International Patent Filing
An inventor/applicant can file a patent directly in any country other than India or can apply for PCT (International) patent application within a period of one year from the first filing date/priority date and then following a timeline specified by WIPO, the inventor can file his/her patent application in any country.
The Patent Cooperation Treaty (PCT) is an international patent filing law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in more than 190 countries.
See PCT contracting states – https://www.wipo.int/pct/en/pct_contracting_states.html
A single filing of a PCT application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.
For Official fee, please visit – https://www.wipo.int/export/sites/www/pct/en/fees.pdf
For Calculating a timeline for National Phase filing, please visit – https://www.wipo.int/pct/en/calculator/pct-calculator.html
Filing a PCT application has the effect of automatically designating all Contracting States bound by the PCT on the international filing date. The effect of the international application is the same in each designated State as if a national patent application had been filed with the national patent office of that State.
The International (PCT) application is by nature a temporary placeholder. It serves as a delay mechanism to buy more time before entering the national stage of each desired member country. In that respect, a PCT application is similar to an option contract in the financial world.
The International Patent application provides an additional period of 18-19 months to an invention in comparison to a conventional national phase entry for filing the patent in different country other than native country. The additional 18-19 months may be crucial for you to raise capital or monetize your invention. You may even decide that the invention is not worthy of protection in so many foreign countries, in which case you would have only spent a few thousand dollars to gain the extra time to come to this conclusion. Without the PCT application, you would be forced to decide to spend tens of thousands of dollars at the 12-month deadline only to realize later that it was not worth it.
ANS IP Management Services team is highly experienced in drafting and filing international patent filing at competitive rates. In addition to this, our team leads from front to communicate to PCT office against the search report and written option generated by WIPO.
The Patent Cooperation Treaty (PCT) is a centralised, cost effective and convenient application system, managed by the WIPO, through which, one single international patent application can be filed either independently or taking priority from any previously filed national application, which later can enter the national phase of separate PCT contracting states.
Came into existence in 1970, the Patent Cooperation Treaty allows an inventor to file a single PCT (international) application that is effective as an initial patent application in all PCT member states. As of May 2020, the Patent Cooperation Treaty (PCT) has 153 Contracting States, which include:
United Arab Emirates (AE); Antigua and Barbuda (AG); Albania (AL); Armenia (AM); Angola (AO); Austria (AT); Australia (AU); Azerbaijan (AZ); Bosnia and Herzegovina (BA); Barbados (BB); Belgium (BE); Burkina Faso (BF); Bulgaria (BG); Bahrain (BH); Benin (BJ); Brunei Darussalam (BN); Brazil (BR); Botswana (BW); Belarus (BY); Belize (BZ); Canada (CA); Central African Republic (CF); Congo (CG); Switzerland (CH); Côte d’Ivoire (CI); Chile (CL); Cameroon (CM); China (CN); Colombia (CO); Costa Rica (CR); Cuba (CU); Cyprus (CY); Czechia (CZ); Germany (DE); Djibouti (DJ); Denmark (DK); Dominica (DM); Dominican Republic (DO); Algeria (DZ); Ecuador (EC); Estonia (EE); Egypt (EG); Spain (ES); Finland5 (FI); France (FR); Gabon (GA); United Kingdom (GB); Grenada (GD); Georgia (GE); Ghana (GH); Gambia (GM); Guinea (GN); Equatorial Guinea (GQ); Greece (GR); Guatemala (GT); Guinea-Bissau (GW); Honduras (HN); Croatia (HR); Hungary (HU); Indonesia (ID); Ireland (IE); Israel (IL); India (IN); Iran (Islamic Republic of) (IR); Iceland (IS); Italy (IT); Jordan (JO); Japan (JP); Kenya (KE); Kyrgyzstan (KG); Cambodia (KH); Comoros (KM); Saint Kitts and Nevis (KN); Democratic People’s Republic of Korea (KP); Republic of Korea (KR); Kuwait (KW); Kazakhstan (KZ); Lao People’s Democratic Republic (LA); Saint Lucia (LC); Liechtenstein (LI); Sri Lanka (LK); Liberia (LR); Lesotho (LS); Lithuania (LT); Luxembourg (LU); Latvia (LV); Libya (LY); Morocco (MA); Monaco (MC); Republic of Moldova (MD); Montenegro (ME); Madagascar (MG); North Macedonia (MK); Mali (ML); Mongolia (MN); Mauritania (MR); Malta (MT); Malawi (MW); Mexico (MX); Malaysia (MY); Mozambique (MZ); Namibia (NA); Niger (NE); Nigeria (NG); Nicaragua (NI); Netherlands (NL); Norway (NO); New Zealand (NZ); Oman (OM); Panama (PA); Peru (PE); Papua New Guinea (PG); Philippines (PH); Poland5 (PL); Portugal (PT); Qatar (QA); Romania (RO); Serbia (RS); Russian Federation (RU); Rwanda (RW); Saudi Arabia (SA); Seychelles (SC); Sudan (SD); Sweden (SE); Singapore (SG); Slovenia (SI); Slovakia (SK); Sierra Leone (SL); San Marino (SM); Senegal (SN); Sao Tome and Principe (ST); El Salvador (SV); Syrian Arab Republic (SY); Eswatini (SZ); Chad (TD); Togo (TG); Thailand (TH); Tajikistan (TJ); Turkmenistan (TM); Tunisia (TN); Turkey (TR); Trinidad and Tobago (TT); United Republic of Tanzania (TZ); Ukraine (UA); Uganda (UG); United States of America (US); Uzbekistan (UZ); Saint Vincent and the Grenadines (VC); Viet Nam (VN); Samoa (WS); South Africa (ZA); Zambia (ZM); and Zimbabwe (ZW);
Through the PCT route, applicants may have the benefit of filing a single centralised application, in a single allowed language and can reserve a priority date in all 153 PCT contracting states. Later, the applicant may enter national phase for a definite period of time of around 30-31 months.
