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PCT Filing


PCT is the acronym of Patent Cooperation Treaty. It is a sister Treaty of the Paris Convention administered by the World Intellectual Property Organization (WIPO). The PCT facilitates filing of patent applications under a single umbrella and provides for simplified procedure for the search and examination of such applications. There are now over 125 signatory countries to PCT. From December 7, 1998, India is a member of the Paris Convention. The PCT system is a very popular method of filing patent applications throughout the world.

PCT Filing
The Patent cooperation Treaty is basically an agreement between different parties worldwide providing basic guidelines pertaining to the filing of patent applications under PCT. It is mainly a treaty for cooperation with regard to the PCT filing procedure, searching and examination of patent. Any resident of a PCT Contracting State may file an international application directly with the International Bureau of WIPO as receiving Office, apart from filing with the competent national Office. The application under PCT is required to be filed in a manner as prescribed by the rules and regulations governing the treaty, in one of the languages accepted by the competent searching authority, which has been opted by the applicant. The due dates for PCT application are as follows: (i) for international publication 18 months from the date of filing of application, (ii) for international preliminary examination report 28 months from the date of filing of application, and (iii) for entry in to the national phase is 31 months.

International PCT Filing Services
There are numbers of firms and legal companies assisting clients and fulfilling their requirements, not only in India but outside India such as USA, UK and all. These firms̢۪ provide assistance by clarifying and explaining necessary guidelines required to file a particular patent application. A PCT application must be drafted in a manner as required by the government of various countries. A patent application into national phase must contain proper specifications, description and claims so that patent application can be processed and examined at the earliest. Thus in order to utilize maximum benefit out of this site it is professionally recommended to take the guidance and consultancy of various patent experts and professionals associated us

 



A PCT application means a patent application under patent cooperation treaty. The due date for a PCT application to enter into national phase is different in different countries. In most of the designated countries the due date for a PCT application to enter into national phase is thirty months from the priority date whereas in India the time limit is thirty one months from the priority date. A PCT application must clearly specify the name, nationality and address of the applicant, title of the invention, and background of the invention, method of invention, description of drawings, claims, abstract and various other requisites of a PCT application. The PCT application should be drafted specifically as per the rules and regulations governing patent law in various member countries. The forms to be submitted along with the complete or provisional specification should contain detailed information pertaining to the patent application in question. The statutory fees for filing a particular PCT application into national phase are different in different countries. In India, it is determined on the basis of number of priorities, number of claims and number of pages. If none of the above fulfills the criteria laid down by the Patent Act to determine the statutory fees of a national phase patent application than the basic statutory charges are Rs. Four thousand. It is to be noted that a PCT application can be signed only by a patent agent authorized by the government in this regard. Thus a PCT application should be drafted properly before it can be considered for registration.

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A PCT application into national phase has to be filed in the designated states within 30 months from the priority date. However in India it is 31 months. A PCT application must be drafted in a manner as prescribed by the rules and regulations governing patent law in different countries. A PCT application must contain the following requisites namely the title of the invention, Method of invention, Background of invention, description of drawings (if any), claims, figures(if any) and abstract. The patent application must be filed after consulting a patent agent or attorney skilled and experienced in this regard. The various forms to be submitted along with a PCT application are Form 1(application for grant of patent), Form 2(provisional/complete specification), Form 3(statement and undertaking) and Form 5(Declaration as to inventorship). These forms should contain each and every detail concerning the patent application in question. A PCT application may also be accompanied with a copy of WIPO publication, a copy of international search report, copy of written opinion of the international searching authority (PCT/ISA/237), copy of notification of the transmittal of the international search report and the written opinion of the international searching authority, or the declaration (PCT/ISA/220) and various other documents pertaining to the same, although it is not compulsory to submit these documents at the time of filing. The statutory fees of a PCT application is determined on the basis of number of claims(more than ten), number of priorities and number of pages(more than thirty). If none of the aforesaid requisites is available to determine the statutory fees of the captioned application than the fixed statutory fees of Rs four thousand shall be charged by the patent office.

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PCT means Patent Cooperation Treaty. A patent application filed under this treaty is required to be filed in most of the countries who are party to such treaty. The time line to enter into National phase is different in different countries. In most of the countries the due date to enter into national phase is 30 months from the priority date. The priority date is either the International filing date or the date when the application is filed in any of the convention country whichever is earlier. However in India the time period for a PCT application to enter into National Phase is 31 months. It is to be noted that a national phase application should contain all the requisites namely complete or provisional specification, title of the invention, field of invention, description of drawings, claims, an abstract etc. A patent application under National phase has to be drafted properly so that it can be preceded smoothly. The statutory fees of filing a patent application is determined on the basis of number of priorities, number of pages and number of claims. If nothing is there in the patent application than the basic charges for filing an application is four thousand rupees. Thus it is extremely essential that a patent application should be drafted from a technical expert who is well versed with the field of invention and as per the requirements of the Patent Act of 1970.

