Patent PCT Application filing India

An Expert's View about Intellectual Property Law in India

Posted on: 3 Feb 2012

PCT APPLICATION / PATENT APPLICATIONS FOR NATIONAL PHASE ENTRY INDIA

The Patent Cooperation Treaty is an agreement for international cooperation in the field of patents. It is the most significant advancement in international cooperation in this field since the adoption of the Paris Convention itself. It is, however, largely a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT does not provide for the grant of “international patents”. The task and responsibility for granting patents remain exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the “regional Offices”). PCT is a special agreement under the Paris Convention open only to states, which are also party to the Paris Convention. The PCT does not compete with but, in fact, complements the Paris convention.

Introduction:

On 7th September 1998, India deposited its instrument of accession to the PCT and on 7th December 1998 thus became a member of the PCT, as the 98th Contracting State of PCT. Furthermore, nationals and residents of India are entitled to file international applications for patents under PCT at Receiving Office at Patent Office at Delhi.

Principal Objectives of the PCT

The principal objective of the PCT is to simplify and to render more effective and more economical—in the interests of the users of the patent system and the offices that have  responsibility for administering it—the previously established means of applying in several countries for patent protection for inventions. Before the introduction of the PCT system, virtually the only means by which protection of an invention could be obtained in several countries was to file a separate application in each country; these applications, each being dealt within isolation, involved repetition of the work of the filing and examination in each country.

To achieve its objective, the PCT:

• Establishes an international system which enables the filing, with a single patent Office (the “Receiving Office”), of a single application (the “International Application”) in one language having effect in each of the countries which are party to the PCT which the applicant names (“designates”) in his application;

• Provides for the formal examination of the International Application by a single patent Office, the Receiving Office;
• Subjects each International Application to an international search which results in a report citing the relevant prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable; that report is made available first to the applicant and is later published;
• Provides for centralized international publication of International Applications with the related international search reports, as well as their communication to the designated Offices; and
• Provides the option of an international preliminary examination of the International Application, which gives to the Offices, that has to decide whether or not to grant a patent, and to the applicant, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability. The procedure described in the preceding paragraph, comparing it with the traditional procedure, is illustrated by two
timelines such as chapter I and chapter II of PCT. It is commonly called the “International Phase” to describe the first part of the patenting procedure, whereas one speaks of the “National Phase” to describe the last part of the patent granting procedure which, as explained in paragraph above, which is the task of the designated Offices, that is, the national Offices of, or Regional offices acting for the countries which have been designated in the International Application. (In PCT terminology, a reference to “national” Office, “national” phase and “national” fees, includes the reference to the procedure before a regional patent Office).

Under the PCT system, by the time the International Application reaches the national Office, it has already been searched by the International Searching Authority and possibly examined by an International Preliminary Examining Authority, thus providing the national patent Offices with the important benefit of reducing their work loads since they have the benefit of these international phase procedures and thus need not duplicate those efforts. Further objectives of the PCT are to facilitate and accelerate access by industries and other interested sectors to technical information related to inventions and to assist developing countries on gaining access to technology.

Functions of The Receiving Office

1. The first step is that the Receiving Office receives the International Application from the applicant. An application for the same invention has to be filed six weeks or necessary permission under section 39 should be taken before the filing of International Application.
2. The second step is that the Receiving Office checks the International Application to determine whether it meets the prescribed requirements as to form and content of International Applications. This check is of a formal nature only and does not go into the substance of the invention. It therefore extends only to a certain number of rather elementary requirements specified in the Treaty as forming part of that check.
3.  i) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that in order in accordance with Article 11, at the time of receipt:
ii) (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

