Patent Cooperation Treaty (PCT) – Patent Registration in Coimbatore

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international treaty with 150 contracting states. Instead of filing various separate national or regional patent application it makes it possible to pursue patent protection for an invention at the same in a large number of countries by filing a single international patent application. National phase is nothing but the granting of patents remains under the control of the national or regional patent offices.

The PCT procedure includes

Filing: An international application is filed with a national or regional patent office or WIPO, the PCT application with the formality requirements in any language and paying the fee of that one set.

International Search: The authority which determines the published patent documents and technical literature (prior art) is called an “International Searching Authority” (ISA). It is one of the major patent offices and its duty to influence whether the invention is patentable and set up a written opinion on anyone’s potential patentability.

International publication: After the verification process, the patent will be published.  At the earliest possible after the expiration of 18 months period from the filing date, the content of the international application is disclosed to the world.

Supplementary International Search: It is a second recognized search by the ISA based on the request of the applicant. The published documents which may not have been found by the first ISA. 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: It is usually carried on the amended version of your application. This is also one of the ISA’s search methods. It mainly carries out an additional patentability analysis.

Ways to protect your invention in several countries

Generally, patents have the territorial limits. The Patent protection may be expended in more than two countries by few options explained below.

Direct or Paris route: In this method you can directly file different patent applications simultaneously in all of the countries in which you are willing to protect your invention. You have to file in a Paris convention country, then file separate patent applications in other Paris convention countries within 12 months from the filing date of the first primary application. The all other convention countries also claimed the first filing application for further processes.

PCT Route: PCT is more benefited than the direct and Paris route. Why because it need to file one single application in PCT route, which is legal in all contracting states of the PCT. So, it is simpler, cost-effective and risk free method.

PCT is used by the research institutions, world’s major corporations, and universities when they look for international patent protection. It is also utilized by the small and medium scale industries (SMEs) and individual inventors.

PCT application eligibility criteria

The PCT application can only be filed by the person who lives in national or resident of PCT contracting states. If you have more than one person as inventor, any of them carries this eligibility is enough for PCT filing. The filing can be done at national patent office directly or directly with WIPO is acceptable which provides the national security provisions. The PCT applications can be filed by both offline or electronically. The electronic filing is made with the WIPO web service (ePCT filing) or the software available by the WIPO. These kind of application automatically validating to enter the data and drawing your attention to all accurate parts of the application.

Applicable fees for PCT application

The applicants may pay the PCT application payment in three ways:

• An international filing fee
• A search fee according ISA search method chosen
• A small transmittal fee depending on the receiving office.

The above fees of national phase a fees need to be paid which represent the most significant pre-grant costs. They can also include fees for translations of the application, national (or regional) office filing fees and fees for acquiring the services of local patent agents or attorneys. In several offices however, national filing fees are lower for international patent applications than they are for direct national applications in recognition of the work already done during the international phase. It should be kept in mind that in case of all granted patents, whether or not the PCT is used to obtain them, applicant will need to pay maintenance fees in each country to keep the patents active. The fees reduction also available for certain cases in PCT application filing. The electronic filing of the application applicable for fee reduction in order to their sort of filing and the format of the application. For promotion of PCT system in developing countries the fees will be 90% which is accessible to natural persons. Some ISA also reduce its fees structure for national or residents from certain countries. Some national or regional patent offices also reduce its fees for natural persons, universities, and non-profit and research institutions.

Duration of PCT Process

In most of the cases, up to an additional 18 months from the time you file your international patent application or usually 30 months from the filing date of the initial patent application of which you claim priority before you have to start the national phase process with individual patent offices and to satisfy the national provisions. The additional time may be helpful to evaluating the chances of obtaining patents and exploit your invention commercially in the countries in which you plan to prosecute patent protection, and for assessing both the technical and commercial value of your invention. There is no need to wait for 30 months of expiration from the earliest filing date of your patent application, you can able to enter into the national phase. In national phase, each of the patent office is in charge of examining your application in accordance with national or regional patent laws, regulating and practices, the time needed for the examination and grant of a patent differs across patent offices.

PCT International search

A PCT international search is an advance quality search of the applicable patent documents and other technical literature in those languages in which most of the patent applications for patent registration are filed i.e. Chinese, English, German and Japanese. The advance quality of search is guaranteed by the standards prescribed in the PCT for the documentation to be consulted, and by the certified staff and uniform search methods of the ISAs. The results are published about the patent in an international search report and a written opinion of the ISA on the potential patentability of your invention.

Supplementary international search

Supplementary international search allows the applicant to file request, in addition to the main international search, multiple supplementary international searches each to be carried out by an ISA other than the ISA which carries out the main international search. The additional search has the power of reducing the risk of new patent documents and other technical literature being discovered in the national phase since, by requesting supplementary search the applicant can increase the commercial and or technical scope of the documentation searched.

The supplementary international search report is generally same in data and appearance to the main international search report. It consists of a database of references to patent documents and other technical literature which may affect the patentability of invention claimed in the international application.