The PCT is an international agreement that helps to simplify the process of filing patent applications in several countries. PCT has been administered by WIPO (World Intellectual Property Organization). As on 1 March 2016, the WIPO recorded a total of 148 contracting states to the Patent Cooperation Treaty (PCT).
The PCT patent application has two phases: namely International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India.
National Phase PCT Patent Application in India
Within 31 months from the priority date, the application enters the National Phase PCT application. The National Phase of a PCT application resembles a national filing in a respective country. The decision to grant patent protection in a particular country ultimately rests on the Patent Office of that country. However, the filing of PCT application is much simpler than the filing of normal national application since most of the formal requirements are resolved in the international phase itself. Also, the national examiners most often follow the Search Report conducted in the International Phase.
Documents required – PCT Application in India:
Furnishing of a translation (in English). Required contents of Translation are: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract
A copy of the international application is required only if the applicant has not received Form PCT/IB/308 and the Patent Office have not received a copy of the international application from the International Bureau under PCT Article 20.
Other Documents required by the Patent Office:
i) Name, address, and nationality of the inventor in case not been furnished in the “Request” part of the international application;
ii) Instrument of assignment or transfer in case the applicant is not the inventor;
iii) Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306);
iv) Declaration of inventorship by the applicant;
v) Address for service in India;
vi) Power of attorney in case a patent agent is appointed;
vii) Certified copy of the translation. A valid certificate from a translator needed, in case the priority application is non-English;
viii) Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in electronic form; and
ix) In case there are corresponding applications in other countries, the applicant must file within six months from the date of entry into the national phase, a statement concerning any corresponding applications filed in other countries. The statement must be made on Form 3.
Where to file:
The application can be filed at any of the four Patent Offices located at Delhi, Kolkata, Chennai or Mumbai, depending on the domicile, business or place of the Applicant. If the applicant for the patent has no business, place or domicile in India, then the appropriate Patent office will be the address of service in India. For example, patents can be filed at the Chennai Patent Office where the address for service is Intepat, Bangalore.
National Phase Patent Application in India – Procedure:
Every patent application is published after 18 months from the date of filing or priority. Once published, the application is deemed to have entered the public domain.
Request for Examination:
An Applicant should file Request For Examination (RFE) within 48 months from priority date filing. The application is taken up for examination in the chronological order of RFE filing. Within a period of 3 months, the examiner establishes the examination report. The Controller forwards the report (also known as First Examination Report, FER) to the applicant or his agent. Further, the applicant has to comply with the requirements imposed on him within a period of 6 months from the date on which the FER is forwarded to him, else the application is deemed to have been abandoned.
Grant of Patent:
The Patent is granted as expeditiously as possible when the application has not been refused by the Controller, or the application has not been found to be in contravention of any of the provisions of the Patent Act.
The official fee for filing a PCT application and request for examination would be minimum US$470 for a large entity, but only US$94 for a small entity, and it varies depending on the number of pages and claims.
Further, to know more about PCT patent application filing services, you may read PCT Application Filing in India.
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Statement and Undertaking: Meaning and Significance
Foreign Filing License of Patent in India