THE PCT
SYSTEM FOR WORLDWIDE FILING OF PATENT APPLICATIONS
The traditional patent system :-
Under the
traditional patent system, it was required that individual application should
be filed for each country for which patent protection was sought. Under the
traditional Paris convention rules the priority of an earlier application
could be claimed for applications filed subsequently in foreign countries.
However, with the limitation that such applications must have been filed
within 12 months of the filing date of the previous / first application in the
home country(e.g. India).
The above
process for filing of patent applications for all countries in which the
inventor wanted to seek protection with respect to as invention had to file
application within one year of the filing of the application in the home
country ,i.e. the filing of first application, and further . it resulted in
huge expenses for translation, patent attorney in various countries, and
payment of fees to various patent offices in the different countries of the
world, all at a time when the applicant didn’t no whether he is likely to
obtain a patent or whether invention is really new.
Filing of separate application under the traditional system required ,that
each and every patent office where an application has been filed ,had to
carryout a formal examination of every application filed with it, resulting in
extensive search by each and every office to determine the status of the
application file, delay and heavy expenditure.
The above
system is still in existence and at the option of the applicant/inventor ,the
traditional system for the grant of patent rights could still be adopted.
What is
the PCT?
The Patent
Cooperation Treaty (PCT) is an agreement for International Cooperation in the
field of patents. This treaty is largely a treaty for rationalization and
corporation ,simplification of the procedure with respect to the filing,
searching and examination of patent applications and dissemination of the
technical information & contents therein. The PCT does not provide for the
grant of International Patent, and till date there is no authority which can
grant an International Patent. The patent rights are still a subject matter
governed by the local laws of each and every country under the PCT system. The
process for filing of application in various countries of the world have been
simplified thereby resulting in excellent cost benefits , effectiveness and
simplicity. The PCT system establishes an international system which enables
the filing, with a single patent Office (the “receiving Office”), of a single
application (the “international application”) in one language having effect in
each of the countries ,who are party to the PCT ,and which the applicant names
(“designates”) in his application.
PCT provides
for the formal examination of the international application by a single patent
Office/ the receiving Office ,and all the applications filed under the PCT
system are subjected to an to an international ,search which results in an
report citing the relevant prior art (mainly published patent documents
relating to previous inventions) which may; have to be taken into account in
deciding whether the invention is patentable , and the said report is made
available first to the applicant and is subsequently published also.
PCT provides
for centralized international publication of international applications with
the related international search reports, as well as their communication to
the designated Offices, and provides the option of an international
preliminary examination of the international application ,however it is up to
the local patent office of each country , where they have to decide whether
or not to grant a patent to the applicant. A report containing an opinion as
to whether the claimed invention meets certain international criteria for
patentability or not may also be provided to the applicant.
The above
procedure is called the international phase of the PCT procedure. Further main
objectives of the PCT is to facilitate and accelerate access by industries and
other interested sectors to technical information related to inventions and to
assist developing countries in gaining access to technology.
The
international application must contain a request, a description, one or more
claims, one or more drawings (where required) and an abstract. It must comply
with the prescribed physical requirements for filing applications. It must be
in one of the prescribed languages. Finally, the required fees must be paid.
NATIONAL PHASE
- The
national phase follows the international phase. Before processing and
examination may start in the national phase in the designated or elected
Offices, the applicant must perform certain acts thereby effecting “entry
into the national phase.” If the applicant does not enter the national
phase, namely, if he does not perform these acts within the prescribed time
limit, the international application loses its effect in the designated or
elected States concerned with the same consequences as the withdrawal of any
national application in that State (Article 24).
BASIC REQUIREMENTS FOR ENTRY INTO THE NATIONAL
PHASE
- For entry into the national phase
before a designated or elected Office, it is necessary that the national fee
be paid to it and, where the international application has not been filed or
published in the official language, or one of the official languages, of
that Office, that a translation into an official language be filed. This
must be done within a certain time limit, which is different depending on
the circumstances: if the designated State concerned has been elected for
the purpose of international preliminary examination within 19 months from
the priority date, the time limit is 30 months from the priority date; in al
other cases (that is, if the designated State concerned has been elected
after 19 months from the priority date of if the Chapter II procedure has
not been used in relation to that designated State), the time limit is 20
months from the priority date. The time limits for entry into the national
phase are, in some Offices, even longer than 20 or 30 months. See Volume II
of the PCT Applicant’s Guide for further information.