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Registration a PCT Application
The PCT applications may be filed either in an approved Receiving Office or directly at the International Bureau at the WIPO in Geneva. The PCT applications usually claim priority from an ordinary patent application, but they may also be filed direct.

On filing a PCT application, applicants must designate the countries in which they wish to retain the option to file a patent application. There is a fee per country designated up to the first 5 and after that any number of further countries may be designated without fee. It is also possible to designate multi-country regional offices such as the ARIPO or EP (European Patent Organization).

International Phase and National Phase
PCT has two phases, an international phase when they are international applications in the International Bureau, and a national phase when they are converted to national patent applications in the designated countries of interest.

During the international phase, the designated International Searching Authority (a Patent Office authorized by WIPO) conducts a patent search and an International Search Report is provided within around six months of filing to assist the applicant in deciding whether or not to proceed with patent protection. The International Bureau also publishes the patent specification.

Chapters I and II of the PCT
The PCT is divided into two Chapters, Chapter I and Chapter II. Chapter I requires that within either 20 or 30 months of the earliest priority date, (depending on whether or not the country concerned has adopted the most recent amendments to the PCT Treaty), the applicant must enter the national phase, that is, file patent applications in any one or more of the countries initially designated

Chapter II allows 30 months from the earliest priority date for entering the national phase and also requires a designated International Preliminary Examining Authority (authorized by WIPO to conduct international examinations) to conduct a non-binding substantive examination of the patent specification to determine whether it meets the requirements for patentability. Please note that, certain designated Offices have fixed time limits expiring even later than 30 months, or 20 months, as the case may be. For regular updates on these applicable time limits, refer to the PCT Gazette; a cumulative table is also available at WIPO's Internet site (www.wipo.int )

Entry into the National Phase
The national phase is the second of the two main phases of the PCT procedure. The national phase starts only if the applicant files applications in each country of choice (the designated Office ) just as a usual application would be filed, either before the expiration of the time limit or together with an express request that it start earlier. The applicant has sole responsibility for performing the act in due time. The consequences of failure to do so are fatal to the application in most designated States. In each such designated State the international application has the effect of a national (or regional in the case of regional offices) application as from the international filing date, and the decision to grant

Advantages of the PCT System
The PCT system allows applicants to file a single patent application in one country and for up to 30/31 months retain the option of filing a corresponding application in a large number of other countries of interest. The PCT system can therefore be thought of as an extension of time for filing patent applications world wide at substantially reduced prosecution costs. Furthermore, one can usually tell from the International Search Report and Written Opinion, what the chances are of obtaining patent protection in the other countries. If there appears to be no prospect of obtaining a patent, the international application can be abandoned whereby the applicants lose only the cost of filing a PCT application instead of a much greater cost of filing applications in every other countries of interest. Also, the applicants get 18 months more to test the market to determine whether to proceed with patent applications and indeed to raise capital to fund the filing of regional/national phase applications.

PCT National Phase Entry in India
On September 7, 1998 India (country code: IN) deposited its instruments of accession to the Paris Convention for the Protection of Industrial Property and to the Patent Cooperation Treaty. Since December 7, 1998, it has been possible to designate India in PCT applications and to elect India in the demand for preliminary examination.

If India is a designated country in the PCT application and is also elected in the demand for preliminary examination filed within 19 months of the priority date, then the deadline for entry into the National Phase in India is 31 months from the Priority Date. If the applicant does not so elect India in the demand for preliminary examination, then the deadline for entry into the National Phase in India is 21 months from the Priority Date. Therefore, all applicants who have designated India in their PCT application filed on or after December 7, 1998, will be able to file PCT National Phase applications in India.

PCT Registration Requirements
For National Phase Filing of a PCT Application in India, the following information/documents are required:

The Specification including drawing figures as published in the PCT Gazette; [Verified English translation of international application, if not in English];

International Search Report;

International Preliminary Examination Report (if India is elected for using the IPE results);

The PCT Request;

Form PCT/IB/304(Notification Concerning Submission or Transmittal of Priority Document);

Certified Copies of the Priority Documents, if available (can be filed later);

Particulars of amendments made to the specification/claims during the PCT International Phase; [Verified English translation of amendments filed during the international phase];

Details of Priority Application(s);

Details of corresponding foreign applications filed; and
Power of Authorization (can be filed later).

Please note : Indian Patent Office is flexible once national phase application is remitted in time. In other words, if the national fee is paid in time with complete specification and drawings, a filing number will be allotted by the Patent Office. Thereafter, the applicant is allowed to make any additions or amendments in conformity with the international application and additional documents can be submitted.

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