Understanding PCT Applications: A Guide for Indian Applicants

Introduction to the Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international agreement that streamlines the process of securing patent protection across multiple countries. For Indian inventors, businesses, and legal professionals, the PCT provides a unified framework to file a single patent application that can be recognized in over 150 member countries.

Unlike traditional patent filing, where separate applications must be submitted in each country, the PCT simplifies the process by allowing applicants to start with one international application. While the PCT itself does not grant patents, it facilitates the filing, searching, and preliminary examination processes, enabling applicants to defer decisions about specific countries until later in the procedure. This is especially beneficial for Indian innovators seeking to assess the commercial viability of their inventions in different jurisdictions before committing to the costs of national filings.

Benefits of Filing a PCT Application

Filing a PCT application offers numerous advantages for Indian applicants aiming for global patent protection. These benefits make the process efficient, cost-effective, and strategically valuable:

Global Reach with a Single Application

With one PCT application, Indian inventors can secure a filing date across all PCT member countries. This eliminates the need for filing separate applications in each jurisdiction, saving time and effort.

Delayed Costs and Decision Making

The PCT process allows applicants to delay the significant costs of translating applications and paying national phase fees. This additional time, up to 30 or 31 months from the priority date, gives Indian businesses the flexibility to evaluate market potential and secure funding.

Comprehensive Search and Examination

The International Search Report (ISR) and Written Opinion provide valuable insights into the patentability of the invention. This early feedback helps Indian applicants refine their applications and address potential objections before entering national phases.

Strategic Business Decisions

By centralizing the initial stages, the PCT enables Indian applicants to align their patent strategy with business goals, ensuring a more targeted and effective approach to international patent protection.

Legal Framework and Protection

The PCT is governed by the World Intellectual Property Organization (WIPO), ensuring standardized rules and procedures across member states. This minimizes risks and inconsistencies that Indian applicants might face when dealing with multiple jurisdictions.

Benefits of Filing a PCT Application	Details
Global Coverage	Recognition in over 150 countries
Cost Efficiency	Defer translation and national fees until later stages
Patentability Assessment	Access to International Search Report and Written Opinion
Strategic Flexibility	Time to evaluate commercial potential
Legal Uniformity	Standardized procedures under WIPO

Eligibility Criteria for Indian Applicants

To file a PCT application, applicants must meet certain eligibility requirements. These criteria are designed to ensure that the system is used by individuals and entities with genuine ties to a PCT member state, such as India.

Who Can File?

Indian applicants eligible to file a PCT application include:

Individuals: Indian residents or nationals who have developed an invention.
Companies: Indian businesses, including startups and MSMEs, seeking to protect their intellectual property internationally.

Residency and Nationality

An applicant must either:

Be a resident of India; or
Be a national of India.

This ensures that Indian applicants can file through the Indian Patent Office, acting as a Receiving Office under the PCT framework.

Filing Through Authorized Agents

Indian applicants can also engage authorized patent agents or attorneys to file the PCT application on their behalf. These professionals ensure that all technical and legal requirements are met, reducing the risk of errors or omissions.

Adherence to Deadlines

Applicants must adhere to strict timelines to preserve their priority rights. For Indian applicants, a PCT application must typically be filed within 12 months from the date of the first filing (priority date) in India or another country.

Mandatory Requirements

Indian applicants must fulfill the following:

Priority Document: A certified copy of the initial application, if claiming priority.
Complete Specification: The PCT application must include a detailed description, claims, and drawings.
Filing Fees: Payment of the prescribed international filing fee and search fee.

By meeting these eligibility criteria, Indian applicants can leverage the PCT to secure a strong foundation for international patent protection.

Filing a PCT Application from India

Choosing the Receiving Office

Indian applicants have the flexibility to choose between the Indian Patent Office or the International Bureau (IB) of WIPO as the Receiving Office for their PCT applications. The decision may depend on factors such as convenience, filing fees, and support for specific languages. Filing through the Indian Patent Office allows applicants to work closely with local authorities while maintaining compliance with PCT regulations.

Filing Fees for PCT Applications

The standard filing fee for a PCT application is 1,575 USD. However, individual applicants from India benefit from a 90% discount, reducing the fee to 157.5 USD. This discount is part of WIPO’s initiative to support applicants from developing countries, fostering innovation and global participation.

Professional fee is also a significant portion of the PCT application filing. It typically varies from ₹10,000 to ₹50,000 INR in India.

International Searching Authorities (ISA) and Corresponding Countries

Indian applicants can choose from several International Searching Authorities (ISAs). Below is a list of commonly chosen ISAs and their corresponding countries:

International Searching Authority (ISA)	Country
AT	Austria
AU	Australia
CN	China
EP	European Patent Office
IN	India
JP	Japan
SE	Sweden
US	United States

Required Documents and Language

For a successful PCT application, the following documents are mandatory:

Request Form (PCT/RO/101): Includes applicant details, invention title, and other formal requirements.
Description and Claims: Detailed technical specifications of the invention.
Drawings: Visual representations to support the written description, if applicable.
Abstract: A concise summary of the invention’s technical aspects.
Priority Document: If priority is claimed, a certified copy of the initial filing must be provided.

English is the preferred language for PCT filings from India, ensuring clarity and compliance with international standards.

