As a rule of thumb, Patent Rights are territorial in nature. This means that in order to protect an invention in India, a patent application has to be filed in India aiming at the grant of corresponding patent in India. Likewise for all other countries. There is no process of a worldwide grant of patent that can give worldwide protection through a single application. However, international protection of an invention is possible through the following means.
Priority date is when an invention is first filed, where in a provisional or a complete application. However, applications via Convention or PCT route have to be complete applications.
Convention application refers to a patent application filed in accordance with the terms of Paris Convention that facilitates direct filing in another country for all members of the Convention. Members include India and all other major countries. Filing through Paris Convention has to be done within 12 months from priority date.
Patent Cooperation Treaty (PCT) is an international treaty with more than 150 Contracting States and makes it possible to seek patent protection for an invention simultaneously in numerous countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. However, it should be noted that the granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. Such applications can be filed within 30-34 months (per jurisdiction) of the priority date, instead of usual 12 months. Besides, acting as a ‘single window’ during international phase, PCT simplifies documentation and logistics aspects. Further, the PCT also provides for an International Search Report on the invention that can give a glimpse of the chances of patent grant in multiple jurisdictions.
Nationals/Residents of India can file an international application with – the Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata as the Receiving Office (RO/IN) or – the International Bureau of WIPO as the Receiving Office (RO/IB)
ISA establishes International Search Report (ISR) which identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether the invention is patentable. ISA also establishes Written Opinion of Search Authority (WOSA) on the invention’s potential patentability.
After establishment of ISR/WOSA and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). If the applicant does not opt for IPE, the International Bureau of WIPO publishes the WOSA as International Preliminary Report on Patentability.
The National Phase of a PCT Application is very similar to a regular national filing. Though the Patent Office is the sole decision-making authority on the subject. Typically, the grant of patent protection after the PCT National Phase entry is simpler than the filing of a regular national application, since most of the formal requirements are resolved in the International Phase of the Application.
An Applicant ( that can be an inventor or his assignee) can either file a Provisional Application or a Complete Application, wherein in case of a Provisional Application, the corresponding Complete Specification is to be filed within 12 months from the Provisional Filing.
PCT/International Application is to be filed within 12 months from Priority Date (date when the earliest of Provisional/Complete Application is filed). Usually the Applicant gets 30 months from the Priority Date to file national phase applications in countries of choice.
During international/PCT phase, patent applicant gets International Search Report (ISR) from International Searching Authority (ISA) which gives a non-binding opinion on patentability. Based on this report, patent applicant can decide whether or not to enter national phases.
Protecting Intellectual Property in a foreign jurisdiction can be a daunting endeavor for even the most sophisticated applicants. At every step of the way, we strive to provide extra value to our clients. Our offices at foreign jurisdictions, namely, Bangladesh, Myanmar, Nepal and Vietnam act as a constant support structure for providing our clients with excellent global IP services. Our team comprising of a number of foreign associates helps our clients in cost-effective filing in different countries and also manages the prosecution thereafter.
Yes, India accepts and processes international patent applications electronically.
An international patent application can be filed at the Indian Patent Office in triplicate either in English or Hindi language. However, an application in Hindi shall be accompanied by a duly verified English translation.
Yes, India is working as ISA and IPEA since October 15, 2013 and can be chosen by the Indian applicants.
No, ISA provides the applicant with a preliminary non-binding written opinion on the question whether the claimed invention appears to be novel, involves an inventive step and is industrially applicable.
Indian Patent Act provides that no action shall be taken on the patent application entering India through PCT before expiry of 31 months from the priority date unless specific request has been made by the applicant in form 18A. This specific request is called as express request. For more information, Click here.
Yes. Express request is filed to request Indian Patent Office to process the patent application before expiry of 31 months. By filing this request, application does not jump the queue of examination requests. This request can be filed by any patent applicant entering India through PCT as National Phase. On the other hand expedited examination request is filed by the applicant to jump the queue of examination requests. This request can be filed only when applicant is either a startup registered in India or when India has been indicated as the competent International Searching Authority (ISA) or elected as an International Preliminary Examining Authority (IPEA) in the corresponding international application.
Yes. Just like any patent application, the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept.
As per the existing scenario for Indian Applicants, any of the Austrian Patent Office (AT), Australian Patent Office (AU), European Patent Office (EP), China Intellectual Property Office (CN), United States Patent & Trademark Office (US), Swedish Patent Office (SE) and India (IN) can be chosen as competent ISAs and IPEAs.
National Phase applications entering India can be filed within non-extendible 31 months from the priority date.
Yes. The description can be amended during the international phase but only if the applicant files a demand for international preliminary examination. The description can also be amended during the national phase before each designated or elected Office.
PCT applicants generally pay three types of fees when they file their international applications:
For exhaustive costs incurred per stage, please visit the WIPO website link here.
It is 20 years from the date of filing International Application.
An applicant needs to take permissions before filing of International Application if:
Section 39 of the Indian Patents Act sets out details of above while Section 40 and Section 118 deal with provisions in case of contravention of the section 39.
For Section 39, Click Here.
In case of inventions not related to Atomic Energy: Twenty-one days from the date of filing of such request. In case of inventions related to Atomic Energy: Twenty-one days from the date of receipt of consent from the Central Government.
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 link: www.wipo.int
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 a receiving Office is one of those, applicant can choose any one of them, taking into account differing requirements relating to language, fees, etc.
An applicant from India can choose any one of the following ISA/IPEA for international search and preliminary examination: Indian Patent Office, Australian Patent Office, Austrian Patent Office, European Patent Office, State Intellectual Property Office of the People’s Republic of China, Swedish Patent and Registration Office or the United States Patent and Trademark Office.