The Patent Cooperation Treaty (PCT) is an International Treaty with over 145 contracting states. The World Intellectual Property Organisation (WIPO) is responsible for administering PCT. As a result, PCT protects the invention of the applicant in many countries. Besides a single international patent application can be made, instead of filing multiple national or regional patent applications. For instance, one may file the application in a single country, in a single language. This ensures the filing of the patent in various countries, in various languages.
Filing International application
- The applicant should file an international application in a Receiving Office (RO). The RO in India is the Indian Patents Office in Delhi, Mumbai, Kolkata, or Chennai. Similarly, an international application can be filed with the International Bureau (IB) of WIPO as the RO.
- The international application should include a request (Form PCT/RO/101) with the description, claims, abstract and drawings if required of the invention in English or Hindi. One should file it in triplicate, with the prescribed fees (Transmittal fee, international filing fee and search fee). Likewise, the applicant must pay the fees within 1 month from the date of receiving the receipt of the international application.
- After the application is submitted, the RO checks whether it has all the necessary details such as name of the applicant, at least one applicant being the resident or national of any PCT contracting state, descriptions and claims. After conducting these checks, the RO accords the international filing date. Any country designated in the international application considers the international filing date as the actual filing date.
- Thereafter, the RO keeps one copy of the international application for record purposes with the name “Home copy”. The International Bureau of WIPO receives a copy titled the “record copy”. Finally, the International Search Authority (ISA) also receives a copy of the application, for conducting international search. It is the “search copy”.
Documents required for PCT filing in India
- Name, address and nationality of the applicant or the inventor.
- Title of invention, priority application number and filing date.
- Address for service in India.
- On their appointment, a patent agent requires a power of attorney.
- The applicant needs an instrument of assignment if they aren’t the inventor.
- Verification should be provided in the case of a translated document.
International Search and Preliminary Examination
ISA after receiving the search copy of the international application conducts an international search. Subsequently, the applicant can opt for an international preliminary examination by the International Preliminary Examining Authority (IPEA). WIPO recognizes some of the Patent Offices in the world to function as ISA and IPEA under the PCT. An applicant can choose any of the recognized Patent Offices to conduct the search and examination. For example, Indian applicants may choose the Patent Offices listed down below:
- 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
- United States Patent and Trademark Office.
The ISA after conducting the international search establishes the International Search Report (ISR). It identifies the published patent documents and technical literature that may influence the patentability of an invention. Furthermore, the ISA also establishes a Written Opinion of the Search Authority (WOSA) on the potential patentability of the invention. The search fee can vary based on the ISA chosen.
Publication by WIPO
WIPO publishes the international application, along with the International Search Report. Thereafter, it is published after the expiry of 18 months from the priority date of the application.
International Preliminary Examination
Once WIPO publishes the application, the applicant may opt for the international preliminary examination. Thereafter, the International Preliminary Examination Authority establishes an International Preliminary Report on patentability. Besides, if the applicant does not opt for a preliminary examination, the WOSA is published as the International Preliminary Report, by the International Bureau of WIPO.
- Residents of India can file a request (Form PCT/IPEA/401) for International Preliminary Examination. The Delhi branch of the Indian Patent Office functions as the International Preliminary Examination Authority in India.
- Applicants may pay the preliminary examination fee and the handling fee within 1 month from the date of receipt of the international application.
Then, the IPEA carries out an additional patentability analysis and sends a written opinion to the applicant. Thereafter, the applicant may make any amendment to the international application as required.
After the PCT procedure ends, or after international search or preliminary examination or before 30/31 months from the priority date, an application for the grant of a patent can be filed before the national patent office of the country in which the patent is desired. The date of filing is the international filing date in all such countries.
National Phase in India
The applicant must file a national phase application in India before the expiry of 31 months from the date of priority of the application to get a grant of patent in India.