The application filed under PCT, passes through two phases: a) International phase and b) National phase. During the international phase, the PCT application receives preliminary process and substantive examination. It is also noted that a PCT application itself never ends up into a granted patent. Within 30 to 31 months of the PCT application’s earliest priority date, inventor must “nationalize” the application in the individual jurisdictions such as the Indian Patent Office or USPTO where the inventor wants to obtain the rights of the patent. During the national phase, the designated jurisdictions examine the application independently according to their IP laws. The national stage application filed in individual jurisdiction can then mature into a granted patent when approved by that country’s patent office.
Overview and procedure of the PCT System:
An application which is filed as a PCT application passes through following routes:
- Patent application (Not the PCT one) filed by an inventor with any Patent office let’s assume Indian patent office on 1st January 2020. Now it is to be noted here, that generally, patent inventors who wish to protect their invention in more than one country usually first file a national or regional patent application with their national or regional patent Office, and within 12 months from the filing date of that first application, they file their international application under the PCT taking priority from the first filed application. The effect of claiming the priority of an earlier patent application is that a patent shall not be invalidated by reasons of any acts accomplished in the interval, such as another filing, the publication or sale of the invention.
- Within 12 months of filing the native application in Indian patent office (here in this case till 1st January 2021), the inventor can file a PCT application, taking priority of 1st January 2020 from the initially filed Indian patent application. The inventor can file an international (PCT) application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and has to pay one set of fees. From this PCT filing date, the application is said to be in International phase.
In general terms, the international patent application, provided that it complies with the minimum requirements for obtaining an international filing date, has the effect of a national patent application and certain regional patent applications in all PCT Contracting States. Moreover, if the application complies with certain formal requirements set out in the Treaty and Regulations, which are binding on all of the PCT Contracting States, subsequent adaptation to varying national (or regional) formal requirements (and the cost associated therewith) will not be necessary.
- Within 16 months of the filing the native application in Indian patent office (here in this case till/around May 2022), an “International Searching Authority” (ISA), identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether the invention is patentable, and establishes a written opinion on the invention’s potential patentability. International Searching Authority” (ISA) can be any one of the world’s major patent Offices.
The international search report mainly contains references of previously published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the PCT application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step. Along with the search report, the International Searching Authority prepares a written opinion on patentability, which will the patent offices and inventors a detailed analysis of the potential patentability of the invention. The international search report and the written opinion are sent to inventor by the International Searching Authority.
- After a period of 18 months from the earliest filing date (here in this case after July 2021), the invention disclosed in the international application is disclosed to the general public. World Intellectual Property Organisation (WIPO) publishes the international application along with the international search report. PCT international applications are published online on PATENTSCOPE, a database with flexible, multilingual interfaces and translation tools to assist users and the public in understanding the content of published applications.
- Now after 22 months from the earliest filing date (here in this case after November 2021), an applicant can request for a Supplementary International Search which is optional. A second ISA identifies, at applicant’s request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields. At this time the applicant may also request for International Preliminary Examination which is also optional. One of the ISAs at applicant’s request, carries out an additional patentability analysis, usually on an amended version of the PCT application.
- If applicant request for Supplementary International Search and International Preliminary Examination, then within 28 months from priority date (here in this case after July 2022), he receives supplementary international search report and international preliminary examination report. The supplementary international search report is generally similar in content and appearance to the main international search report and it contains a listing of references to patent documents and other technical literature which may affect the patentability of the invention claimed in the international application. However, it does not include documents which have already been disclosed in the international search report, unless this is necessary because of new relevance when read in conjunction with other documents discovered during the supplementary international search. On occasion, the supplementary international search report may contain more detailed explanations than those in the main international search report. This is due to the fact that, unlike the main international search, no written opinion is established with the supplementary international search report, and these additional details are helpful for a full understanding of the references listed.
