PCT INTERNATIONAL APPLICATION FILING FOR INDIAN APPLICANT

A PCT international application is governed by the Patent Cooperation Treaty and can be validated in upto 151 countries. The PCT international application may be filed by an Indian applicant after receiving foreign filing permission under section 39 of the Patents Act 1970 or if the patent application has been filed in India not less than six weeks before filing the application outside India and within twelve months of the filing of a patent application in India.

The PCT international application can be filed electronically via ePCT or PCT-SAFE. The PCT international application can be filed with the Indian Patent Office at Delhi, Mumbai, Chennai or Kolkata as the receiving office (RO/IN) or directly with the International Bureau (IB) of the WIPO as the receiving office (RO/IB). The PCT international application may be file in any one of the languages accepted by the receiving office. Further, the PCT international application can be filed in Hindi or English, in any Indian Patent Office as receiving office. However, a verified English translation should be filed with the PCT international application filed in Hindi.

For filing, PCT international application a request (Form PCT/RO/101) should be accompanied by description, claim/s, abstract, drawings (if required), sequence listing (if any) and Power of Attorney. The PCT international application is generally accompanied by transmittal fee, international filing fee and search fee. Detailed schedule of fee can be found on WIPO’s website as given by link (http://www.wipo.int/export/sites/www/pct/en/fees.pdf).

The PCT international application is subject to international search by an International Search Authority (ISA). An applicant may also opt for international preliminary examination by an International Preliminary Examining Authority (IPEA) by filing a demand (PCT/IPEA/401). The applicant may choose any of the ISAs or IPEAs given below:

List of competent ISAs:

  • Austrian Patent Office (AT)
  • Australian Patent Office (AU)
  • European Patent Office (EP)
  • China Intellectual Property Office (CN)
  • United States Patent & Trademark Office (US)
  • Swedish Patent Office (SE)
  • Indian Patent Office (IN)

List of competent IPEAs:

  • Austrian Patent Office (AT)
  • Australian Patent Office (AU)
  • European Patent Office (EP) [only if ISA was AT,EP or SE]
  • China Intellectual Property Office (CN)
  • United States Patent & Trademark Office (US)
  • Swedish Patent Office (SE)
  • Indian Patent Office (IN)

Advantages of filing PCT international application includes a single international application can be filed to seek protection in upto 151 countries. It provides enough time of 30/31 months to enter various countries and therefore gives the applicant more time to access commercial viability of the invention and to raise funds. It provides International Search Report (ISR) which indicates whether the invention is novel or innovative. It also provides an option for International Preliminary Examination Report (IPER) which shows opinion on patentability of invention and thus, allows the applicant to make more informed choices and to amend application to deal from any conflict.