International Patent Registration
A patent can be registered internationally by following a PCT route or by convention route/direct filing. The PCT route helps an applicant to file patent application for the same invention in many countries simultaneously. Provided, the designated countries are member of the Paris convention. The PCT international application can be filed with the International Bureau under WIPO as the receiving office or can be filed with the Indian patent office as a receiving office. Requisite fee along with application should be submitted. An international filing date is accorded to an applicant by the receiving office having the same effect as having being filed in designated countries chosen by an applicant. The patent application is filed in triplicate with the Indian Patent office. The first being the "record copy" which is sent to International Bureau, the second being the "search copy" which is sent to the International Searching Authority. The third being the "home copy" which is kept by the receiving office.
As per section 39 of the Indian Patent Act, 1970, prior permission from the Indian government has to be taken by a resident of India, to file an international application under PCT or the same application has to be filed in India, at least six weeks before filing of the international application. The provision of this section is there to check, if any information related to the defense purposes is being leaked to other countries.
PCT route is beneficial for an applicant willing to file patent application in many countries, as it saves money and time of an applicant. A patent application can be filed in 143 member countries via the PCT international filing route. The international patent application under PCT once filed, is searched by the searching authorities and examined by the examination authorities. ISR (International search report) and IPER (International preliminary examination report) are issued, which provides an applicant an idea about the novelty and patentability scope of the invention. Based on these reports, an applicant can decide whether to proceed further with the national phase filing or not. National phase of the PCT application requires further national fling fee to be paid. Moreover, the applicant has to bear the cost of prosecuting the application in the desired countries, which would be futile if the invention is not patentable.
Advantages of filing international application through PCT route over convention route/direct filing.
An invalidity search is conducted to find skipped prior arts so that a patent can be declared invalid. This is done generally in cases of infringement where a product is charged of
- A single application can be filed with the International bureau instead of filing separate applications for the same invention in many countries.
- The search and examination of the application is done before the application reaches national phase, helping an applicant to make some important decisions like whether to proceed with the national phase filing or not and also some important prosecution decisions of the application can be made.
- It saves the cost and time of the applicant of filing separate applications in different countries.
- It gives an applicant additional time of 30/31 months from the priority date to enter the national phase, which otherwise would be 12 months from the priority date.