- After the end of the international phase procedure, usually at 30 months from the earliest filing date of the initial application, from which the applicant claims priority (here in this case after September 2022), the applicant starts to pursue the grant of his patents directly before the national or regional patent offices of the countries in which he wants to obtain them. Now it can be said that the PCT application has now entered the national phase. It is only after the applicant has decided whether, and in respect of which States, he wishes to proceed further with his international application that he must fulfil the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents. More general information on national phase entry can be found in the PCT Applicant’s Guide, National Phase, and specific information concerning fees and national requirements can be found in the national chapters for each PCT Contracting State in the same Guide.
Once the applicant has entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant him a patent or not based on their own patent related laws. Any examination which these Offices may undertake should be made easier by the PCT international search report and the written opinion and even more by an international preliminary examination report.
Benefits of choosing PCT filing route:
There are many benefits to the inventors, Patent offices and normal individuals that a PCT filing offers, such benefits include:
- The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions. By filing a single application, the inventors can choose different jurisdictions where they want to obtain patent rights for their inventions.
- The Patent Cooperation Treaty (PCT) helps patent offices with their patent granting decisions. The Patent Cooperation Treaty (PCT) provides International search report, which helps national patent offices to develop an understanding about the novelty of the invention and helps the examiners to take granting or rejection decisions for the invention.
- The Patent Cooperation Treaty (PCT) facilitates public access to the technical information relating to those inventions. The Patent Cooperation Treaty (PCT) provides easy access to every individual to the patent application, once it is published in the official portal. Users don’t have to struggle with language barriers.
- By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a large number of countries. The Patent Cooperation Treaty (PCT) provides filing a single application to seek protection in multiple countries, without submitting individual application in each countries initially. This saves a lot of money and time of an inventors and they don’t have to pay individual attorney fees to each country.
- It reduces overall cost, time and formalities requirements of inventors. The Patent Cooperation Treaty (PCT) provides filing a single application to seek protection in multiple countries, without submitting individual application in each countries initially. This saves a lot of money and time of an inventors and they don’t have to pay individual attorney fees to each country.
- The applicant has up to 18 months more than if he had not used the PCT 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.
- If the international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT Contracting State patent Office during the national phase of the processing of the application.
- The international search report and written opinion helps about the potential patentability of the invention disclosed in the PCT application, providing a strong basis for the applicant to make business decisions about how to proceed.
- The applicant also has the possibility during the optional international preliminary examination to amend the international application, enter into dialogue with the examiner to fully argue his case 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 thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability that accompany the international application.
- With PCT system, the applicant may be able to fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements.
- If applicant’s invention appears to be not patentable at the end of the international phase, he may abandon the PCT application. By doing this he will have saved the costs he would otherwise have incurred by directly seeking protection in foreign countries, appointing local patent agents in each foreign country, preparing the necessary translations and paying the national fees.
- The applicant also get benefits in reduced efforts in document preparation, communication and translations because the work done during the international processing is generally not repeated before each Office.
Why Should You Choose for International Patent Filing?
Many inventors limit themselves to patent filing in their native countries and do no proceed with international patent filing. There can be various reasons for not opting to go for international patent filing such as cost constraint, ineffective persuasion by the attorney or negligible to minimal knowledge of advantages of having an international patent. These are few of the primary reasons for avoiding the international patent filing, so let’s know what are the advantages of filing the international patent.
Advantages of International Patent Filing
As we all know that a patent is a jurisdictional right and you get the priority rights and enforcement rights in a country where it is registered. The real issues begin if an innovation has an international potential i.e. the product or patent has similar or more market value in a country other than the native country of the inventor. So, what are these advantages that we should know and that we get from an international patent filing:
Distribution of Investment in Intellectual Property
If an inventor or an applicant intends to file a patent in a more than one country then the total cost of the patent filing may go up from upto USD 50,000 or even more. Through direct national phase filing or conventional filing route this investment has to be made in a period of 12 months which becomes a huge burden and hence the inventor or the applicant drops the idea. By adopting PCT (International) patent filing route, this investment is to be made over a period of 30/31 months at a meagre cost USD 600 – USD 2000. Thus, you can plan your investment for filing patent in different countries accordingly.
Better Selection of a Market
Since the international patent filing gives a longer time period for a company to file its patent in different countries, the companies can launch their products in different countries and can assess the marketability factor of the patent or product. This reduces a risk rate caused due to unnecessary cost bearing of intellectual property and to justify the investment, the companies try to linger for higher time into the market which shows low response to their patented products. Thus, the international patent filing gives a company a better picture that which countries should be in their priority patent filing list and increase their chances of increasing a return on investment.