- The national fees to be paid are
usually about the same as the fees required for the filing of a national or
regional application. Some Offices, however, levy lower national or regional
filing, search or examination fees, or refund certain fees, on account of
the existence of the international search report or where an international
preliminary examination report has been established. This offsets, at least
partly, the costs of filing an international application.
- Where the original drawings are of a
good quality, the applicant is not required to file additional formal
drawings with the designated or elected Offices, permitting substantial
economies in some cases. It is therefore important to file drawings with the
receiving Office that fully comply with the formal requirements of the
Regulations under the PCT.
- Where the priority of an earlier
application is claimed and a certified copy of that application has been
provided, it is not necessary to submit t a certified copy of the priority
document to each designated or elected Office. The International Bureau
sends any required copies of the priority document to the Offices concerned.
ADDITIONAL SPECIAL
REQUIREMENTS
- Apart from the payment of the national
fee and, where necessary, the filing of a translation, no designated or
elected Office may require compliance with further requirements within the
20-or 30-month time limit. Certain additional requirements, such as
appointment of an agent, indication of an address for service of
notifications, declaration of inventor, assignment documents, and the like,
are allowed, but the applicant must be given the possibility of complying
with those additional requirements after the expiration of the time limits
mentioned above.
SUBSTANTIVE CONDITIONS OF PATENTABILITY
- The PCT leaves to each Contracting
State freedom to prescribe the substantive conditions of patentability
applied in the national phase. This is particularly true of what constitutes
“prior art”. However, since the requirements of prior at as defined in the
PCT and its regulations for the purposes of the international phase are
generally as strict as, or stricter than, those defined in any national law,
there is very little likelihood of unpleasant surprises of this kind
occurring in the national phase. On the other hand, the PCT does not prevent
any national law from requiring the applicant to furnish, in the national
phase, evidence in respect of any substantive condition of patentability
prescribed by that law.
CORRECTION OF TRANSLATION
8.
Where the translation of the international
application contains an error, that error may be rectified by the applicant
during the national phase before all designated Offices with the exception of
the national Office of the Republic of Korea (which does not allow such
correction).
- The scope of the translation of the
international application may not, however, exceed the scope of the
international application in its original language. Where, for example, as a
result of incorrect translation, the scope of the international application
in the language of the translation is narrower than in its original
language, that scope may be broadened but must not exceed the original
scope. Where the scope of the translation is broader than that of the
international application in its original language, the designated Office
or any other competent authority ;of the designated State may limit
accordingly the scope of the international application or of a patent
resulting from it (Article 46).
AMENDMENTS IN THE NATIONAL
PHASE
- The PCT guarantees the applicant the
opportunity to amend the description, the claims and the drawings before any
designated or elected Office. Thus, in addition to any amendments made in
the international phase, further amendments may be filed upon entering the
national phase or within a prescribed time limit thereafter.
LEGAL REMEDIES; PROTECTION AGAINST LOSS OF RIGHTS
- where, as a result of a mistake which
was not timely corrected, an international application is considered
withdrawn, the applicant may request review of that decision by each of the
designated Offices. In addition to requesting review, the applicant has the
opportunity to submit at the same time, to each designated Office, a request
for excuse of failure to comply with a time limit. The legal basis of, and
the conditions for, such a request are to be found in the applicable
national law or regional convention, which applies equally to international
applications. Where that law or convention provides for reinstatement, this
can be requested. Where there is a possibility of requesting further
processing of the application, this can also be done. Procedural safeguards
are thus available in each designates State to PCT applicants in the same
way as they are the applicants for national or regional applications not
made via the PCT.
GENERAL INFORMATION FOR APPLICANTS FOR PATENTS IN INDIA
- What is a patent
A Patent
is a grant from the Government which confers on the grantee for a limited period
of time the exclusive privilege of making, selling and using the invention for
which a patent has been granted and also of authorizing others to do so. The
grant of Patents for inventions in India is governed by the Patents Act, 1970
and the Patents Rules 1972.
