Global Patent Filing

Patent Rights are territorial in nature. This means, in order to protect invention in India, patent has to be filed/granted in India. There is no worldwide patent that can give protection through single application, and therefore below are a few exemplary ways of protecting patent internationally.

  • File patent application directly outside India (through Convention or PCT route) without filing a patent application in India after taking a Foreign Filing License (FFL)
  • File patent application in India, and within 12 months file Convention Applications in desired countries
  • File Patent Cooperation Treaty (PCT) application within 12 months of filing Indian Application

OUR SERVICES INCLUDE :

  • Patentability / Novelty / Prior Art / Invalidation Searches
  • Drafting Patent Applications
  • Application Filing in India and Globally
  • Responding to Examination Reports
  • Prosecution Services
  • Landscape / Competitive Intelligence / Research and Analytics Studies

Process

Process 1: Filing patent application outside India without filing a patent application in India

 

Process 2: File a patent application in India, and soon after, file patent applications in foreign countries

 

Process 3: Filing PCT application without filing local application in any country

Timelines

  • An Applicant 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). 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 enter national phases.

Frequently Asked Questions

Protecting your Intellectual Property in a foreign jurisdiction can be a daunting endeavor for even the most sophisticated applicant. 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 will help our clients in cost-effectively filing in different countries and also managing 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, to involve an inventive step and to be industrially applicable.

Yes, the applicant is given an opportunity to amend the claims. Refer to Article 19. Wipo.int

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. www.ipindia.nic.in

Yes. Express request is filed to request Indian Patent Office to process the patent application before expiry of 31 months and 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. Whereas, expedited examination request is filed by the applicant to jump the queue of examination requests. This request cannot be filed only when applicant is either a startup registered in India or he has chosen India as ISA or IPEA for the corresponding international application.

Yes. 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 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:

  1. an international filing fee;
  2. a search fee which can vary from approximately depending on the ISA chosen; and
  3. a transmittal fee which varies depending on the Receiving Office.

For exhaustive costs incurred per stage, please visit the link:

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

It is 20 years from the date of filing International Application.

Applicant needs to take permissions before filing of International Application if:

  • He is resident of India; and
  • Invention was developed in India; and
  • He does not want to file patent application in India or
  • Period of six weeks has not been over since the filing patent application in India

This permission is required to be taken by section 39. Section 40 and section 118 deals with provisions in case of contravention of the 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 your receiving Office is one of those, you can choose any one of them, taking into account differing requirements relating to language, fees, etc.
www.wipo.int