Filing an international application

for patent under the Patent

Cooperation Treaty

Presented By:

Dilip B. Darade

M. s. Pharm(PI/316)

Dept. of Pharmacoinformatics,

NIPER , Hajipur

Flow of presentation

How to file Patent Application?

What is PCT?

Where to file?

Steps to file PCT?

Elements of PCT?

How to file a patent application simultaneously in different countries?

• directly file separate patent applications at the same time in all ofthe countries in which patent is desired (for some countries,regional patents are available)

• having filed the first patent application in a Paris Conventioncountry (one of the Member States of the Paris Convention for theProtection of Industrial Property ), file separate patent applications inother Paris Convention countries within 12 months from the filingdate of that first patent application, with the benefit of claiming thefiling date of the first application in all other countries.

• file an application under the PCT, directly or within the 12-monthperiod provided for by the Paris Convention from the filing date ofa first application, which is valid in all Contracting States of thePCT.

Direct

PCT

Paris

Convention

What is PCT?

The Patent Cooperation Treaty (PCT) is an international treaty that was concluded

in Washington in 1970 and now-a-days connecting with more than 150 Contracting

States.

It is administered by the World Intellectual Property Organisation(WIPO).

The PCT makes it possible to seek patent protection for an invention simultaneously

in a large number of countries by filing a single “international” patent application

instead of filing several separate national or regional patent applications.

The granting of patents remains under the control of the national or regional patent

Offices in what is called the “national phase”.

(Source- PCT Article 2(vii) 3(1) )

The PCT now has 152 Contracting States

Contracting states

Not Contracting states

Source- http://www.wipo.int/pct/en/pct_contracting_states.html

Advantages of PCT filing

One application One language One currency One country

This single application has the effect of filing simultaneously in different

countries (designated countries).

It allows you to make a single international patent application that has the same

effect as national applications filed in separate PCT states.

You benefit from one application, in one language paid for in one currency.

Use of the PCT saves effort, time, and work of the applicant seeking protection

for an invention in a number of countries.

Where to file ( RO/IN or RO/IB )

Nationals/Residents of India can file an international

application with

the Indian Patent Office at New Delhi, Chennai, Mumbai or

Kolkata as the Receiving Office (RO/IN).

Or

the International Bureau of WIPO as the Receiving Office(RO/IB).

(PCT Rule 19.1(a)(i) or (ii) or (b)) and(Rule 19.1(a)(iii))

Flow under PCT

Inventions

International applications

Receiving Offices(national or regionalpatent offices or theInternational Bureau)

International Authorities(ISA, SISA and IPEA)

International Bureau

Are the object of

PATENTSCOPEFiled with

Transmit Applications to

Carry out search, preparewritten opinion and transmitsreports to

Publishes on

Designated offices (national / regional offices)

Communicates to

GrantPatents

What are the elements of PCT?

I. The Request

II. The Description

III. The Claims

IV. The Drawings

V. The Abstract

VI. Other Formal Requirements

Source- PCT-Article 3(2) 7 Section 207(a).

VII. Fees

The Request

What is the form of the request?

It is the international application is filed on paper, the request must be

made on a printed form (Form PCT/RO/101) to be filled in with the

required indications or be presented as a computer print-out complying

with the Administrative Instructions.

PCT Rule 4.3 5.1(a)

The Request

PCT- Article 9(1) 9(3) Rule 18.1 18.3

The Request

PCT- Article 9(1) 9(3) Rule 18.1 18.3

The Request

PCT- Article 4(1)(ii) 11(1)(iii)(b) Rule 4.9(a)

The Request

PCT- Article 8(1) Rule 4.1(b)(i) 4.10

The Request

PCT- Rule 4.1(b)(iv) 4.14bis

PCT- Rule 4.17(i) 51bis.1(a)(I to V)

The Request

The Request

The Request

The Request

The Request

The Request

PCT- Rule 3.3 Section 313

The Request

PCT- Article 14(1)(a)(i) Rule 4.1(d)

How must description be drafted?

It must disclose the invention in a manner sufficiently clear and

complete for it to be carried out by a person skilled in the art.

It must start with the title of the invention as appearing in Box No. I of

the request.

Rule 5 contains detailed requirements as to the “manner and order” of

the description, which, generally, should be in six parts.

Those parts should have the following headings:

Technical Field, Background Art, Disclosure of Invention, Brief

Description of Drawings, Best Mode for Carrying Out the Invention,

Industrial Applicability.

How must claims be drafted?

The claim or claims must “define the matter for which protection is

sought.”

Claims must be clear and concise.

They must be fully supported by the description.

Rule 6 contains detailed requirements as to the number and numbering

of claims.

The claims may include tables if this is desirable in view of the

subject matter involved.

As to the manner of claiming, the claims must be in two distinct parts:

a) Statement of the prior art

b) Statement of the features

How must the drawings be presented?

The international application must contain drawings when they are

necessary for the understanding of the invention.

Drawings must be presented on one or more separate sheets.

They may not be included in the description, the claims or the

abstract.

They may not contain text matter, except a single word or words when

absolutely indispensable.

Drawings must be on sheets of A4 paper which must be flexible,

strong, white, smooth, non-shiny and durable.

The sheets must be free from creases, cracks and must not be folded.

How must the abstract be drafted?

It must consist of a summary of the disclosure as contained in the

description, the claims and any drawings.

Where applicable, it must also contain the most characteristic

chemical formula.

It must be as concise as the disclosure permits.

The volume of the text of the abstract should not exceed what can be

accommodated on an A4 sheet of typewritten matter.

It should be primarily related to what is new in the art to which the

invention pertains.

It must be presented on a separate sheet which must appear after the

claims and be numbered accordingly.

If the receiving Office finds that the abstract is missing, it invites the

applicant to furnish it within a time limit of two months from the date

of the invitation to correct.

SCHEDULE OF FEES

Sr.no Fees Amount

1 International filing fee (Rule 15.2) 86369 INR +

974 INR / extra sheets exceed 30

sheets

2 Supplementary search handling fee:

(Rule 45bis.2)

12988 INR

3 Handling Fee:

(Rule 57.2)

12988 INR

REDUCTION OF FEES

The international filing fee is reduced by the following amount if the

international application is, as provided for in the Administrative

Instructions, filed:

a) in electronic form, the request not being in character coded format: 6493 INR

b) in electronic form, the request, description, claims and abstract being in

character coded format: 19481 INR

c) in electronic form, the request being in character coded format: 12987 INR