation Treaty system. Some of the responsibilities are:

• Managing international patent applications
• Facilitating international publication.
• Maintaining PCT records.
• Supporting communication between patent offices
• Ensure the smooth functioning of the treaty system.

In the absence of WIPO, coordinated operation of the international patent filing framework would not be possible.

Importance Of The PCT Search Report

The PCT search report identifies prior art references that may affect the patentability of an invention. It further helps the applicant in following:

• Assess novelty and inventive step.
• Evaluate the strength of the application.
• Make informed decisions regarding foreign filings.
• Prepare for the subsequent patent prosecution process.

Conclusion

Inventors and businesses can take advantage of the simplified process offered by the Patent Cooperation Treaty alongside a greater understanding of how the PCT process operates, what is involved in the PCT application process, when to file the PCT application in the jurisdiction (PCT Filing Timeline), and the role of both the World Intellectual Property Organization (WIPO) and International Search Authority (ISA) allow applicants to formulate an effective global patent strategy and obtain patent protection in multiple jurisdictions from a single international application.

For applicants looking to secure international patent protection efficiently, TMWALA can assist with patent drafting, PCT filing in India, international applications, and patent prosecution support.

FAQs

1. What is the Patent Cooperation Treaty (PCT)?
   The Patent Cooperation Treaty (PCT) is an international system governed by WIPO that allows applicants to seek patent protection in multiple countries through a single application.
2. Does a PCT application grant an international patent?
   A PCT application will not give an applicant an international patent because patent rights are granted by each country’s patent office.
3. Who can file a PCT application in India?
   Indian citizens, residents, startups, companies, and research institutions can file a PCT application through the Indian Patent Office.
4. What is the benefit of PCT filing in India?
   Through a single application, a PCT applicant in India will be able to file (for patent protection in more than one country) while delaying national filing costs.
5. What is an International Search Authority (ISA)?
   An International Search Authority conducts a prior-art search and provides a search report along with a written opinion on the patentability of the invention.
6. What is a PCT Search Report?
   A PCT Search Report identifies relevant prior-art documents of inventions and assists the investors in evaluating the novelty and inventive step of their invention.
7. What is the priority date of a patent application?
   Priority date refers to the filing date that establishes the novelty and patentability of an invention.
8. What is PCT National Phase Entry?
   It is a stage during which inventors make applications for patents in specific countries.
9. What is the cost associated with a PCT filing?
   Fees associated with PCT filing include the international filing fee, the search fee, the transmission fee, and others.
10. What is the role of WIPO in the PCT process?
    WIPO administers the PCT system, manages international patent applications, facilitates publication, and coordinates the international patent filing process.