Did you know a patent can potentially double your company’s valuation? For Indian inventors aiming for global recognition, grasping PCT Filing from India is essential. Having guided numerous clients through the complexities of patent law, I will break down the steps, deadlines and key details for a successful PCT application.
What is This Patent Cooperation Treaty?
Before diving deeper into PCT filing from India, let us examine the Patent Cooperation Treaty (PCT). With over 150 member countries, it significantly simplifies securing patent protection across various jurisdictions, offering a streamlined process.
Consider two scenarios: submitting individual patent applications in each desired country or filing a single international application through the PCT. While the PCT route does not guarantee automatic patent grants, it does establish a crucial priority date. More importantly, it provides a generous window (up to 30 or 31 months) to determine target countries for patent pursuit.
Why Should Indian Inventors Use the PCT System?
Here are compelling reasons why an Indian inventor should consider the PCT:
- Global Reach: The PCT enables patent protection in numerous countries through a single application. This is advantageous when your invention has international market potential.
- Delayed Costs: The PCT allows postponing expenses associated with individual country filings. It provides time to assess market viability and attract potential investors.
- International Search Report: The International Searching Authority (ISA) examines existing technologies during the PCT application to determine patentability. The resulting report (ISR) provides valuable insight before committing to specific countries.
- Simplified Process: The PCT offers a more centralized and manageable system for international patent applications.
Pct filing procedure in india: A Step By Step Guide
The pct filing procedure divides into the international phase and the national phase.
1. International Phase
a. Filing the PCT Application:
- Begin by submitting a PCT application to a Receiving Office (RO). In India, this is typically the Indian Patent Office (IPO), acting as RO/IN.
- Your application must include a formal request, a comprehensive description of the invention, specific claims, relevant drawings (if applicable) and a concise abstract.
- The application can be filed in either English or Hindi.
b. International Search:
- The Receiving Office forwards the application to an International Searching Authority (ISA).
- The ISA conducts a thorough search for prior art and issues a report (ISR) with an opinion on the invention’s patentability.
- The ISR generally arrives within 16 months of the priority date or 9 months from the filing date, whichever is later.
c. International Publication:
- The International Bureau (IB) of WIPO publishes the PCT application, typically 18 months after the priority date.
d. International Preliminary Examination (Optional):
- You can opt for an International Preliminary Examination (IPE) for a more detailed assessment of patentability by an International Preliminary Examining Authority (IPEA).
- The IPEA issues a report (IPER) offering a nonbinding opinion on the invention’s patentability.
- Requesting an IPE can provide a clearer understanding of your invention’s prospects before entering the national phase.
2. National Phase
a. Entering the National Phase:
- Following the international phase, determine the specific countries where you seek patent protection.
- To proceed, you must “enter the national phase” in each selected country by the designated deadline, submitting a national phase application to their respective patent offices.
- The national phase entry deadline is usually 30 or 31 months from the priority date, depending on the country.
b. National Phase Requirements:
- Each country imposes unique requirements for national phase applications, such as:
- Providing a translation of the PCT application in the country’s official language.
- Paying the necessary national phase fees.
- Submitting any further information or documentation requested by the national patent office.
c. Examination and Grant:
- After national phase entry, the national patent office examines the application according to their laws and procedures.
- If the invention meets their patentability criteria (novelty, inventiveness and industrial applicability), a patent will be granted.
Key Considerations for PCT Filing from India
1. Timeline:
- Remember the 12 month window from your initial file a patent in India to file the PCT application, claiming priority from that Indian application. Missing this deadline is fatal.
- The national phase entry deadline (30 or 31 months from the priority date) is equally critical. Noncompliance results in application forfeiture in those countries.
2. Costs:
- PCT filing involves varied costs:
- PCT application submission fees.
- International search fees.
- International preliminary examination fees (if requested).
- National phase entry fees in each country.
- Translation fees.
- Patent attorney fees.
Develop a detailed budget. Prioritize countries with the strongest market potential for your invention.
3. Foreign Filing License (FFL):
- Under Section 39 of the Indian Patents Act, residents of India seeking to file a patent application outside India for an invention originating in India must obtain a Foreign Filing License (FFL) from the Indian Patent Office.
- Alternatively, if an initial patent application is filed in India and six weeks pass without secrecy instructions from the IPO, an FFL is implicitly granted. In such cases, a PCT application can be filed without explicitly securing the license.
4. Qualified International Searching Authority (ISA):
- Since October 15, 2013, the Indian Patent Office (IPO) is recognized as both an International Searching Authority (ISA) and an International Preliminary Examining Authority under the PCT.
- While the IPO can be selected as your ISA, alternative choices include the European Patent Office (EPO) or the United States Patent and Trademark Office (USPTO). The chosen ISA impacts search report quality and associated costs.
Common Pitfalls
Having assisted numerous clients with pct filing, I have seen these mistakes repeatedly. Avoid them:
- Deadline Misses: The most common error. Rigorously track deadlines, ensuring timely document submission and fee payment.
- Poor Application Quality: A poorly written application diminishes patent prospects. Ensure clarity, conciseness and thoroughness in describing your invention.
- Insufficient Prior Art Search: Conduct comprehensive prior art searches before filing a PCT application to assess your invention’s patentability.
- Ignoring National Phase Requirements: Each country mandates specific national phase requirements. Understand and fully comply with these requirements.
How a Patent Attorney Is Helpful
The intricacies of the PCT system often warrant expert assistance. A patent attorney offers invaluable support by:
- Crafting a robust patent application.
- Conducting thorough prior art searches.
- Providing strategic guidance on PCT filing.
- Representing you before the Indian Patent Office and other national patent offices.
- Ensuring regulatory compliance.
Conclusion
PCT filing from India can unlock international patent protection, provided you master the process, timelines and key details. When uncertainty arises, seek guidance from a patent attorney. This will boost your chances of success, safeguarding your intellectual property. I have witnessed firsthand how a well executed PCT strategy can unlock opportunities and value in global markets for clients.
