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FREQUENTLY AKSED QUESTIONS ABOUT PCT APPLICATION

 

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1. What are the effects of an international patent application?

  1. The PCT facilitates the obtaining of protection for inventions where such protection is sought in any or all of the PCT Contracting States. It provides for the filing of one patent application (“the international application”), with effect in several States though the grant as per local/regional laws.

  2. Use of the PCT saves effort, time, and work of the applicant seeking protection for an invention in a number of countries.

  3. Use of the PCT also helps the applicant to make decisions about the prosecution of the application before the various national Patent Offices in the national phase of processing.

  4. The time limit provided by PCT for entering the national phase in various countries is 30/31 months from the priority date. If the PCT route is not followed by the applicant the time limit for entering/filing application in other countries remains 12 months. Therefore by using the PCT system the entry in National Phase can be deferred up to 30/31 months (and the resulting expenditure).

2. Who has the right to file an international patent application under the PCT?

PCT international application may be filed by a national or resident of one of the PCT Contracting States. In case there are several applicants named in the international application, only one of them needs to comply with this requirement

3. Where to file international patent application?

PCT International Application may filed with National Patent Office, or directly with IB of WIPO (if permitted by the national security/defense provisions of the country). Both of those Offices act as PCT "Receiving Offices"

4. PCT applications can be filed electronically?

Full electronic filing is possible with the PCT receiving Office at WIPO, and certain national and regional Offices. (However, Indian Patent Office does not support fully electronic filing of PCT International).
WIPO’s electronic filing software, PCT-SAFE (“Secure Applications Filed Electronically”), which can be downloaded from the PCT website helps PCT applicants to prepare their international applications in electronic form and to file them either via secure on-line transmission or on electronic media such as diskette, CD-R or DVD-R. Applicants who file electronically are entitled to certain PCT fee reductions. More details about PCT electronic filing can be found at www.wipo.int/pct-safe/en/.
The request for PCT International Application may be filed with Indian Patent Office as receiving office as a computer printout or, alternatively, as a computer printout prepared using the PCT-EASY software, in which case it must be accompanied by a computer disk containing a copy of the data as contained in the request in electronic form and copy of the abstract.

5. In what languages can an international patent application be filed?

An international patent application may be filed in any language which the Receiving Office accepts. If Application is filed in any Receiving Office in India it has to be either in English or Hindi. However, an application in Hindi shall be accompanied by a duly verified English translation.

6. What Office will carry out the international search of PCT application?

The following have been appointed by the PCT Contracting States as International Searching Authorities (ISAs): the national Offices of Australia, Austria, Brazil, Canada, China, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden and the United States of America, and the following regional Offices, the European Patent Office and the Nordic Patent Institute.

7. What are PCT international search, international Search report and written opinion?

PCT international search: A PCT international search is conducted by the qualified staff and by uniform search methods of ISAs as per the standards prescribed in the PCT. The search includes the relevant patent documents and other technical literature and results in an international search report and a preliminary and non-binding written opinion of the ISA on the potential patentability of the subject matter of the invention.

International Search Report (ISA): The ISA consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application.

Written Opinion (WO): ISA together with the ISR prepares a non-binding written opinion on patentability on the invention in light of the search results cited in the ISR. The ISR and WO are communicated by the ISA to the applicant fourth or fifth month after the filing of the international patent application. If applicant wishes, they can submit informal comments to WIPO in response to written opinion; in this way, they have an opportunity to respond to the reasoning and conclusions of the written opinion. If no international preliminary examination report has been or will be established, the written opinion of the International Searching Authority will form the basis for the issuance by the International Bureau, on behalf of the International Searching Authority, of the international preliminary report on patentability (IPRP) (Chapter I).

8. What does international publication under the PCT consist of?

WIPO publishes the international application shortly after the expiration of 18 months from the priority date (if it has not been withdrawn earlier), together with the international search report. PCT international applications are published online on PATENTSCOPE. www.wipo.int/patentscope/search/en/structuredSearch.jsf

9. What is international preliminary examination and its value?

International preliminary examination is a second evaluation of the potential patentability of the invention. The international preliminary examination provides an opportunity to the applicant to make amendments to international application in order to overcome documents identified in the search report and conclusions made in the written opinion of the ISA.

 

10. I am an Indian Resident. I wish to file patent applications outside India. What are the possible routes to file patent application abroad?

