Patent Co-Operation Treaty – International & National Phase Entry Applications

Saibal C. Pal

The new source of power is not money in the hands of a few, but information in the hands of many.” – John Naisbitt

Patent Co-operation Treaty (PCT) was entered on June 9, 1970. On 7^th December, 1998 India became the  98^th contracting state of the PCT. Signatory countries  formed a Union for co-operation in  filing, searching, and examination of applications for protection of inventions and  rendering special technical services. The Union  is called the International Patent Cooperation Union. The treaty simplifies and reduces  cost of obtaining international patent protection. With the introduction of an organized and subsidized system filing cost is reduced.  All PCT activities are controlled by the World Intellectual Property Organisation (WIPO) with head office situated at Geneva, Switzerland. Switzerland is proud not only  watches and chocolates but also of an organized IPR system. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) including counterfeit goods is an off shoot of the series of negotiations that followed the Paris Convention.  Article 2 of the agreement in : (i) Part –II relates to Standards concerning the availability scope and use of Intellectual Property;(ii) Part –III relates to enforcement of Intellectual Property Rights and (iii) Part – IV relates to acquisition and maintenance of Intellectual Property Rights and Related Inter-Parts. To comply to procedures of the Agreement members shall comply to Articles 1-12 and 19 of the Paris  Convention (1967).

On 26^th April,2000 World Intellectual Property (WIPO) was formed with head quarters at Geneva, Switzerland to protect IPRs. To-day, 26^th April is celebrated internationally as the `WIPO DAY’. WIPO celebrates the day not only as the day of human creativity but also intellectual property rights that helps to fuel and channel it, making it a  force for economic, cultural and social development.

PCT aims at protection of science and technology world-wide. Patent laws framed by  member countries are as per the  PCT. As per Article 3 applicants seeking  protection of their inventions in any of the contracting states of the PCT may file an international application.  WIPO office at Geneva is referred to as the International Bureau (IB). Applications shall be as per the Treaty and Regulations framed and shall  include a request, description, one or more claims, one or more drawings (where required) and an abstract. Abstract serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpretation of the scope of the protection sought. As per Article 4 the international application shall be in any language, comply with the physical and  prescribed requirement of unity of invention and be subject to  payment of the prescribed fees. Filing of the application shall be the international filing date. Criteria being fulfilled shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property. Each  application shall be subject to an international search for discovering relevant prior art. Search shall be by an International Searching Authority (ISA) which will submit a report and  applicant will be allowed to make an amendment of their claim. The International Bureau at Geneva shall publish international applications.  IB and ISA shall not allow access by any person or authority to the international application before the international publication of the application unless requested by the person. As per Article 31 on  demand of the applicant the international application shall be subject of an international preliminary examination which examination shall be carried out by the IPEA. Objective of the examination is to formulate a preliminary and non-binding opinion on the question whether the claimed invention appears to be novel, involving an inventive step (to be non-obvious) and be industrially acceptable. On completion of examination an International Preliminary Examination Report is issued on which  the applicant decides to file his application for registration of his invention as a patent.

There is nothing called international patent. Based on examination report the applicant decides to file application as per the law in force in the member countries. This is called national phase entry. However, the applicant will get the benefit of priority date of the application filed with  IB.

Patent granted in a PCT  country  does not compel other countries to grant patent of the same invention. Similarly refusal  does not mean that the patent will be refused in all convention countries. Presently there are 151 members who joined the Paris Convention.

S 7(1A) of the Patent Act, 1970 as amended by the Patents (Amendment) Act, 2005 states that an international application  cannot be filed without first applying for  a patent in India which  must be done within a period of 12 months of filing in the country of origin. Simultaneous application is permitted. The applications may  be submitted at any one of the four regional offices at Kolkata, New-Delhi, Mumbai and Chennai depending on jurisdiction. Applications can be filed directly by the applicant or by a duly appointed Patent Agent. In case the application filed through a Patent Agent the applications shall have to be accompanied by a Power of Attorney. Fees payable by applicants who are individuals  is reduced by 75 per cent. All communications from IB or Patent office in India will be received by the applicant or the Patent Agent.

International Application search  can be carried on by any of the designated six competent ISAs namely, the Austrian Patent Office (AT), Australian Patent Office (AU), European Patent Office (EP), China Intellectual Property Office (CN) United States Patent & Trade Mark Office (US), Swedish Patent Office (SE). ISAs can act as the International Preliminary Examining Authorites (IPEAs). Applicant shall choose any one of the ISAs for conducting the search on the various aspects of the invention and the ISAs shall submit search report known as International Search Report.  Applicable fees structure to be paid with PCT applications are:

I. Transmittal and International filing fees^#

(Amounts as on 1^st January, 2008)

II. Fees for preparing certified Priority Document and transmission to IB of WIPO Rs. 4000/- (For Individual Rs. 1,000/-).

III. International Search fees^# (Amounts on 1^st January, 2008)

IV. International Preliminary Examination fees*** (Amounts on 1^st January, 2008)

^# — Payable to Regional Office/India [CHENNAI, DELHI, KOLKATA, MUMBAI as per applicable jurisdiction].

* — The fee is reduced by 75% where applicant or each applicant (where two or more applicants) is a natural person and is a national of and resident in India.

** — This amount will be applicable when Search is done by the same ISA.

*** — Payable to IPEA in the currency prescribed by it.

[Source: Patent Office web site.]

Application in the international phase allows 18 months to the applicant to prepare  for  registration. From the ISR or written opinion the applicant can examine the reasonableness of the chances of the invention being patented. During the Initial Patent Examination the applicant has chance of amendment of the application to put it in order before being processed.

Since each international application published together with an international search report, gives third parties a better position to formulate a well founded opinion.

PCT application shall be as per the regulations frame under the treaty applicable to the member states. Most significant part of the application is the date of first filing or priority date.  For determining the time limit for an application filed for the patent, priority date or the date of formal filing is to be ascertained and based on the date, transmittal fee (basic fee, designation fee) and search fee as per the chart above is payable within the 16^th month from the priority date where priority is claimed or 9 months where priority is not claimed or 3 months for ISR or 22 months from the priority date whichever is later. Applicant is given 28 months for submission of preliminary report and  examination report  will be issued within the 30^th month. On receipt of examination report the application in the national phase can be submitted.

Time limit for submission is strictly followed and no extension is permitted at each stage.

International phase applications do not involve much cost. But the cost of application under the national phase as per the fee structure prevalent in the different countries are considered on the higher side in comparison to India. With the high fees payable for patenting an invention at the national stage in those countries, it is difficult for an individual from India. One has to be content with getting registration in only one or two countries. Cost involved in USA, UK, Canada etc., for national phase applications is on the  higher side. It is important that the Government considers arrangement for funding, incentives, tax benefits as prevalent in Germany. Patent filing since India entered the patent regime on 1^st January, 2005, is gradually increasing and is expected to pick up further with the number swelling to 40,000 during since 2005 to 2010. The law and its benefits has not percolated to the lowest level as such many inventions die a natural death  in India as the inventors neither know the legal  provisions  nor do they possess necessary finance for patenting their invention. India is rich in intellectual property and if the Government announces financial sops and  incentives for their protection the country will be able to generate protected inventions for industrial development. Patenting  both at the national as well as other PCT countries are considered need to be stressed considering its contribution  to industry.

email: saibal2004@rediffmail.com

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