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Many companies/startups operating from India cater to foreign markets, especially USA. Hence, such companies are keen on filing International patent applications outside India. Such companies/startups generally contemplate adopting following options:

Option 1: Filing an application under PCT.

The Patent Cooperation Treaty (PCT) is an international treaty with more than 145 Contracting States. It is administered by the World Intellectual Property Organization (WIPO). The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.

  1. Nationals/Residents of India can file an international application with – the Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata as the Receiving Office (RO/IN) or – the International Bureau of WIPO as the Receiving Office (RO/IB). The international application
  • A Request (Form PCT/RO/101) accompanied by description, claims, abstract (and drawings if required) of the invention in English or Hindi
  • The international application to be filed in triplicate
  • Fees payable: Transmittal fee, International Filing Fee and Search fee (all fee to be paid within one month from the date of receipt of the international application).

 After that, the Receiving Office India (RO/IN) accords as the international filing date the date of receipt of the international application, after the following checks being made which are as follows:

  • the applicant is a resident/national of India.
  • the international application is in English or Hindi,
  • the international application contains at least the following elements:

(a)  an indication that it is intended as an international application,

(b)  the designation of at least one Contracting State,

(c)  the name of the applicant, as prescribed,

(d)  a part which on the face of it appears to be a description,

(e)  a part which on the face of it appears to be a claim or claims.

During the process, RO keeps one copy of international application for record named ‘Home Copy’. RO sends one copy of international application to International Bureau (IB) of WIPO named ‘Record Copy’. RO sends one copy of international application to the International Searching Authority (ISA) named the ‘Search Copy’.

  1. Every international application is subject to international search by an International Searching Authority (ISA). An applicant may opt for international preliminary examination by an International Preliminary Examining Authority (IPEA). Few Patent Offices in the world have been recognized by WIPO to function as International Searching Authority and International Preliminary Examining Authority under the PCT. The Indian Patent Office started functioning as ISA/IPEA from 15th October 2013. Currently the Patent Office – Delhi branch functions as ISA/IPEA.

FOR REFERENCE: An applicant from India can choose any one of the following ISA/IPEA for international search and preliminary examination • Indian Patent Office • Australian Patent Office • Austrian Patent Office • European Patent Office • State Intellectual Property Office of the People’s Republic of China • Swedish Patent and Registration Office or • United States Patent and Trademark Office.

ISA establishes International Search Report (ISR) which identifies the published patent documents which may have an influence on whether the invention is patentable or not. ISA also establishes Written Opinion of Search Authority (WOSA) on the invention’s potential patentability.

  1. The international application along with International Search Report is published by WIPO after expiry of 18 months from the priority date of the application.
  2. After establishment of ISR/WOSA and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). If the applicant does not opt for IPE, the International Bureau of WIPO publishes the WOSA as International Preliminary Report on Patentability.

NOTE: International Preliminary Examination (IPEA) carries out an additional patentability analysis. It sends Written Opinion(s) to Applicant and only if required , applicant may make amendments to international application .

  1. After the end of the PCT procedure, either after international search or after international preliminary examination and before 30/31 months from the priority date, applications for the grant of patents can be filed before the national (or regional) patent offices of the countries in which patent protection is desired. The filing procedure, fee and processing shall be as per the requirements of national law relating to patents in each country and the filing date is the international filing date in all such countries.

 AMOUNT OF FEES TO BE PAID:

  • Transmittal fee :
  • For e-filing : natural persons – 3000INR ; small entity-8000INR ; Other than small entity:16000INR
  • For physical filing: natural persons- 3250INR ; small entity-8800INR ; Other than small entity-17600INR.
  • International filing fee(payable within one month of date of filing): 1471USD. And for per sheet over 30 charge is 17USD.
  • Search fee for applicant choosing Indian patent office as ISA(payable within one month of filing):
  • For Individuals: 2500INR
  • Others: 10000INR

Option 2: File patent applications in foreign countries without filing a patent application in India.

Under this option, patent applicants have to complete a formality with the  Patent Office India  before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents of India. The formality requires the patent applicant to request the IPO to grant permission to apply for a patent outside India. The IPO generally grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defence purposes and/or atomic energy.

Option 3: File a patent application in India, and soon after, file patent applications in foreign countries.

When the third option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for a patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed if one or more inventors in the patent application are residents of India. Once the IPO grants permission or 6 weeks have passed since the filing of the Indian patent application, patent applications can be filed in one or more countries outside India.

 

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