Pct

CHENNAI3rd Floor, ‘Creative Enclave’,

148-150, Luz Church Road,Mylapore,

Chennai - 600 004.Tel: +91 - 44 - 2498 4821

BANGALORE Suite 920, Level 9,

Raheja Towers,26-27, M G Road,

Bangalore - 560 001.Tel: +91 - 80 - 6546 2400

COIMBATORE#1533, Trichy Road,

Coimbatore, India – 641018.Tel: +91 - 422 – 6552921

[email protected]

WEBSITEwww.altacit.com

INTRODUCTION TO INTERNATIONAL FILING

Patents are geographically limited. With today’s global industries and growing markets, worldwide patent protection becomes a very integral part of IP Strategy. Post to filing the home application one can choose any method for filing international filing.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


TYPES OF INTERNATIONAL FILING

a) Conventional Application – One can file a patent application in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), and then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of the filing date of the first application and the deadline of 12 months can’t be extended.

b) Patent Cooperation Treaty Filing – The PCT Application, which is simpler, easier and more cost-effective . PCT is an agreement for International Cooperation in the field of Patents and does not provide the grant of “International Patent” .The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), approximately more than 140 Paris Convention countries.

The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


1)First we have to file an application with a receiving office, usually in our home country. That application would then pass through several stages. The first general stage, which is called the international phase, includes four main steps: the first is the filing, the second is the international search, then there is the international publication and after that the international preliminary examination. And then if the applicant wishes to go ahead with his application, there is the national phase. There is a national phase for every one of the offices before which the applicant will have to complete the patenting procedure. That could mean either just one , or two or five or ten offices, including both national and regional offices, where the applicant would have designated certain countries, but for the purpose of obtaining a regional patent.

WHEN CAN WE FILE PCT?



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


CONTD...

An Indian applicant can file a PCT International application if permission granted under Section 39 of Indian Patent Act . Under this section no person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


ADVANTAGES OF FILING PCT APPLICATION

1. One set of formalities requirements.2. International Search .3. International Publication.4. International Preliminary Examination.5. International Application can be put in order before national

phase.6. Ample time to analyze the market and profitability for your

invention, and make a decision as to national phase countries .7. Translation and national fee to be paid only after 20th or 30th

month only if Applicant wishes to proceed.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


THE PROCEDURE OF THE PCT ARE AS FOLLOWS

(i) Filing – An international application should be filed with appropriate office (receiving office) along with the prescribed fee. Application fulfilling the requirements of the treaty it is accorded an international filing date.

(ii) International search – Applicant must also choose one of the International search authorities (ISA). These ISA shall carry out search and provide reasoned written opinion or statements with regard to novelty, inventive step or industrial applicability of the invention .The following are the list of International Search Authorities applicable for Indian Applicants-:a)Australian Patent Office (AU)b)Austrian Patent Office (AT) c)China Intellectual Property Office (CN)



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


CONTD…

d) United States Patent And Trademark Office (US)e) Swedish Patent Office (SE) or f)European Patent Office(EP)

(iii) International Publication: As soon as possible after the expiration of 18 months from the earliest filing date, the content of our international application is disclosed to the world.

(iv) Supplementary Search- Supplementary Search is a optional one and the purpose of this search is to carry out the main search which is related to the prior art. Here it means the search to be done that is to say if the invention is related to any different language and different technical fields to the diversity of the prior art .



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


(v) International Preliminary Examination- International Preliminary Examination is also a optional one and here on the request made by the applicant carries out an additional patentability analysis, after international publication, usually on an amended version of our application. A request for IPEA can be made only after the International search report has been completed .

CONTD…



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


(v) National Phase- The grant of the Patents depends in the prosecution of each of the Patent offices where the application has been filed in the National Patent office or directly with WIPO if permitted by the National security provisions within their national law and if the applicant is a resident or national of the ARIPO HARARE PROTOCOL, OAPI BANGUI agreement ,Eurasian Patent office or European Patent office then the Patent to be granted by the regional Patent offices if permitted by the applicable national law. After entering into the National Phase the applicant have to pay the National fees, Transmittal fees which depends upon the receiving offices and the Local Agent’s fees.

CONTD…



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



[email protected]


THANK YOU

Education

Pct