PCT Application

The Patent Cooperation Treaty (PCT) is an international treaty with more than 155 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. You are entitled to file an international patent application if you are a national or resident of a PCT Contracting State. If there are several applicants named in the international application, only one of them needs to comply with this requirement.

The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. The applicant has, in most cases, up to an additional 18 months from the time you file your international patent application (or usually 30 months from the filing date of the initial patent application of which you claim priority).

This additional time can be useful in assessing your idea’s likelihood of commercial success in the jurisdictions where you intend to seek patent protection, as well as for evaluating the technical merits of your invention and the continuing need for protection in those jurisdictions. Although it’s important to understand that you can always ask for an early entry into the national phase, so you don’t have to wait until 30 months have passed after the earliest filing date of your patent application (“priority date”). The PCT has simplified the patent application process and reduced costs and administrative burdens, making it a powerful tool for inventors and companies willing to protect intellectual property in different nations. The PCT facilitates the single window filing system for a unified international patent application to inventors and corporations for examination by the International Bureau of WIPO. Jurisdictions, where the inventors or corporations are seeking protection receive the results of the examination by eliminating the need for the creator or business to file applications in each unique country.

This system is cost-effective and provides additional time for inventors and corporations to make decisions for entering the countries of their interest. Although it facilitates the submission of a single international patent application, the PCT does not issue or grant patents. After filing a patent application, the applicant has up to 30/31 months to choose the jurisdictions in which they seek patent protection. When it comes to examining patent applications and deciding whether to issue or reject a patent, each country’s patent office follows its own patent acts and rules. It is imperative to protect your intellectual property (IP) in foreign markets before you launch your business there. You need to keep an eye on, preserve, and strategically employ your IP rights so that they may help further your company’s goals once you’ve secured them. In addition to this, it’s crucial to monitor the actions of your rivals and other market participants regularly.

The step-wise PCT application process includes:

Filing:

The applicant can file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees. An international patent application may be submitted by the applicant in any language that receiving office approves. You will be required to give a translation of the application for the purposes of the international search if you submit it in a language that the ISA that will do the international search does not allow. Receiving Offices are, however, bound to accept applications in at least one language that is accepted by both the competent ISA which will perform the global search and the language in which the filing was submitted.

International Search:

An “International Searching Authority” (ISA) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.

A thorough search of significant patent documents and other technical literature is performed by the PCT international search in the languages used for the majority of filed patent applications (Chinese, English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish). The conditions set forth in the PCT guidelines for the documents to be examined, as well as the staff and standard search techniques used by the ISAs, which are all established patent offices, guarantee the high quality of the search. The results are published in an international search report, in addition to the ISA’s written opinion of your invention’s potential patentability. Indian searching authority is at par with any other ISA in the world and it is affordable too. If you select ISA as India under PCT, you will be given an option for expedited examination in India for your Indian application. The International Search Authority as identified by WIPO are: 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, United States Patent and Trademark Office

International Publication:

As soon as possible after the expiration of 18 months from the earliest filing date, the specification of your international application is disclosed to the world.

Supplementary International Search (optional):

Due to the diversity of prior art in many languages and technical domains, a second ISA, upon your request, identifies published papers that may not have been discovered by the first ISA, which conducted the main search.

International Preliminary Examination (optional):

One of the ISAs conducts a further patentability assessment at your request, generally on a modified edition of your application that you filed in response to the written opinion’s recommendations.

National Phase:

After the end of the PCT procedure, usually 30 months from the earliest filing date of your priority application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them. The filing date is the international filing date in all such countries. In the national phase, each patent Office is responsible for examining your application in accordance with national or regional patent laws, regulations and practices, the time required for the examination and grant of a patent varies across patent Offices. In short, the filing procedure, fee and processing are as per the requirements of national law relating to patents in each country

Advantages of PCT to applicants:

The applicant gets up to 18 months more to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees.
The international application, if submitted as per prescribed rules by PCT cannot be rejected by any PCT Contracting State patent Office on formal grounds during the national phase of the processing of the application.
The International search report and written opinions of the international search authority become a crucial document about the potential patentability of the invention and consolidating your business decisions as to how to proceed.
The applicant has the opportunity to amend the international application during the optional international preliminary examination, enter into dialogue with the examiner to fully argue the alleged invention and its patentability and put the application in order before processing by the various national patent Offices.
The search and examination work of patent Offices in the national phase can be considerably reduced due to the international search report, the written opinion and, where applicable, the international preliminary report on patentability that goes with the international application.
Each international application is published together with an international search report (ISR), third parties or interested parties are in a better position to evaluate the potential patentability of the claimed invention.
The international application is published globally and is made available for everyone around the globe to go through the documents. Interestingly, you can mention your interest in concluding licensing agreements on PATENTSCOPE (A free database having a repository of millions of patents filed across the globe), which can be an effective means of marketing the technology and invention for seeking potential licensees.

Fees Payable:

International Filing Fees:

International Filing Fee is payable to the International Bureau of WIPO within one month from the date of filing.

Description	Price (USD)
International filing fee	1471 USD
Fee per sheet over 30	17 USD
Reduction in fee for PCT easy filing	111 USD

Search Fees:

Search fee for Indian applicant choosing Indian Patent Office as ISA, payable within one month from the date of filing.

	Filing by individual(s)	Other than individuals
Search Fee	INR 2500/-	INR 10,000

Preliminary Examination fee:

Preliminary Examination fee and Handling fee (all fees to be paid within one month from the date of receipt of the international application)

Preliminary Examination fee	Filing by individual(s)	Other than individual
Where the ISR was issued by ISA/IN	INR 2500/-	INR 10,000/-
Where the ISR was not issued by ISA/IN	INR 3000/-	INR 12,000/-