A patent
granted under the Act confers upon the patentee where the patent is for an
article or a substance, the exclusive right by himself, his agents or licensees
to make, use, exercise, sell or distribute such articles or substance in India
and where the patent is for a method or process of manufacturing an article or
substance, the exclusive right by himself, his agents or licenses to use or
exercise the method or process in India. The patents granted under the Act are
operative in the whole of India.
Varieties
of Patents
Three kinds of Patents are granted under the
provisions of the Act, namely:
i) An ordinary Patent
ii) A patent of addition for improvement in
or modification of an invention for which invention a patent has already been
applied for or granted, A patent of addition remains in force only as long as
the patent for the original invention remains in force and no renewal fees are
payable in respect thereof, In case the original patent is revoked, the patent
of addition may be made as independent patent by the authority ordering the
revocation and it will continue thereafter for the unexpired terms of the
original patent subject to the payment of the prescribed renewal fees.
iii) A Patent will be granted in respect of
a convention application filed under section 135 of the Act is based on an
application made in an convention country. The convention application has to be
made within one year from the date of the first application made in a convention
country in respect of that invention.
Who may apply for a Patent
a)An application for an ordinary Patent for
an invention may ;be made by any person, whether a Citizen of India, or not,
claiming to be the true and first inventor of the invention or his assignee. The
first importer of an invention into India or the first inventor. A company or a
firm cannot be named as the ‘true and first inventor’. The term ‘person’
includes the Government.
b)An application for a Patent of Addition
may be made only by the applicant for the original Patent to which it is an
addition, if the application for the main patent is pending; or by the patentee
of such main patent, if it has been granted.
c)A convention application may be made by
any person who has made an application for a patent in respect of that invention
in a convention country or by his assignee or his legal representative.
Special
provisions regarding persons employed in Government Service.
a)Subject to any special conditions of
service or to any special orders applicable to the persons employed in any
;particular department, all Government Servants are at liberty to apply for a
patent direct to the Patent Office.
b)Government Servants employed in the
Defence Services in the Indian Navy and in the Indian Air Force should not apply
for patents except in the manner laid shown in the Special Regulations
applicable to them.
c)Government Servants employed in Indian
Railways or in Scientific or Technical Research should not apply for patents or
cause or permit any other person to apply for or obtain a patent for an
invention made by such Government Servants, save with the permission of the
Government and in accordance with such conditions as the Government may impose.
What may be patented.
Any invention which satisfies the definition
of the ‘invention’ given in the Act may be patented.
(a)As defined in Section 2(1)(j) of the Act;
an invention, means any new and useful:-
i)
art, process, method or manner of manufacture;
ii)
machine, apparatus or other article;
iii)
substance produced by manufacture, and includes any
new and useful improvement of any of them and an alleged invention.
(ii)The following inventions are not
patentable within the meaning of the Act.
a)an invention which is frivolous or which
claims anything obviously contrary to well established natural laws;
b)an invention the primary or intended use
of which would be contrary to law or morality or injurious to public health;
c)the mere discovery of a scientific
principle or the formulation of an abstract theory;
d)the mere discovery of any new property or
new use for a known substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least
one new reactant;
e)a substance obtained by a mere admixture
resulting only in the aggregation of the properties of the components thereof or
a process for producing such substance;
f)the mere arrangement or rearrangement or
duplication of known devices each functioning independently of one another in a
known way;
g)a method or process of testing applicable
during the process of manufacture for rendering the machine, apparatus or other
equipment more efficient or for the improvement or restoration of the existing
machine, apparatus or other equipment or for the improvement or control of
manufacture;
h)a method of agriculture or horticulture,
i)any process for the medicinal, surgical,
curative, prophylactic, or other treatment of human beings or any process for a
similar treatment of animals or plants to render them free of disease or to
increase their economic value or that of their products.
iii) Certain Inventions not patentable as
provided in sec.4 of Act, no patent shall be granted in respect of Invention
relating to Atomic Energy falling within Sub-Section (1) of Section 20 of the
Atomic Energy Act, 1962.
iv)Inventions in
respect of which only processes of manufacture are patentable.