Filing Process Overview

The filing process typically involves the following steps:

Preparation of Documents: Compile all required forms, descriptions, claims, and drawings.
Submission: Submit the application through the chosen Receiving Office.
Payment of Fees: Pay the prescribed international filing fee and search fee.
Acknowledgment: Receive a confirmation of the filing and the international application number.

International Phase Procedures

International Search Report (ISR)

The International Search Report (ISR) is a pivotal document in the PCT process. It is prepared by the International Searching Authority (ISA) and provides a comprehensive analysis of prior art relevant to the claims in the application. This report assists applicants in determining the novelty and inventive step of their invention. Indian applicants may choose the Indian Patent Office as their ISA or opt for other competent ISAs mentioned earlier.

Timelines for ISR

Filing to Report Issuance: The ISR is generally issued within 16 months from the priority date or 9 months from the international filing date, whichever is later.
Applicant’s Review: Applicants can use the ISR to make amendments or withdraw the application before it proceeds to publication.

Key Elements of ISR

Component	Description
Prior Art References	List of documents relevant to the invention’s claims.
Written Opinion	Preliminary assessment of patentability (novelty, inventive step, and utility).
Search Report Classification	Categorization of claims based on relevance to prior art.

International Publication

After the ISR, the PCT application is published by WIPO 18 months from the priority date. This publication, known as the International Publication (PCT Gazette), makes the application accessible to the public.

Importance of Publication for Indian Applicants

Global Transparency: The publication ensures worldwide recognition of the applicant’s priority claim.
Market Visibility: Acts as a signal to potential investors, licensees, or competitors.

Key Aspects

Aspect	Details
Publication Timing	Automatically at 18 months unless the applicant requests earlier publication.
Content of Publication	Includes bibliographic data, abstract, and full text of the application.
Confidentiality	Applications remain confidential until published.

Supplementary International Search (Optional)

A Supplementary International Search (SIS) allows applicants to request an additional search from another ISA to identify prior art missed in the initial ISR. This option is valuable for inventions targeting diverse jurisdictions.

Benefits of SIS

Enhanced Prior Art Coverage: Identifies regional literature and patents that may not be covered by the initial ISA.
Improved Patentability Assessment: Strengthens the application by addressing gaps in the original search.

SIS Timelines and Fees

Request Deadline: The SIS must be requested within 19 months of the priority date.
Fees: Vary depending on the chosen ISA. Indian applicants typically pay lower fees at the Indian Patent Office.

International Preliminary Examination (Optional)

The International Preliminary Examination (IPE) is an optional stage conducted under Chapter II of the PCT. It provides a detailed examination of the invention’s patentability, focusing on novelty, inventive step, and industrial applicability.

Benefits of IPE

Strengthens National Phase Entry: Prepares the application for smoother prosecution in national phases.
Reduces Rejections: Addresses potential objections before they arise in specific jurisdictions.

Timelines and Procedures

Action	Timeline
Request Submission	Within 22 months from the priority date.
Examination Completion	Report issued within 28 months from the priority date.

By understanding these stages, Indian applicants can strategically enhance the robustness of their PCT applications and secure better prospects for international patent protection.

National Phase Entry in India

Time Limits and Deadlines

To enter the national phase in India, applicants must file the required documents within 31 months from the priority date. This timeline includes the 12-month priority period from the initial filing and the subsequent 19-month period under the PCT framework. Failure to meet this deadline can result in the forfeiture of rights to the invention in India.

Required Translations and Fees

Indian patent law mandates that the PCT application be translated into English, even if it was initially filed in another language. The following fees are applicable:

Filing Fee: Based on the number of claims and pages submitted.
Examination Fee: Payable to initiate the substantive examination process.

Fee Type	Individuals/Startups/MSME (INR)	Others (INR)
Filing Fee	1,600	8,000
Examination Fee	4,000	20,000

Additional Requirements

Form Submission: Forms such as Form 1 (Application for Grant) and Form 18 (Request for Examination) must be duly completed.
Agent Authorization: If filing through an authorized agent, submit Form 26, mandatory for international applicants.

Compliance with Indian Patent Law

The application must align with the Patents Act, 1970, including adherence to:

Section 3: Addresses non-patentable inventions, such as perpetual motion machines or frivolous claims.
Section 10: Specifies the need for clear and sufficient disclosure of the invention.

Examination and Grant Process

Once the application enters the national phase, it undergoes a thorough examination:

Preliminary Scrutiny: Checks for formal defects or incomplete submissions.
Substantive Examination: Evaluates patentability, including novelty, inventive step, and industrial applicability.
Objections: Applicants receive an Examination Report highlighting issues, which must be addressed within 6 months (extendable by 3 months).
Grant or Rejection: Upon satisfactory compliance, the patent is granted and published in the Indian Patent Journal.

By adhering to these procedures and understanding the requirements, Indian applicants can effectively navigate the national phase, ensuring compliance and protecting their inventions.

Conclusion

The PCT system serves as a comprehensive solution for Indian applicants aiming to secure robust international patent protection. By navigating its procedural intricacies and aligning with its legal frameworks, inventors and businesses can extend their intellectual property rights across jurisdictions. This ensures comprehensive protection, opens doors to global markets, and fosters innovation and collaboration on an international scale.