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A Study of the Patent System in India in the light of the Patent Cooperation Treaty

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Introduction of the Patent Cooperation Treaty:

The Patent Cooperation Treaty is considered to be of great importance with regards to treaties for filing patents. The Patent Cooperation Treaty lays down a system which is established to aid applicants who wish to file patents and such industries. The Patent Cooperation Treaty was proposed to avoid the humongous repetitive and duplicate work that needs to be done if an individual files patents individually in each country whilst following their national procedure. Basically, the Patent Cooperation Treaty facilitates the applicant to file only a single international patent application for his invention which is acceptable to all the designated countries in his application which are also member countries of the Patent Cooperation Treaty and are signatories to it. This one application has an equal effect as of the separate individual national applications of different countries. The Patent Cooperation Treaty not only eases the procedure of filing a patent application, but it also centralises the procedures for the search of the prior art, the application’s publication, and the scrutiny and testing of the patentability of the invention. The Patent Cooperation Treaty was introduced with the fundamental objective to make the patent system simpler, therefore, rendering it to be not only more effective but also more economical. This objective is in view of safeguarding the interests of all the users who use the patent system and all the offices which are responsible for the administration of the same.

Provisions under the Patent Cooperation Treaty

The Patent Cooperation Treaty has the following provisions to achieve the aforementioned objective.

  • The Patent Cooperation Treaty has set up an International system so that only with one international application sent to only one receiving office, the applicant is able to file the patent. This provision allows him to send an application only in one language, mostly English, which will be acceptable in all the countries which are a part of the Patent Cooperation Treaty and to which the applicant has made the designation in his application. 
  • The Patent Cooperation Treaty enables only a single receiving office of the patent, to formally examine the international application
  • The Patent Cooperation Treaty follows up each international application with an international search. This search results in a report which consists of all the relevant patent documents of previous inventions which have been priorly published. These are to be taken into consideration to determine whether the invention can be patented or not and are notified to the applicant and then published. 
  • The Patent Cooperation Treaty enables communication to all the designated offices mentioned in the international application. The Patent Cooperation Treaty has centralised the process publication of search reports as well.

This aforementioned procedure is also known as the ‘International Phase’ of the entire process of the Patent Cooperation Treaty.  Apart from this, there is also a ‘National Phase’ of the Patent Cooperation Treaty procedure which handles the costs for filing an international application for a patent. The national offices of the designated countries in the international application administer this task. 

Once a local application for filing the patent is done, the applicant, if he wishes to file for an international application, has to do it within a time span of 12 months under the Patent Cooperation Treaty. The national phase of this application then commences at 20 or 30 months as per the applicant’s preference.  As discussed above this process will typically involve the formal application, the international search, the international publication, the international examination for patentability, amendment of the application if any before it goes for the national phase, and finally the translation of the application and payment of a fee. 

The Patent System in India in the light of the Patent Cooperation Treaty:

The procedure of filing for a Patent Cooperation Treaty in India is explained below.

  • The Phase for National Entry of the Application of Patent Cooperation Treaty: All the applications for Patent Cooperation Treaty which have their designated country like India, and are patent applications for India are filed on the date of the International Application. Within a time span of thirty-one months from the priority date, is the period of entering into the national phase. 
  • The most basic requirements in order to enter in the National Phase of the application in India are outlined below:
  1. An application is required mentioning the title of the invention, the name of the applicant, the address of the applicant, the nationality of the applicant, the name of the investors, the addresses of the investors, and the nationality of the investors.
  2. It is also required that the applicant submit all the details and specifications as he has filed before the International office. These specifications should be inclusive of the claims, the drawings, and the abstract. If the application filed before the International office is in another language than English then the applicant is supposed to submit a certified English translation of the application in the national phase.
  3. Along with the application, during the national phase, the applicant is expected to deposit the prescribed Fees by means of demand draft, or local cheque, or even cash.

After this, the process of the national office will begin, and for that certain documents need to be furnished to the office along with the application, or within a specified period of time. Following are the documents that need to be furnished:

  1. An Assignment deed needs to be furnished where the applicant is not the inventor,
  2. The applicants need to furnish a Declaration of inventorship,
  3. An undertaking and a Statement with regards to the status of corresponding Applications in the other designated countries every six months,
  4. A duly stamped Power of Attorney to the agent,
  5. A copy of the PCT/IB/304 or the Priority document. If this priority document is in any other language than English, then the applicant needs to also furnish an English translation of the priority document along with certification which is the support of the same.
  6. (An International Search Report
  7. And, an International Preliminary Examination Report, if any.

If the applicants want to make any amendment to the International Application, those can be made at the time of national phase entry. However, the applicant must keep in mind that such amendments cannot go beyond the disclosure made by the applicant in the original application. The amendments cannot include the addition of any extraneous or new matter.

During the national phase, it is also possible to file for a complete specification in respect of two or more provisional specifications if the invention disclosed in them is cognate or development of each other. Although, in such a scenario, there would be no relaxation in the payment of fees for the applicant.

If the applicant wants to file for a Patent Cooperation Treaty, in that case, a request for examination is expected to be filed within a time frame of 48 months from the date of priority.

Once the request for examination of a  Patent Cooperation Treaty application has been filed, the Application is to be published in the Patent Journal. After the publication of the application, the Controller usually assigns an Examiner with the application within one month of the request. The Examiner is expected to examine the application he is assigned with and then he is supposed to issue an Official Report to the Controller usually within a period of one month. He cannot delay the submission of this official report for more than three months. After receiving the Official Report from the Examiner, the Controller then coordinates with the Applicant for communicating the report in the next month. The examination of the application by the Examiner is based on certain criteria, these are enlisted below:

  • Obviousness,
  • Novelty,
  • Utility,
  • Patentability as mentioned under the Patents Act, 1970 and as amended, and
  • Anticipation.

Once the issues that are raised in the Examination Report are communicated to the Applicant by the Controller, the applicant has a time period of 12 months to respond to these issues. He shall not be provided with an extension of time under any circumstances whatsoever. After the objections are raised and accepted, the application is under the review of the Controller. After this, any pre-grant oppositions are disposed of. And then within the span of six months of time after the publication of the application, the Patent Office issues am intimation for acceptance of the application

Once these six months after publication of application expire, and the pre-grant oppositions are disposed of, the Patent Journal publishes a Grant of the Patent. A Letter Patent Document is also issued thereafter. 

This Grant of Patent published by the Patent Journal has validity for a period of 20 years from its date of International filings. The Grant of Patent must be mandatorily renewed every year by the method of paying a stipulated fee starting from the third year from the year of the filing of International Patent Application. The fee is to be paid within three months of such intimation. Finally, after a Patent has been granted, any articles manufactured under the patented invention shall be represented as “Patented.” It is necessary that the number of the Patent must be mentioned on the Patented product.

Endnotes

https://www.researchgate.net/publication/339068214_The_Patent_Cooperation_Treaty_And_PCT_application_filing_in_India_An_Overview/link/5e3bab57a6fdccd9658aab98/download

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Virali Joisher

Student, Kirit P Mehta School of Law, NMIMS Mumbai

Virali is an enthusiastic law student who has big ambitions, and a bigger spirit to always keep learning. She is exploring her interests in the field of law and feels strongly for women’s issues. For any Clarifications, feedback, and suggestion, you can reach her at virali.joisher@gmail.com

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