In respect
of Inventions.
a)claiming substances intended for use or
capable of being used, as food or as medicine or drug, or
b)relating to substances prepared or
produced by chemical processes (including alloys; optical glass, semi-conductors
and inter-metallic compounds); no patent shall be granted in respect of claims
for the substances themselves, but claims for the method or processes of
manufacture shall be patentable.
The term ‘medicine or drug’ includes
insecticides, germicides fungicides and the like.
Term of the Patent
Subject to the payment of prescribed renewal
fee within the prescribed period, the term of every patent granted shall be as
follows:-
a)In respect of an invention claiming
process or method of manufacture of a substance intended for use or capable of
being used as food, or as a medicine or drug be 5 years from the date of sealing
of the patent or 7 years from the date of the patent whichever period is
shorter;
b)In respect of any other invention, be 14
years from the date of the patent.
The renewal fees specified in the First
Schedule to the Rules, are payable at the expiration of the 2nd year
from the date of the patent or of any succeeding year and the same must be
remitted to the appropriate office of the Patent Office before the expiration of
the second or the succeeding year. The prescribed period for the payment of the
renewal fees in respect of Patents granted under the Act is extendable to a
period not exceeding 6 months by making a request to the Controller on the
prescribed Form 5 alongwith the prescribed fee of Rs.100/- per month.
Date of the Patent
Subject to the provisions of the Act in
respect of the post-dating of patent applications, every patent granted under
the Act shall be dated as of the date on which the complete specification was
filed.
Fees
1)
On what payable
Fees as prescribed by the Rules are payable
for filing an application for a patent and in respect of subsequent proceedings
thereon. A proceeding in respect of which a fee is payable is of no effect
unless the fee has been paid.
ii) Manner of Payment
The fees may be paid in cash at the
appropriate office of the Patent Office or may be sent by draft money order or
cheque made payable to the Controller of Patents at the appropriate office of
the Patent Office. Stamp will not be accepted in payment of fees.
General procedure for obtaining a patent
The following are the successive stages of
the procedure for obtaining a Patent.
i)Filing an application for a patent
accompanied by either a provisional specification or a complete specification ;
ii) Filling the complete specification if a
provisional specification accompanied the application;
iii)Examination of the application.
iv)Acceptance of the application and
advertisement of such acceptance in the official Gazette.
v)Overcoming opposition, if any, to the
grant of a Patent; (overcoming by applicant for Paten).
vi)Sealing or grant of the Patent (to be
done by HO at Calcutta)
Filing of an application for the grant
of patent.
The following documents are required for
filing an application for a Patent
i)An application made in the prescribed form
in triplicate; having an address for service in India only.
ii)A provisional specification drawn up in
the prescribed Form 3 or a complete specification drawn up in the prescribed
Form-3A alongwith drawings if any. In respect of a convention application, it is
necessary to file a complete specification alongwith the application.
iii)A statement and undertaking under
Section 8 of the Act in the prescribed Form-4 in duplicdate;
iv)An abstract of the invention disclosed in
the specification;
v)In the case of an application made by
virtue of an assignment of the right to apply for the patent, the proof of the
right to make the application, if the application is not endorsed as prescribed
.
vi)A declaration as to inventorship of the
invention in the prescribed form 6 with complete specification is submitted
after provisional and secondly with every convention .
vii)In the case of convention application,
copies of the specification or corresponding documents filed or deposited by the
applicant in the Patent Office of the convention country certified by the
official Chief or Head of the Patent Office of the convention country or
otherwise verified to the satisfaction of the Controller;
viii)A duly stamped power of attorney in the
prescribed Form-62 if the application is filed through an agent or attorney.
Drawings:-
If the invention is capable of being
illustrated with the help of the drawings, such drawings should be filed in
triplicate alongwith the specification to which they relate or at such other
time as the Controller may direct. At least one copy of the drawing i.e., the
‘original’ must be suitable for reproduction and as such should be on A-4 size
white or light blue tracing cloth or transparent or semi-transparent sheet or
film made of plastics or fibre glass. The other copies of the drawings i.e.
