PCT Patent Application
The PCT is an international agreement that helps to simplify the process of filing patent applications in several countries. PCT has been administered by WIPO (World Intellectual Property Organization). As of 6th April 2022, the WIPO recorded 156 contracting states to the Patent Cooperation Treaty (PCT).
The PCT patent application has two phases: namely, International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India.
National Phase PCT Patent Application in India
Within 31 months from the priority date, the application enters the National Phase PCT application. The National Phase of a PCT application resembles a national filing in a respective country. The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. However, filing a PCT application is much simpler than filing a normal national one since most of the formal requirements are resolved in the international phase. Also, the national examiners most often follow the Search Report conducted in the International Phase.
Documents required – PCT Application in India:
Furnishing of a translation (in English). Required translation contents are Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, and abstract.
A copy of the international application is required only if the applicant has not received Form PCT/IB/308 and the Patent Office have not received a copy of the international application from the International Bureau under PCT Article 20.
Other Documents required by the Patent Office:
i) Name, address, and nationality of the inventor in case not been furnished in the “Request” part of the international application;
ii) Instrument of assignment or transfer in case the applicant is not the inventor;
iii) Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306);
iv) Declaration of inventorship by the applicant;
v) Address for service in India;
vi) Power of attorney in case a patent agent is appointed;
vii) Certified copy of the translation. A valid certificate from a translator is needed in case the priority application is non-English;
viii) Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in electronic Form; and
ix) In case there are corresponding applications in other countries, the applicant must file a statement within six months from the date of entry into the national phase concerning any corresponding applications filed in other countries. The statement must be made on Form 3.
Where to file:
The application can be filed at the Indian patent office or WIPO.
National Phase Patent Application in India – Procedure:
Publication:
Every patent application is published after 18 months from the filing date or priority. Once published, the application is deemed to have entered the public domain.
Request for Examination:
An Applicant should file a Request For Examination (RFE) within 48 months from the priority date of filing. The application is taken up for examination in the chronological order of RFE filing. Within three months, the examiner establishes the examination report. The Controller forwards the report (also known as the First Examination Report, FER) to the applicant or his agent. Further, the applicant must comply with the requirements imposed on him within six months from the date the FER is forwarded to him, or else the application is deemed to have been abandoned.
Grant of Patent:
The Patent is granted as expeditiously as possible when the Controller has not refused the application, or the application is not in contravention of any of the provisions of the Indian Patent Act.
PCT Fees:
The official fee for filing a PCT application and request for examination would be a minimum of US$470 for a large entity but only US$94 for a small entity, and also it varies depending on the number of pages and claims.
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