Posted On: February 28, 2022

INTRODUCTION AND PROCEDURE OF PCT FILING

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INTRODUCTION
Patent Cooperation Treaty (PCT) has been enacted specifically to simplify the procedure of filing and registration of patents in multiple countries. The traditional system of filing patents and seeking patent protection in each country might prove to be time consuming and a process full of many complicated procedures in each country. Filing PCT Application is accompanied by filing a corresponding National phase application. PCT Application can be filed by anyone who is a national or a resident of a country which is a member of PCT. This application can be made within 12 months of priority date and in case there is no priority date claimed, then in that case international filing date is considered as priority date. Thus, through filling under PCT mode, applicants can seek protection in various countries for their invention by filing one international application instead of filling multiple application in different national or regional patent office. PCT is an international treaty which was signed on 19th June 1970 and currently has 154 contracting states. Knowledgentia Consultants equipped with providing services relating to Global IPR Protection, can be your most trusted partner in matters concerning PCT filing.

ADVANTAGES OF FILING UNDER PCT
The main advantage of filing under PCT is to provide simplified and effective procedure of filing patent applications. Few important benefits of filing under PCT are discussed as below:-

  1. INTERNATIONAL PATENT SYSTEM
    It provides a world wide system for simplified filing and processing of patent applications which helps in filing single application in single language for international application in national and regional patent offices, harmonizes formal requirements thereby protecting applicants from certain inadvertent errors.
  2. MORE TIME FOR DECISION MAKING
    The applicant gets more time to decide in which country he/she wishes to seek protection of the invention. When a PCT application is filed by an applicant, national phase application can be filed in other contracting states within 30 months by their choice.
  3. SAME PRIORITY DATE
    The applicant can claim for same priority date as filed in regional patent application.
  4. GENERAL IDEA OF PATENTABILITY OF INVENTION
    After receiving the PCT application, the search authority performs a global search. This searching authority is selected by the applicant at the time of filing the application. Search authority provides a worldwide search report with a written opinion on the patentability of the invention. This helps the applicant to evaluate the chances of patentability of their invention before entering the national phase which further plays a decisive role in aiding the applicant in choosing the countries in which they wish to seek protection.
  5. OPTIONAL PRELIMINARY EXAMINATION
    The PCT filing also includes a preliminary examination for a patent application before entering national phase filing. The patent applicant can request for an optional International Preliminary Examination for their invention which can help further refine the patent application based on the list of objections raised.
  6. FLEXIBILITY OF AMENDMENT
    Applicant gets opportunity to amend the specification after performing a world wide search. The patent applicant can amend the claims, description and drawings of their specification before entering the national phase based on the search report results or examination results to increase their chances of getting a patent.

PROCEDURE OF FILING UNDER PCT

  1. FILING:
    First step is for the applicant to file a national phase application along with international application in single language and paying required application fees. Applicants need to file PCT application within 12 months after filing national phase application. Priority date is given by national patent office. Applicant is also entitled to file an international patent application if applicant is a national or resident of a PCT Contracting State. If there are several applicants named in the international application, only one of them needs to comply with this requirement. Applicants can file PCT applications electronically with any receiving Offices which accepts such filings. Preparing the PCT application using the WIPO web service (ePCT-filing) or the software provided by WIPO (PCT-SAFE) helps the applicant to prepare their applications by automatically validating the entered data and drawing applicant’s attention to incorrectly or inconsistently completed parts. Moreover, it helps applicants to manage their applications.
  2. INTERNATIONAL SEARCH
    A PCT international search is a high quality search of the relevant patent documents and other technical literature in those languages in which most patent applications are filed such as Chinese, English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish. Applicant selects the searching authority at the time of filing application and that searching authority performs world wide search providing a written search report. With this report, applicant can evaluate the chances of patentability of their invention before entering the national phase which further aids the applicant in choosing the countries in which they wish to seek protection.
  3. INTERNATIONAL PUBLICATION
    Application is published after completion of 18 months and also after submitting all the required documents. PCT application is published by International Bureau (IB) of WIPO. PCT international applications are published online on PATENTSCOPE, a powerful, fully searchable database with flexible, multilingual interfaces and translation tools to assist users and the public in understanding the content of published applications.
  4. SUPPLEMENTARY INTERNATIONAL SEARCH (OPTIONAL)
    At applicant’s request, second international search authority identifies published documents which may not have been discovered by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields. Request for supplementary international search is filed by the applicat before completion of 19 months from the priority date. Under this applicant can demand for international preliminary examination.The supplementary international search report is generally similar in content and appearance of the main international search report; it contains a listing of references to patent documents and other technical literature which may affect the patentability of the invention claimed in the international application. However, it does not repeat documents which have already been cited in the international search report, unless this is necessary because of new relevance when read in conjunction with other documents discovered during the supplementary international search.
  5. INTERNATIONAL PRELIMINARY EXAMINATION (OPTIONAL)
    International preliminary examination is a secondary evaluation of the potential patentability of the invention, using the same standards on which the written opinion of the international search authority was based. At applicant’s request international search authority carries out an additional patentability analysis, usually based upon a version of application which applicant has amended in light of content of the written opinion. If the applicant wishes to make amendments to their international application in order to overcome anomalies in the documents identified in the international search report and conclusions made in the written opinion of the international search authority, international preliminary examination provides the only possibility to actively participate in the examination process and potentially influence the findings of the examiner before entering the national phase. One can submit amendments and arguments and is therafter entitled to an hearing with the examiner.
  6. NATIONAL PHASE
    After being decided by applicant whether, and in respect of which states, applicant wishes to proceed further with their international application, applicant must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. Patent is granted by national office after completion of all necessary requirements and patent is also be granted for other contracting states as well. Patent is granted to the applicant before the completion of 30 months. After this grant applicant can seek protection on their invention.

CONCLUSION
At Knowledgentia Consultants, we have one of the best patent consultants in India, who offer advice regarding filing and procedure with respect to PCT applications. We are your one-stop solution for all kinds of legal, compliance and supplemental matters concerning patents. In case of any query regarding this matter you may email us at info@knowledgentia.com or visit our website –https://knowledgentia.com/.

PUBLISHED AS ON 26.02.2022 BY MS. HARINDER NARVAN, MS. APARNA JAIN, MS AASHRIKA AHUJA AND MR. PARDEEL KUMAR YADAV

Harinder Narvan
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