duplicate and triplicate, may be a blue print or the like provided it is
permanent, legible and true copy of the original. The drawings should be with a
clear margin of 1.50 cm width all round. Sufficient space should be kept in
between the figures, so that they may be distinct. The drawings should be
executed with indelible black ink and should bear (I) in the left hand top
corner the name of the applicant, (ii) in the right hand top corner, the number
of sheets of drawings and the consecutive number of each sheet, and (ii) in the
right hand bottom corner the signature of the applicant or his agent. The
figures should be drawn in an upright position in regard to the top and bottom
of the sheet. The various parts of the figure should be indicated by reference
letters or numerals which should be bold, distinct and not less than 0.3 cm
height and each figure of the drawing should be explained in the nature of flow
sheets may bear descriptive matter to show the materials used and the chemical
or other reactions or treatments effected in carrying out the invention .
Opposition to the grant of Patent.
Any person interested may give notice to the
controller at the appropriate office of the Patent Office, of opposition to the
grant of the patent in the prescribe Form 15 along with the prescribed fee of
Rs.300/- at any time within a period of four months from the date of
advertisement of the acceptance of the Complete specification . This period may
be extended by one month by making an application to the Controller in the
prescribed Form 14 with prescribed fee of Rs.1100/- before the expiry of the
aforesaid 4 months.
The Controller, on the receipt of a notice
of opposition, notifies the applicant. The opponent and the applicant are
required to file their statements and evidence and they are given an opportunity
of being heard before the case is finally decided.
Sealing of Patent
In the case there is no opposition under
section 25 of the Act or the opposition proceeding is finally decided in favour
of the applicant for patent, or the application is not refused by the Controller
by virtue of any power vested in him, a patent may be sealed on the application
upon a request made in the prescribe Form 22 accompanied with the prescribed fee
of Rs.200/-.The request for sealing the patent should be made not later than
the expiration of a period of 6 months from the date of the advertisement of the
acceptance of Complete Specification, which period may be extended by 3 months
by making an application in the prescribed Form 23 with the prescribed fee of
Rs.100/- per month provided that,
(a)Where at the expiration of the said 6
months any proceeding in relation to the application for Patent is pending
before Controller or the High Court, the request for sealing may be made within
a period of 2 months after the final determination of the kproceeding.
(b)Where the applicant or one of the
applicants has died before the expiration of the time within which the request
for sealing could be made, the said request may be made at any time within 12
months after the date of the death or at such later time as the Controller may
allow:
Patents granted under the Act may be kept in
force if desired by paying the prescribed renewal fees within the prescribed
time.
Amendment of application and specification:-
The application or specification (including
drawings) may be emended by way of disclaimer, correction of explanation by
making an application in the prescribed Form 29 accompanied by the prescribed
fee under Section 57 of the Act. No amendment of the complete specification will
be allowed the effect of which would be that the specification as amended would
claim or describe matter not in substance disclosed in the specification as it
stood before the amendment or that any claim of the specification as amended
would not fall wholly within the scope of a claim of the specification as it
stood before the amendment.
Filling application for patents outside
India:-
In case a person resident in India desires
to make an application for patent outside, he should either (I) apply for a
patent at the appropriate office in India and thereafter apply for a patent
outside after the expiry of six weeks from the date of filing in India, provided
no secrecy orders have been imposed by the Controller under Section 35 of the
|Act, or (ii)seek permission of the Central Government for applying outside
India by making an application to the Controller on Form 21 with prescribed fee
of Rs.30/-, before filing an application for patent outside India. Failure to
comply with these requirements will attract the provisions of Section 40 and 118
of the Patents Act, 1970.
General:-
All applications for patents are kept secret
up to the stage of the advertisement of their acceptance. The correspondence
with the applicants for Patents is also treated as confidential.
The officers and the employees of the Patent Office are
forbidden to act as advisers or consultant of the applicants for Patent. The
applicants are advised to have their own consultants, advisers or agents are
they may like in view of the technical and specialised nature of the provisions
of the Act or the Rules.
For more detailed information in respect of the above
matters, reference may be made to the Patents Act, 1970 and the Patents Rules,
1972 which can be inspected free of charge at the Head Office or the branch
office of the Patent Office. Search rooms provided with the office are also open
to the public during office hours where Indian Patent specifications and the
Gazettes of India, PartIII, Section 2 are available for public inspection free
of charge and Indian Patent specifications are also available for sale.
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