Nuances of PCT Filing Procedure
The PCT is an international treaty with more than 150 Contracting States. The PCT 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. By the name “international” it should not be confused with an international grant of patent. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
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The most convenient route is if a patent applicant is trying to protect his invention in multiple countries. PCT requires the filing of an international patent application within 12 months from the date of the local/domestic patent application from which priority is to be claimed. If the international application is filed within 12 months from the date of priority, the applicant gets a minimum of 30 months to decide whether he wants to enter other countries as a national phase or not. An additional advantage of PCT is the International Search Report which the PCT impaneled Search Authority provides a detailed opinion on the patentability of the invention disclosed in the PCT application. To enter India as a national phase, a period of 31 months is available. PCT applications can directly be filed without claiming any priority from domestic or local applications. The International application can be filed directly and in case of claiming priority from local applications, international patent applications have to be filed within 12 months from the date of filing the local application. In some cases, if this timeline is missed, priority can be restored.
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The first step is filing at the competent patent office, commonly known as the Receiving Office (RO). The filing in the RO must be done within 12 months from filing the local application. The application filed is called an International Patent Application or simply, PCT Application. As per the rule, at least one applicant has to be national or residing at the PCT Contracting State. Also, the PCT application has to be filed in one language only, which is dependent on the country chosen for International Search. Every PCT application is accorded with a PCT filing date.
- International Search
The next procedure comes up with conducting International Search. The applicant can choose with any International Searching Authority (ISA) from among the list. This is the most important part of the PCT application because it accords the applicant with a search report for the patentability of the invention. The ISA has to establish and provide the International Search Report (ISR). The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent Offices. The applicant also receives a written opinion. The written opinion, with the international search report, helps to understand and interpret the results of the search report with specific reference to the text of international application, being of special help in evaluating the chances of obtaining a patent. The process has to be done within 16 months from the date of filing the local application.
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- International Publication
The PCT application is published by the International Bureau, WIPO. The publication is done within 18 months of filing the local application or the priority date, whichever is earlier.
- Supplementary International Search (optional)
A second ISA identifies, at your request, published documents that may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
- International Preliminary Examination (optional)
One of the ISAs at your request carries out an additional patentability analysis, usually on a version of your application which you have amended in light of the content of the written opinion. The supplementary international search report is generally similar in content and appearance to the main international search report; it contains a listing of references to patent documents and other technical literature which may affect the patentability of the invention claimed in the international application. However, it does not repeat documents that have already been cited in the international search report, unless this is necessary because of new relevance when read in conjunction with other documents discovered during the supplementary international search. This Supplementary International Search Report has to be provided within 28 months from the filing of the local application.
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- National Phase
After the completion of 30/31 months, the PCT applicant enters the national phase. The applicant, after receiving the search report, can very well decide which country to file with, after the end of the international phase. The applicant has to fulfill some requirements which include paying national fees and, in some cases, filing translations of the application. These steps must be taken, concerning the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the filing date of local application.
It is difficult to have a general thought process when the PCT process is best. Nevertheless, it can be fair to say that the PCT process is most popular and can be best suited for large multi-national corporations who regularly seek patents in many jurisdictions, such as Pharmaceutical companies. The PCT process is also advantageous when there is a clear global need and likely markets exist around the world. But it is imperative to take advice from a patent attorney while planning.
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The experienced professionals at GPF are there to guide the clients through the process associated with the PCT filing and the national phase filing. The team at GPF works with clients to provide and implement filing strategies based on the client’s demands and making it in a timely scheduled manner.
Author: Saransh Chaturvedi an associate at Global Patent Filing, in case of any queries please contact/write back us at firstname.lastname@example.org.
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