4. Receiving Office checks certain formal and physical requirements (Article 14).

That check by the Receiving Office may show that the International Application does not meet certain requirements as to form and content and that the fees are not, or not fully, paid. In that case, the Receiving Office communicates with the applicant in order to give him an opportunity to correct any defect.
6. If the language of filing of the International Application is one acceptable by the Receiving Office but is not acceptable by the International Searching Authority that is to carry out the international search, the applicant is required to furnish, within one month from the filing date of the application, a translation into a language which is all of the following: (i) a language accepted by the International Searching Authority that is to carry out the international search; (ii) a language of publication; and (iii) a language accepted by the Receiving Office (unless the International Application is filed in a language of publication). In cases where the applicant fails to furnish, within the applicable time limit, a translation for the purposes of international search, the Receiving Office invites the applicant to furnish the missing translation, in certain cases subject to the payment of a late furnishing fee. A separate invitation procedure is provided for the case where the request does not comply with language requirements. Where the applicant does not furnish the missing translation within the time limit fixed in the invitation, the International application will, subject to certain safeguards for the applicant, be considered withdrawn and the Receiving Office will so declare.
7. Not all the requirements of the International Application are required to be  examined by the Receiving Office. For instance, the Receiving Office does not deal with substantive questions such as whether the disclosure of the invention in the application is sufficient and whether the requirement of unity of invention is complied with. It also does not check all the many detailed physical requirements of the International Application. Those requirements are only checked to the extent that compliance with such requirements is necessary for the purpose of reasonably uniform international publication.

8. Typical examples of defects, which may be corrected without affecting the international filing date, are:
– Non-payment or partial payment of fees;
– Lack of signature of the request;
– Lack of a title of the invention;
– Lack of an abstract;
– Physical defects.
9. As stated, in all such cases lack of correction leads to the application being considered withdrawn, except where a physical defect would not prevent reasonably uniform international publication and except for the payment of fees. With regard to the later, Rule 16b provides that the Receiving Office must invite the applicant to pay the missing fees together with a late payment fee. If the applicant still does not pay the fees within the time limit fixed in the invitation, the Receiving Office will declare that the International Application is being considered withdrawn. This solution protects the applicant against any loss of his application due to an erroneously delayed or incomplete payment of fees.
10. The third step in the procedure before the Receiving Office is that it must transmit the “record copy” of the International Application to the International Bureau and the “search copy” to the International Searching Authority. The Receiving Office keeps a third copy, the “home copy.” The transmittals do not take place if and as long as national prescriptions concerning national security apply. The Receiving Office will then declare that national security provisions prevent the International Application from being treated as such.
11. The Receiving Office must mail the record copy promptly to the International Bureau and in any case not later than five days prior to the expiration of the 13th month from the priority date. In many cases, the International Application claims the priority of an earlier national application and is filed at the end of the 12-month priority period; the Receiving Office has only a few weeks for its processing tasks
12. The search copy must be transmitted by the Receiving Office to the International Searching Authority at the time of the transmittal of the record copy to the International Bureau except where the search fees has not been paid on time, in which case the transmittal of the search copy takes place after that fee has been paid.
13. If an applicant who is a resident or national of a PCT Contracting State; erroneously files his International Application with a national office which acts as a Receiving Office under the Treaty but which is not competent under Rule 19.1 or 19.2, having regard to the applicant’s residence and nationality, to receive that International Application, or if an applicant files his International Application with the competent Receiving Office in a language which is not accepted by that Office under Rule 12.1(a) but is in a language accepted under that Rule by the International Bureau as Receiving Office, the International Application will be considered to have been received by the national Office on behalf of the International Bureau as Receiving Office on the date on which it was received by the national Office, and will be promptly transmitted to the International bureau as Receiving Office (unless such transmittal is prevented by national security prescriptions). The transmittal may be subjected by the national Office to the payment of a fee equal to the transmittal fee. All other fees already paid to that Office will be refunded by that Office to the applicant and the applicable fees will have to be paid to the International bureau as Receiving Office

The following conditions should be fulfilled for according an international filing date:

The applicant should be a resident or national of the Contracting State for which the Receiving Office acts, and has consequently the right to file with that Receiving Office (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(i) if that condition is not fulfilled);
(ii) The International Application should be in the language, or one of the languages, accepted by the Receiving Office for the purpose of filing International Applications (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(ii) if that condition is not fulfilled);
(iii) The International Application should contain at least the following elements: (a) an indication that it is intended to be an International Application, (b) the designation of at least one Contracting State(c) the name of the applicant in a form allowing the applicant’s identity to be established, (d) a part which on the face of it appears to be a claim or claims.
(iv) If one of these requirements is only complied with after correction, the international filing date will be the date on which the correction was received. In other words, in these cases a defect, which is corrected later, affects the international filing date. If all such defects are not properly corrected, the application will not be treated as an International Application.
(v) For all the other cases, non-compliance with the formal requirements does not affect the international filing date. In other words, if the applicant corrects a defect in such cases, the international filing date remains unchanged. If the applicant does not correct, the defect properly, the International Application will, however, be considered withdrawn by the Receiving Office. Extension of the time limit fixed by the Receiving Office for the correction of defects under Article 14 may be requested.

Monitoring of time limits

Easy supervision and monitoring of only a few time limits and events is required by applicants, namely:
(i) Monitoring the receipt of the confirmation of receipt of the International Application by the Receiving Office;

(ii) Monitoring the time limits for payment of fees;
(iii) Checking the notification from the International Bureau confirming the receipt of the International Bureau confirming the receipt of the record copy (Form PCT/IB/301) for correctness of the designations indicated on the Form and if needed and confirm precautionary designations within 15 months from the priority date;]
(iv) Deciding, after receipt of the international search report, whether or not to file a  demand for international preliminary examination (which must be filed prior to the expiration of 19 months from the priority date.
(v) Deciding, after receipt of the international search report, whether or not to file amended claims under Article 19, within the applicable time limit; This will usually be considered only if demand for international preliminary examination is not filed;
(vi) Monitoring the receipt, during the 19th month from the priority date, of the notice from the International Bureau (Form PCT/IB/308) that the publication of the International Application and its communication to the designated Offices (Article
20) has been effected; (vii) entering the national phase before the expiration of 30/31 months from the priority date by paying the national fees and furnishing (if required) a translation of the International Application.

PCT APPLICATION / PATENT APPLICATIONS FOR NATIONAL PHASE ENTRY INDIA

The Patent Cooperation Treaty is an agreement for international cooperation in the field of patents. It is the most significant advancement in international cooperation in this field since the adoption of the Paris Convention itself. It is, however, largely a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT does not provide for the grant of “international patents”. The task and responsibility for granting patents remain exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the “regional Offices”). PCT is a special agreement under the Paris Convention open only to states, which are also party to the Paris Convention. The PCT does not compete with but, in fact, complements the Paris convention.

Introduction:

On 7th September 1998, India deposited its instrument of accession to the PCT and on 7th December 1998 thus became a member of the PCT, as the 98th Contracting State of PCT. Furthermore, nationals and residents of India are entitled to file international applications for patents under PCT at Receiving Office at Patent Office at Delhi.

Principal Objectives of the PCT

The principal objective of the PCT is to simplify and to render more effective and more economical—in the interests of the users of the patent system and the offices that have  responsibility for administering it—the previously established means of applying in several countries for patent protection for inventions. Before the introduction of the PCT system, virtually the only means by which protection of an invention could be obtained in several countries was to file a separate application in each country; these applications, each being dealt within isolation, involved repetition of the work of the filing and examination in each country.

To achieve its objective, the PCT:

• Establishes an international system which enables the filing, with a single patent Office (the “Receiving Office”), of a single application (the “International Application”) in one language having effect in each of the countries which are party to the PCT which the applicant names (“designates”) in his application;

• Provides for the formal examination of the International Application by a single patent Office, the Receiving Office;
• Subjects each International Application to an international search which results in a report citing the relevant prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable; that report is made available first to the applicant and is later published;
• Provides for centralized international publication of International Applications with the related international search reports, as well as their communication to the designated Offices; and
• Provides the option of an international preliminary examination of the International Application, which gives to the Offices, that has to decide whether or not to grant a patent, and to the applicant, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability. The procedure described in the preceding paragraph, comparing it with the traditional procedure, is illustrated by two
timelines such as chapter I and chapter II of PCT. It is commonly called the “International Phase” to describe the first part of the patenting procedure, whereas one speaks of the “National Phase” to describe the last part of the patent granting procedure which, as explained in paragraph above, which is the task of the designated Offices, that is, the national Offices of, or Regional offices acting for the countries which have been designated in the International Application. (In PCT terminology, a reference to “national” Office, “national” phase and “national” fees, includes the reference to the procedure before a regional patent Office).

