A patent application is filed by an Individual or a Legal entity to secure an exclusive right for an invention, providing a solution for a specific technological problem. Since Patent Right is a territorial right, in order to protect the applicant’s interest in outside of the home country, every patent filed in such first country must be filed in other countries by seeking priority from the patent filed in the first/home country. Such filing of corresponding applications will benefit an applicant to seek a patent right from the date of the parent application i.e. the application filed in first mentioned country. Corresponding applications can be filed by two ways
(1) Convention application through Paris convention treaty and
(2) National phase applications filed through Patent Co-operation treaty.
For filing a National phase application, one needs to first file an International application (PCT application) to be filed at World Intellectual Property Organisation within 12 months from the date of priority.
Current article will describe the various aspects to take care before filing of a PCT application.
An International Patent Application under the Patent Co-operation Treaty is usually filed to get the benefit of obtaining an extended time limit of 31/30 months from the date of priority of the application. Such filing of an international application provides an applicant to develop a strategy to decide the list of countries in which the applicant’s invention can be optimally used and further be flourished which will enable the applicant to process their Patent application as a national phase application in the selected country
The current article will provide the readers to know the pre-requisites an applicant should know and to have before the applicant files the International application. Following are the things an applicant needs to know before/while filing a PCT application:
1. Priority application with an active period for Claiming priority:
A patent application filed in a PCT participating country has 12 months to file an international application wherein such international application will be obtaining a priority from the first patent application. In order to claim priority for PCT application, the PCT application has to be filed within 12 months from the date of priority. Failing to file a PCT application within such 12 months from the date of priority, one can still file a PCT application within 14 months from the date of application accompanied by a late fee for failing to file PCT application within 12 months.
One can also file a direct PCT application without claiming priority wherein such PCT application will be considered as an application of priority.
2. Priority document:
An International application filed at International Bureau requires a priority document to be submitted at the receiving office within 16 months from the date of priority. Such priority document may be submitted in two ways comprising:
- Certified copy of priority document (hard copy)
- Certified copy of priority document via DAS (Digital Access Service)
Such submission of priority document will enable the receiving office to generate IB304, which is an acknowledgement for the receipt of the priority document. Such IB304 can be utilised later for claiming priority during National phase entry in other PCT contracting states.
3. Formatting of the documents:
PCT applications require a specific format as provided by the World Intellectual Property Office. Following are the steps or rules for submission of the PCT application with specific format:
- Documents to be submitted with sheet size of A4 (29.7 cm X 21 cm)
- Margins of sheets should be in the following range
- Top: 2 cm to 4 cm
- Left Side: 2.5 cm to 4 cm
- Right Side: 2 cm to 3 cm
- Bottom: 2 cm to 3 cm
- Sheet numbers shall be entered at the Top or bottom (Centered) with consecutive Arabic numerals
- PCT strongly recommends to number every fifth line of each sheet of the description, and of each sheet of claims
- The typing should be 1½-space
4. Contracting states to be taken care of
The PCT application allows only 152 countries or contracting states for entry into national phase within 30 months from the date of priority as compared to 177 contacting states of Paris Convention. Therefore, one should take care and check the list of countries and their availability for National Phase filings. The list of 152 contracting states can be accessed through the following link.
5. Variation in Contracting States in the 30 or 31 months for filing National Phase filings:
All contracting states in PCT have their specific time limits for National Phase entry. Therefore, care is to be taken during the national phase entry. The list of individual National Phase limits can be accessed through the following link.
6. Reduction in Certain PCT Fees
WIPO provides a 90% reduction in fees for a list of specific countries for an applicant who is a natural person and is a national of a list of countries as provided in the following Link. Indian Nationals are eligible for such 90% fee reduction.
Please refer to another article of StratJuris Law Partners for reduction in fees for PCT application.
7. Selection of International Search Authority (ISA) and International Preliminary Examining Authority (IPEA):
An ISA selection is compulsory for filing an International application under PCT to conduct a search by the international search and receive an International Search report and written opinion for the filed patent application. An applicant may further apply for supplementary search to reduce the risk of new prior art being cited in the national phase.
An applicant may further have an option to examine his patent application and may ask or request an IPEA to conduct a Preliminary examination for the filed international application to seek a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable.
The list of ISA and IPEA may be accessed from the following link.
8. Flexibility in Fee payment:
WIPO provides a flexibility for an applicant to pay the relevant fees. The PCT e-filing system provides a time spam of 1 months to clear the total filing fee from the date of filing of the international application. The applicant should note the time period of one month to pay the balance fees otherwise a heavy late payment fees may be charged to the applicant.
Need support for filing a PCT application for your invention? We at StratJuris Law Partners, provide end to end support for filing a PCT application. For any queries regarding PCT filing, do not hesitate to contact at firstname.lastname@example.org.