 

Patent rights are territorial in nature meaning that a patent granted in India confers upon the patentee the exclusive right to prevent third parties (who do not have his consent) from the act of making, using, selling, offering for sale or importing the patented product or process in Indian territories only.

 

An Indian Applicant may file Patent Applications outside India via the following routes:

 

a) What is Paris Convention route?

 

To pursue international patent protection, an Indian resident may typically start by filing an Ordinary Patent Application in India. The applicant may then file patent application in countries which are contracting states of Paris Convention within 12 months from the filing date of that first patent application, giving the applicant the benefit in all those countries of claiming the filing date of the first application. The Patent Application filed in India serves as a “priority application” serving as a placeholder for any future international patent applications.

 

Paris Convention has 176 contracting states. For a list of all the contracting states, you may visit the below link:

 

http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=2

 

The Applicant may directly file separate patent applications at the same time in all of the countries in which he would like to protect his invention, or having filed in a Paris Convention country, then file separate patent applications in other Paris Convention countries.

 

b) What is Patent Cooperation Treaty (PCT) route?

 

PCT stands for Patent Cooperation Treaty which was concluded at Washington on June 19, 1970. It is an International Patent System that assists applicants in seeking patent protection internationally for their inventions in each of its contracting states.

 

Please note that a PCT application establishes a filing date in all contracting states and the applicant has to enter the application into national phase in each contracting states. The national phase application is then granted or rejected as per patent laws of that jurisdiction.

 

11. What are PCT Contracting States?

 

Alternatively the applicant can file PCT International Application within 12 months from the earliest priority date and then the National Phase ultimately occurs within 30 or 31 months of the priority date. This extra span of time can be useful for gathering funding or deciding where to file, for some technologies, especially those with a short shelf life.

 

PCT has 148 contracting states. For a list of all the contracting states, you may visit the below link:

 

http://www.wipo.int/pct/en/pct_contracting_states.html

 

A comparison of the Paris Convention and PCT route is illustrated below:

 

 

Image source: http://www.wipo.int/pct/en/faqs/faqs.html

 

12. What is Receiving Office?

 

The Patent Offices of the countries that are members to the PCT are called Receiving Offices. The International Application must be filed in an authorized Receiving Office. The Receiving Offices are prepared to accept the filing of International Applications containing requests in PCT-EASY format together with a PCT-EASY physical medium (depending upon the medium acceptable). The Receiving Office functions as the filing and formalities review organization for International Applications.

 

One cannot file an International Patent Application in any Patent Office, but to an appropriate Receiving Office.

 

Where there are several applicants who are not all nationals and/or residents of the same country, any Receiving Office where at least one of the applicants is a resident or national is authorized to receive an International Application filed by those applicants. Alternatively, the International application may be filed with the International Bureau as the Receiving Office.

 

13. What is the criteria for selecting a Receiving Office?

 

The applicant may choose the following as the Receiving Offices:

 

a) International Bureau (IB) of WIPO

b) Regional Office

 

Any resident or national of a PCT Contracting State may file an International Application directly with the International Bureau of WIPO as Receiving Office, as an alternative to filing with the competent national or Regional Office.

 

14. What are the necessary documents required for PCT filing?

 

The necessary documents required for filing PCT International Application are outlined below:

 

a) PCT Request (Form PCT/RO/101) A standard form generally used to meet some of the requirements set forth in PCT Article 11;

b) Description

c) Claim or claims

d) Abstract

e) Drawings, when necessary for the understanding of the invention pursuant to PCT Article 7

f) Power of Attorney

g) Sequence listing part of the description (when required)

 

15. What is the mode of filing PCT International Application?

 

An International Application may be filed directly with the International Bureau as Receiving Office by following modes:

 

• electronically (via ePCT or PCT-SAFE, or EPO Online Filing); or

• by facsimile (the original of the faxed application is required to be furnished within 14 days from the date of the fax transmission); or

• by e-mail; or

• Hand-delivery to WIPO headquarters.