Under the PCT system, by the time the International Application reaches the national Office, it has already been searched by the International Searching Authority and possibly examined by an International Preliminary Examining Authority, thus providing the national patent Offices with the important benefit of reducing their work loads since they have the benefit of these international phase procedures and thus need not duplicate those efforts. Further objectives of the PCT are to facilitate and accelerate access by industries and other interested sectors to technical information related to inventions and to assist developing countries on gaining access to technology.

Functions of The Receiving Office

1. The first step is that the Receiving Office receives the International Application from the applicant. An application for the same invention has to be filed six weeks or necessary permission under section 39 should be taken before the filing of International Application.
2. The second step is that the Receiving Office checks the International Application to determine whether it meets the prescribed requirements as to form and content of International Applications. This check is of a formal nature only and does not go into the substance of the invention. It therefore extends only to a certain number of rather elementary requirements specified in the Treaty as forming part of that check.
3.  i) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that in order in accordance with Article 11, at the time of receipt:
ii) (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

4. Receiving Office checks certain formal and physical requirements (Article 14).

That check by the Receiving Office may show that the International Application does not meet certain requirements as to form and content and that the fees are not, or not fully, paid. In that case, the Receiving Office communicates with the applicant in order to give him an opportunity to correct any defect.
6. If the language of filing of the International Application is one acceptable by the Receiving Office but is not acceptable by the International Searching Authority that is to carry out the international search, the applicant is required to furnish, within one month from the filing date of the application, a translation into a language which is all of the following: (i) a language accepted by the International Searching Authority that is to carry out the international search; (ii) a language of publication; and (iii) a language accepted by the Receiving Office (unless the International Application is filed in a language of publication). In cases where the applicant fails to furnish, within the applicable time limit, a translation for the purposes of international search, the Receiving Office invites the applicant to furnish the missing translation, in certain cases subject to the payment of a late furnishing fee. A separate invitation procedure is provided for the case where the request does not comply with language requirements. Where the applicant does not furnish the missing translation within the time limit fixed in the invitation, the International application will, subject to certain safeguards for the applicant, be considered withdrawn and the Receiving Office will so declare.
7. Not all the requirements of the International Application are required to be  examined by the Receiving Office. For instance, the Receiving Office does not deal with substantive questions such as whether the disclosure of the invention in the application is sufficient and whether the requirement of unity of invention is complied with. It also does not check all the many detailed physical requirements of the International Application. Those requirements are only checked to the extent that compliance with such requirements is necessary for the purpose of reasonably uniform international publication.

