To protect intellectual property rights of innovators and inventors internationally 18 states signed the 1970 Patent Cooperation Treaty (PCT). The international treaty provides a global structure for patent applicants’, SMEs, start ups, innovators and inventors to protect their intellectual property rights in every state signed onto the treaty. Under PCT treaty, the patent applicant can seek patent protection for an invention simultaneously in each member state of the PCT treaty by filing international patent application at WIPO instead of filing numerous separate national patent applications in each country. Patent cooperation treaty members comprise 146 states.
PCT National Filing Phase
Patent Rights are territorial in nature. This means that in order to protect an invention in India, a patent application has to filed in India aiming at 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.
- File patent application directly outside India (through Convention or Patent Cooperation Treaty (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 of the priority date file Convention Applications in desired countries.
- File PCT application within 12 months of the priority date.
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.
PCT International Filing Phase
When the international phase patent application is directly filed before WIPO, the Receiving Office (RO) in this case is WIPO itself who receives the patent application. While filing international patent application the patent applicant has to select the International Searching Authority (ISA) and pay the fees for the same. The International Searching Authority (ISA) performs a patentability search of the invention, which is the subject matter of the international patent filed before WIPO. The patent applicant has the option to opt for preliminary patent examination which is undertaken by International Preliminary Examining Authority (IPEA). Once the patent is filed under national phase the patent examiner examines the invention in accordance with the patent law prevailing in that country. For example, if a foreign patent applicant enters India under the national phase, the Indian Patent Act of 1970 would be applicable.
The PCT authority accepts all types of inventions and does not provide a checklist as what is patentable under the law. The international patent application is only a filing mechanism to file patents and enter the designated foreign countries under the national phase. Under Rules 39 and 67, the International Searching and Preliminary Examining Authorities should not carry out search and examination on types of subject matter, which relates to scientific and mathematical theories, methods of doing business and computer programs. The PCT mechanism is a easy way to file patents in foreign countries and the written opinion issued by the International Searching Authority (ISA) is not binding in the designated states. Patentability of an invention is determined in accordance with the prevailing patent laws of different countries. In one or more situations a patent granted by the USPTO might not be patentable in India.
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 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 145 Contracting States and makes it possible to seek patent protection for an invention simultaneously in a large number of 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 chances of patent grant in multiple jurisdictions.
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