 

16. What is the fee for filing PCT International Application?

 

PCT applicants generally pay three types of fees when they file their international applications:

 

(a) an international filing fee;

(b) a search fee which can vary from approximately depending on the ISA chosen; and

(c) a transmittal fee which varies depending on the Receiving Office. For exhaustive costs incurred per stage, please visit the below link:

 

http://www.wipo.int/export/sites/www/pct/en/fees.pdf

 

17. Is there any fee reduction for filing PCT International Application?

 

The PCT International Application can be filed with Indian Patent Office as Receiving Office (RO) or directly with WIPO (by selecting International Bureau (IB) as Receiving Office). By selecting International Bureau (IB) as the Receiving Office (RO), applicability of E-filing reduction in PCT Fees may be availed. Please note that a significant reduction (upto 90 %) in international filing fee including the fee per sheet over 30 is available if the PCT International Application is filed online by a natural person residing in certain countries, which includes India as well. Further, an exemption from transmittal fee is also provided when selecting International Bureau as Receiving Office.

 

18. What are the benefits of filing PCT International Application?

 

The PCT International Application offers numerous advantages as follows:

a) Streamlining the process of filing applications in multiple countries;

b) Filing a Patent Application under PCT enables the applicant to delay strategic decisions about where to pursue patent protection;

c) Provides the applicant with preliminary feedback about the patentability of the invention;

d) Under the PCT filing, the applicant is issued an International Search Report (ISR) that affords the applicant an opportunity to withdraw the application on receipt of an unfavorable ISR prior to publication of the application.

 

19. How do I choose which countries to enter PCT application?

 

a) The PCT is an international treaty with more than 145 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application and designating the contracting states.

b) In addition, the international application includes designations for regional patents in respect of States party to any of the following regional patent treaties: the Protocol on Patents and Industrial Designs within the framework of the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Convention, the European Patent Convention, and the Agreement establishing the African Intellectual Property Organization (OAPI).

 

20. Can I file PCT International Application directly without first filing in India?

 

As per Section 39 of Indian Patents Act, 1970, in cases where the person is an Indian resident and he/she decides to directly file a patent application in a foreign country without first filing in India, it is obligatory for him to obtain Foreign Filing License (FFL) from the Indian Patent Office.

 

Foreign Filing License is a written permission obtained from the Indian Patent Office. By granting FFL, the IPO waives off the mandatory requirement of first filing a patent application in India, allowing Indian residents to directly file a patent application outside India for an invention. The reasons for direct filing in a foreign country may be:

 

• The invention holds low or no scope/market in India

• The invention might be under non-patentable subject in India

 

Alternatively, any person who is a resident of India may file a patent application for his/her invention first in India, and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India. Foreign Filing License is not required if six weeks have lapsed since the filing of the Indian patent application, and there has been no secrecy direction issued by Indian Patent Office.

 

21. What is the procedure of PCT International Application?

 

The PCT procedure includes:

 

Filing: An applicant may file an International Application with a National or Regional Patent Office or WIPO as per the requirement of PCT in a prescribed language along with prescribed fees.

International Search: An “International Searching Authority” (ISA) performs a search on published patent documents and technical literature (“prior art”) and provides results. It also establishes a written opinion on invention’s potential patentability.

International Publication: After the expiration of 18 months from the earliest filing date, the content of International Application is disclosed to the public. Supplementary International Search (optional): At the request of the applicant, second ISA identifies published documents which may not have been found by the first ISA which carried out the main search.

International Preliminary Examination (optional): At the request of the applicant, the ISA carries out an additional patentability analysis, usually on an amended version of your application.

National Phase: At the end of the PCT procedure, usually at 30/31 months from the earliest filing date of initial application, the application enters National Phase of each/selected countries for the grant of patent directly before the national (or regional) patent Offices of that countries.

 

22. What is PCT International Phase and PCT National Phase?

 

A PCT application (also called "international patent application") has two phases. The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT. The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT.

 

For more information on Foreign Filing License, please visit the below link:

 

http://www.ssrana.in/Intellectual%20Property/Patents/Foreign-Filing-License.aspx

 

23. Which office carries out International Search?

 

Once a PCT application is filed, an International Search Authority (ISA) performs a search of the prior art, and provides the results to the applicant in the form of an International Search Report. For a complete list of ISAs, please visit the below link:

 

http://www.wipo.int/pct/en/access/isa_ipea_agreements.html

 

24. What is the criteria for selecting International Search Authority?

 

The availability of a particular International Search Authority to the nationals or residents of a country is determined by the Receiving Office where the international application was filed. Every Receiving Office allows applicants the access to at least one ISA. Some Receiving Offices provide a choice of more than one competent ISA. If your receiving Office is one of those, you can choose any one of them, taking into account differing requirements relating to language, fees, etc.

 

http://www.wipo.int/pct/en/access/isa_ipea_agreements.html

 

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