8. Typical examples of defects, which may be corrected without affecting the international filing date, are:
– Non-payment or partial payment of fees;
– Lack of signature of the request;
– Lack of a title of the invention;
– Lack of an abstract;
– Physical defects.
9. As stated, in all such cases lack of correction leads to the application being considered withdrawn, except where a physical defect would not prevent reasonably uniform international publication and except for the payment of fees. With regard to the later, Rule 16b provides that the Receiving Office must invite the applicant to pay the missing fees together with a late payment fee. If the applicant still does not pay the fees within the time limit fixed in the invitation, the Receiving Office will declare that the International Application is being considered withdrawn. This solution protects the applicant against any loss of his application due to an erroneously delayed or incomplete payment of fees.
10. The third step in the procedure before the Receiving Office is that it must transmit the “record copy” of the International Application to the International Bureau and the “search copy” to the International Searching Authority. The Receiving Office keeps a third copy, the “home copy.” The transmittals do not take place if and as long as national prescriptions concerning national security apply. The Receiving Office will then declare that national security provisions prevent the International Application from being treated as such.
11. The Receiving Office must mail the record copy promptly to the International Bureau and in any case not later than five days prior to the expiration of the 13th month from the priority date. In many cases, the International Application claims the priority of an earlier national application and is filed at the end of the 12-month priority period; the Receiving Office has only a few weeks for its processing tasks
12. The search copy must be transmitted by the Receiving Office to the International Searching Authority at the time of the transmittal of the record copy to the International Bureau except where the search fees has not been paid on time, in which case the transmittal of the search copy takes place after that fee has been paid.
13. If an applicant who is a resident or national of a PCT Contracting State; erroneously files his International Application with a national office which acts as a Receiving Office under the Treaty but which is not competent under Rule 19.1 or 19.2, having regard to the applicant’s residence and nationality, to receive that International Application, or if an applicant files his International Application with the competent Receiving Office in a language which is not accepted by that Office under Rule 12.1(a) but is in a language accepted under that Rule by the International Bureau as Receiving Office, the International Application will be considered to have been received by the national Office on behalf of the International Bureau as Receiving Office on the date on which it was received by the national Office, and will be promptly transmitted to the International bureau as Receiving Office (unless such transmittal is prevented by national security prescriptions). The transmittal may be subjected by the national Office to the payment of a fee equal to the transmittal fee. All other fees already paid to that Office will be refunded by that Office to the applicant and the applicable fees will have to be paid to the International bureau as Receiving Office

The following conditions should be fulfilled for according an international filing date:

The applicant should be a resident or national of the Contracting State for which the Receiving Office acts, and has consequently the right to file with that Receiving Office (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(i) if that condition is not fulfilled);
(ii) The International Application should be in the language, or one of the languages, accepted by the Receiving Office for the purpose of filing International Applications (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(ii) if that condition is not fulfilled);
(iii) The International Application should contain at least the following elements: (a) an indication that it is intended to be an International Application, (b) the designation of at least one Contracting State(c) the name of the applicant in a form allowing the applicant’s identity to be established, (d) a part which on the face of it appears to be a claim or claims.
(iv) If one of these requirements is only complied with after correction, the international filing date will be the date on which the correction was received. In other words, in these cases a defect, which is corrected later, affects the international filing date. If all such defects are not properly corrected, the application will not be treated as an International Application.
(v) For all the other cases, non-compliance with the formal requirements does not affect the international filing date. In other words, if the applicant corrects a defect in such cases, the international filing date remains unchanged. If the applicant does not correct, the defect properly, the International Application will, however, be considered withdrawn by the Receiving Office. Extension of the time limit fixed by the Receiving Office for the correction of defects under Article 14 may be requested.

Monitoring of time limits

Easy supervision and monitoring of only a few time limits and events is required by applicants, namely:
(i) Monitoring the receipt of the confirmation of receipt of the International Application by the Receiving Office;

(ii) Monitoring the time limits for payment of fees;
(iii) Checking the notification from the International Bureau confirming the receipt of the International Bureau confirming the receipt of the record copy (Form PCT/IB/301) for correctness of the designations indicated on the Form and if needed and confirm precautionary designations within 15 months from the priority date;]
(iv) Deciding, after receipt of the international search report, whether or not to file a  demand for international preliminary examination (which must be filed prior to the expiration of 19 months from the priority date.
(v) Deciding, after receipt of the international search report, whether or not to file amended claims under Article 19, within the applicable time limit; This will usually be considered only if demand for international preliminary examination is not filed;
(vi) Monitoring the receipt, during the 19th month from the priority date, of the notice from the International Bureau (Form PCT/IB/308) that the publication of the International Application and its communication to the designated Offices (Article
20) has been effected; (vii) entering the national phase before the expiration of 30/31 months from the priority date by paying the national fees and furnishing (if required) a translation of the International Application.

 


Posted: 03 February 2012

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