Improves Licensing Chance at Lower Investment
Its true that commercialization or licensing of a patent is higher in some countries than others. So, if you have filed an international (PCT) patent then it can help you license a patent in a particular without bearing the cost for filing the patent in that country. You heard right, if your product has really good potential in a market, the interested can act as assignee or applicant and will file the patent in their country with you being inventor. In this way, you can license your patent, file your patent in a country and avoid investing a higher amount for filing a national phase application.
Hence, it is always advised to file a PCT (International Patent) application, it will never harm you if your research and innovation is actually true to its core and has mass appeal.
Can International Patent Filing Assist in Research?
Yes, the international patent filing can actively help in enhancing your research and get connected or acquainted to a person research in the same field from different university, state or country. An international patent filing assures a privacy or protection extension to the inventor for larger time period. So, if more than one inventor across the globe are researching in the same field can actually exchange knowledge among themshelves to improve the results of their research drastically and may also improve the turn around time for an outcome. This is possible due to the fact that now the inventors do not need to be afraid of copying because although the international patent filing does not allow protection in a particular country but in case of any mischief it allows sufficient time to the inventor file their inventor in their targeted country and take next course of action.
What Are The Preferred Countries to File International Patent Filing (Conventional Filing)?
Now, let’s talk in detail about another kind of international patent filing i.e. direct conventional entry into foreign countries within time period 12 months. Many inventors and applicants intend to file their application in only one or two foreign countries than their native countries.
Patent Filing in USA
United States of America is one of the primary destinations for patent filing of the inventors due to the fact that the patent organization of the USA is highly matured and a procedure goes through a rigorous scrutiny by the USPTO Examiners. Hence, whichever patent comes out unscathed and get grant in USA has high value. Along with value addition, USPTO also provides a high commercialization ration which means if your patent is granted in USA and you intend to license the same then it is much easier in USA than other countries.
Patent Filing in European Patent Organization
European Patent Organization are termed as equally if not better patent office and their patent procedures have similar stringent rules as compared with USPTO. Although, due to higher cost of filing applicants try to avoid EPO filing, but to ensure best commercialibility of their product, EPO is one of the best jurisdictions. Also, in such a huge filing cost, the applicant gets a massive benefit that it can test the largest pool of developed nations as EPO has more than 30 countries signatories to it and most of them are developed nations.
Additionally, a patent granted in EPO is applicable in all its signatory countries and it adds a massive value to the patent valuation and corporate valuation for a company who owns a European patent portfolio.
Hence, if you need to choose a jurisdiction for direct international patent filing, EPO should in your prime list as it can give a market boots that your patent and your product deserves.
Patent Filing in Japan
Japan is another developed which has rich and diverse patent background and an applicant who has a Japanese granted patent and patented product can achieve maximum marketability of their products. To file a patent in Japan, one needs to translate a patent application into Japanese language. The patent examination in Japan goes through fine scrutiny and if succeeded, can add massive value to a patent portfolio of an applicant.
Japan provide a wide market acceptability due to their history of producing one of the finest patented products in the world and most of those products are second to none. Hence, if you are looking to choose a list of countries in which your patent application should be filed and with that you are looking to ensure high market potential then Japan should surely be in that list.
Patent Filing in Australia
Although, Australia is not a prime destination for a lot of patent filers but it should steadily the Australian patent ecosystem is emerging to one of the best in the world and also its market is one of the most sophisticated with high inception rate. Australia allows patent filing in English language and allows an inventor to explore various technical fields in terms of innovation. The patent ecosystem in Australia allows patent filing in futuristic projects also, given the fact that they should not be an abstract idea. So, Australia should be given much more weightage in your patent list along with other primary countries.
Patent Filing in Few Other Primary Countries
Along with the above mentioned primary countries there are few more countries who have developing yet very diverse and strict or matured patent ecosystem such China, Canada, South Korea, Singapore and India. These countries alone give a market of more nearly 3 billion people and since their patent ecosystem is inclusive one and developing very along with their market, they can be in your prime choosing.
For filing a patent in India, you should have a patent application in English language. The cost of filing a patent in India is very low with respect to other developing or developed nations and due to its matured market nature, it can give you boost like no other.
Canadian patent office allows patent filing in French and English languages and Canada has one of the highest rate of patent filing in world. Canadian patent system is steadily attaining a global stature of matured patent ecosystem and hence, it should be in your international patent filing list too.
South Korean patent office allows a patent filing in Korean language and gives one of the developed market exposures in Asia. Singapore has nearly same patent ecosystem as of South Korea and allows a patent filing in English language.