Filing International PCT Patents in India before Indian Patent Office
As it is well known, the Patent Cooperation Treaty (PCT) is a mechanism by which inventors protect their invention in one or more member foreign countries. A patent application filed under the PCT is called an international patent application, or PCT patent application. Moreover, the patent procedure facilitates a patent applicant to file patent applications in the desired WIPO member countries within 30 or 31 months from the first priority date of the patent application.
International Patent Registration in India
Question. What is a National phase patent application?
The patent applications that are filed before patent offices of the member countries of the Patent Cooperation Treaty (PCT) are known as national phase patent application. However, the parent patent application filed before WIPO is known as international phase patent application.
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.
Question. What is a National phase and/or Regional phase of a patent application?
Answer. Many a times patent applicants are confused with the term National phase and/or Regional phase. As you know when a patent filed before WIPO it is known international phase application. However, the PCT patent application has to be filed in designated contracting states within 30 or 31 months from the filing date of the PCT application or from the earliest priority date of the patent application if a priority is claimed. So, the international phase of the patent ends and the international patent application enters in national and regional phase in designated countries. However, the patent applicant can enter the international patent application in designated foreign countries anytime before the time limit of 30 or 31 months from the filing date ends.
Many patents are filed as PCT patent applications as a part of intellectual property strategy of fortune 100 companies across the globe. Having said that, more than 200,000 PCT patent applications were filed in the year of 2013.However, there was decline in patent filing in 2009 because of global slowdown of the economy.
Question. What is the Indian National phase and/or Regional phase timeline of filing international PCT patent application?
Answer. In India, a national phase patent application can be filed within 31 months from the priority date of the international PCT patent application. However, Indian laws do not provide time extension to file national phase patent applications after the 31 months deadline.
International Patent Registration in India Question. Who can file a patent in India?
Answer. There are different categories and official patent fee structure for the different categories under which a patent may be filed before the Indian Patent Office (IPO). First category is the natural person (NP) category which include an individual or a group of individuals. The official patent fee structure is less for the natural person(s) (NP) category.
Other categories under which the patent may be filed before the Indian Patent Office (IPO) are Startups, Small Entity (MSME), and others except small Entity (Legal entity). Generally, the official patent fee structure for the Legal entity category is almost four times the fee structure of natural person (NP) category. The official patent fee structure for Small Entity (MSME) is less than the Legal entity category. However, to claim the benefit of Small Entity (MSME) status, the patent applicant has to be registered as MSME in the government records.
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