Seeking patent grant in international jurisdictions is no longer a cumbersome task with the introduction of PCT filing system. PCT aids in the international filing of patent applications in various countries that fall under the arena of the treaty. PCT or Patent Cooperation Treaty is an international agreement between 152 contracting states. With its introduction on 24 January 1978, a person can perform international filing from a single receiving office.
With this basic background knowledge of PCT, let’s move onto the Elements of PCT application. Later we will also discuss the procedure of PCT filing and prosecution.
Elements of PCT application for filing:
There are certain basic requirements that comprise a PCT application. Here are those elements and in the order in which they are present in the application. So, if you are looking for what comprises a PCT application, do go through it.
- Request: it is a petition for international application. The request form has 10 boxes It contains the following elements:
- Title of Invention: the title is the main heading of the invention. The preferred word-limit for the title is 2-7 words when in English or translated to English. Fill the title in Box I (1) of the request form.
- Applicants and Inventors information: name (Surname and then First name) and address details identify an applicant and/or inventor. Where the applicants is a legal entity or a corporation then mark the check-box “applicant only”. Along with this do provide some contact detail, as in telephone number, e-mail and/or facsimile number. Information of the applicant and inventor(s) are part of Box II (2) and III (3) respectively.
- Agent or common representative: add the details of the agent in the Box IV of the request. Otherwise a separate document “Power of Attorney” signed by the applicant. Do mention the contact and address details of agents the same as in the case of Applicant and/or inventor.
- Designation of States: for the applications filed after 1 January 2004, filing automatically constitutes the designation of all the contracting states. But, Japan, Republic of Korea and Germany are not a part of the automatic designation process.
- Priority Claim and Restoration of the Right of Priority: an applicant can claim priority of an earlier application filed in or for another country in some other convention or for a member of World Trade Organization (WTO) that is not a part of PCT. It serves to seek a priority date for the current application.
- International Searching Authority (ISA): sometimes 2 or 3 ISAs are eligible to carry out the international search, in this case, the applicant indicates one ISA chosen by him/her in Box No. VII (7).
- Declarations: the applicant can declare any of the following declarations:
-Regarding the identity of the inventor.
– Applicant’s entitlement as at the international filing date, to apply for and for grant of patent.
– Applicant’s entitlement as at the international filing date, to claim priority of the earlier application.
– Declaration of Inventorship (Only for USPTO).
– Regarding Non-prejudicial disclosures or exceptions to absence of novelty. Box VIII (8) incorporates the declaration part of the request.
- Checklist: Box IX (9) comprises the checklist. It allows the receiving office to verify if all the documents constituting the international application are present.
- Signature of Applicant or Agent: the applicant signs the request form in the BOX No. X (10). An agent hired can sign the form if the application generates a separate “Power of Attorney”. Also, sign the request form in black ink and indicate the name next to the signature.
- Notes to request form: facilitate the completion of the request form. They provide a description as to what each box of the request indicates and how to make them.
- Fee calculation sheet: helps in calculation of the total amount of fee payable to the patent office. Annex it right after the form as it is not a part of the request form. 3 types of fee are payable within 1 month of filing- Transmittal fee, International filing fee, and search fee.
- Description: this part discloses every detail regarding the invention in a clear and complete manner as produced by a person skilled in the art. Starting with the Title as mentioned in Box 1 of the request form. Also, it comprises the technical field of the invention, Disclosure of Invention, Description of drawings and industrial applicability. Additionally, the applicant and/or inventor can add sequence listing where applicable (eligible for both electronic and paper format filing).
- Claim(s): draft the claims in a clear and concise format. Also, the content of claims must match with that of description. Also, write them in 2 distinct parts- first the statement of the prior art and secondly the differentiating features for which protection you are seeking protection.
- Abstract: it is a brief summary of the descriptive invention. It serves the purpose to assist scientist, researchers and other people holding knowledge in the field. Draft it in English with word length ranging between 50-150 words.
- Drawing(s) (if any): drawings in the utility patent help in better understanding of the invention. Add different views of the drawings and always present them on different sheets.
Points to Remember:
- Number the sheets in Arabic numerals. The date on the right of the priority application is also in the Arabic language with day, name of month and year, in that order.
- Language of filing depends upon the jurisdiction of the receiving office. Some offices allow choosing between 2 or more languages.
The procedure of PCT Patent Filing
The PCT procedure works on the same lines as for national patent filing but it also differs to some extent. This basically involves 2 phases- International and National Procedure.
- Filing Patent Application: the very first step involves filing an application in the local patent office to receive a priority date. After this, file an international application with a PCT receiving office within 12 months from the priority date. Through the receiving office, the application enters into international phase. Here receiving office is a national, regional patent office or you can directly file an application to WIPO. Keep in mind the PCT guidelines while filing a patent application.
Note: if there are multiple patent applicants belonging to different jurisdictions they can file the application in one of the jurisdictions of the PCT convention countries.
- International Search Authorities (ISA): conducts a detailed search of the published patent applications and technical literature for the current invention. Thereafter, the ISA forms a written opinion and generates an international search report (ISR). This takes place within 16 months of the priority date.
- Publication: the very next step is the publication of the International application, written opinion and the International search report (ISR). The International Bureau of WIPO carries out this procedure. Publication of the invention takes place within 18 months from the priority date.
- Supplementary International Search Report (optional): you can generate an additional international search report by another International Search Authority. This report is completely optional and is not a compulsory part of the basic procedure. This authority produces an International Preliminary Report on Patentability. If required, make the request within 22 months from the priority date.
- International Preliminary Examination (optional): on request of the applicant an international search authority (of his choice) generates a preliminary examination report. If required, make the request within 22 months from the priority date.
- Communication to the regional patent office: this involves the submission of the following documents to the respected patent offices:
- International Application
- International Search Report and written opinion
- Supplementary International Search Report (optional)
- International Preliminary Report on Patentability (optional)
- National Phase: at this point, the patent application reaches the national phase i.e. in the regional offices of the selected jurisdictions. Here, the applicant needs to fulfill the requirements put forth by the respected regional offices in the prescribed duration. This involves payment of fees, providing translations and appointment of an agent (where required). Application after entering the national phase is prone to rejection by the regional patent offices. This happens if you fail to bring complete documents and/or don’t meet the basic legal requirements of their jurisdiction.
Note: apart from the PCT procedure, you can go for direct application to different patent offices of International jurisdictions. Also, you can go for Paris Convention for international protection of your Industrial Property.
You cannot file an international application for purely ornamental design patents.
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