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Intellectual Property has always played an increasingly significant role in today’s technology-driven industry. Patents are an important IP asset for an organization. Hence, the innovative strength of an organization can subsequently be measured through its patenting activities. Not only the number of patents, but the quality of the patents is what makes the corporation more competitive. We all know that acquiring a patent is a costly and time-consuming process. Hence, it is always advised to have a strategic approach to obtaining patents. The commonly used term “International Patent” should not be confused with the grant of a patent internationally. A patent is territorial. It means that, to protect an invention in India, the patent has to be granted in India, and similarly elsewhere as well. There is no worldwide patent that can give protection through a single application.
Patent Search
The
development of an invention is not an easy
process. A grant of the patent is a long
process that entails multiple checks of novelty, non-obviousness and
industrial applicability. For this, it is
very important to have a solid check on
prior art to understand the patentability of
the invention. Moreover, the steps that are
involved in developing an invention bringing it to fruition are time-consuming and costly. It
is highly advisable to conduct a comprehensive
prior art search. For this, conducting a
patent search is always the first step towards filing the patent application.
Having a strong search ensures a strong
patent application. Having a strong search
will help in knowing what can be patentable
and what cannot, and thereby, thereby enabling careful design of the invention to focus on its patentable features. Moreover, this search also helps the inventor to understand what objections might arise in due course and how they can be effectively addressed.
Patent Drafting
The
drafting of a flawless patent application is
key in the process of granting patents. It
is necessary that the drafting must be done
in a way that does not leave any stone
unturned when it comes to the disclosure
being made for the invention. The
application consists of various parts
which require deep understanding and careful
drafting. At any point in time, if there is
any information that is either wrong or
includes information that does not form part of the main invention, it might cost a
lot to the patentee. Hence it is advisable
to take help from an experienced
professional for drafting the patent
application. The application consists of
various parts such as claims, description, background, abstract, and summary, all of which require precise and clear presentation of information before the examiner.
PCT Patent Application
The Patent Cooperation
Treaty was signed on the last day of the conference on
19 June 1970. The Treaty entered into force on 24
January 1978, initially with 18 contracting states. In
2019, 153 states were members of the PCT, and applicants
from 127 countries across the six geographical regions
of the world filed PCT applications at 87 receiving
offices (ROs). The 153rd country to enter the PCT is
Samoa, on 2nd October 2019. Despite this broad
geographical spread, most filing activity is
concentrated in a small number of economies. Combined,
the top 10 ROs accounted for nearly 94% of applications
received in 2019. With 60,993 filings, the China
National Intellectual Property Administration (CNIPA)
received the highest number of PCT applications,
followed by the United States Patent and Trademark
Office (USPTO), and the Japan Patent Office (JPO).
This is the most convenient route if a patent applicant is trying to protect their invention in multiple countries as large numbers of countries are currently signatories to this treaty. PCT requires the filing of an international patent application within 12 months from the date of the local/domestic patent application from which priority is to be claimed. If the international application is filed within 12 months from the date of priority, the applicant gets a minimum of 30 months to decide whether to enter national phases in other countries or not. An additional advantage of PCT is the International Search Report which the PCT impaneled Search Authority provides a detailed opinion on the patentability of the invention disclosed in the PCT application. To enter India as a national phase, a period of 31 months is available. PCT applications can also be filed without claiming any priority from domestic or local applications. The International application can be filed directly and in case of claiming priority from local applications, the international patent applications have to be filed within 12 months from the date of filing the local application. In some cases, if this timeline is missed, priority can be restored.
Filing
The filing in the RO must be done within 12 months from filing the local application. The application filed is called an International Patent Application or simply, a PCT Application.
International Search
The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent offices.
International Publication
The publication is done within 18 months of filing the local application or the priority date, whichever is earlier
Read MoreNational Phase Patent Applications
Patent applicants get a minimum period of 30 months from the date of filing of local applications or the date of filing of international applications (if they were filed directly) to decide whether or not to enter other countries to get protection. Many countries, including India, have an extended period of 30 months. This period varies from 30–34 months, which is 31 months while entering India. In many countries, translations are required to be done to comply with the language requirements of local patent offices.
The PCT application or the Paris Convention application has to be filed within 12 months of the earliest date of filing of the local application, failing which no further foreign application corresponding to the original local application can be filed.
In the PCT process, an applicant gets at least 18 months from the time the international patent application (or usually 30 months from the filing date of the initial patent application of which the applicant claims priority) before beginning the national phase procedures with individual patent offices and to fulfill the national requirements. During the international phase, the patent applicant gets an International Search Report (ISR) from the International Searching Authority (ISA), which gives a non-binding opinion on patentability. Based on this report, the patent applicant can decide whether or not to enter national phases.
To file the national phase application in India, the applicant has to provide some documents to the patent office. The complete specification has to be provided, which includes the description, claims (if amended, both as originally filed and as amended), abstract, and drawings. An English translation is required for the description. The details of the applicant and inventor(s), including names, nationalities, and addresses, have to be provided along with the priority claim. Where a PCT application claims priority, and the priority document was filed in compliance with Rule 17.1 of PCT with WIPO, a copy of Form of International Bureau 304 (PCT/IB/304) has to be filed with the Indian Patent Office. Other documents such as the power of attorney, declaration of inventorship, verification of translation, etc., are also needed while filing a national phase application in India.
The experienced professionals at GPF are there to guide clients through the process associated with the National Phase patent application. The team at GPF works with clients to provide and implement filing strategies based on the client’s demands and ensure timely execution.
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Paris Convention Route Patent Application
A Paris Convention application is an alternative to the PCT patent application that is filed in non-PCT member countries or filed directly in convention countries within 12 months from the first patent application filed in the home country. The first patent application filed in the home country is commonly referred to as a priority patent application. The priority date of the Paris Convention patent application is the date of filing the first patent application in the home country. The Paris Convention patent application may be filed directly in the contracting countries when the Applicants are very sure about the patentability of their invention and wish to secure a patent in the shortest possible time.
As soon as the applicant files the patent application in the contracting state, it starts the 12-month period within which the applicant can file the application elsewhere and can claim the priority date of the priority application filed in the home country. To the extent that the content of the Paris Convention application is disclosed in the earlier priority document, it will be backdated to the priority date, which is beneficial for the applicant.
The common advantage of using the Paris Convention, as discussed earlier, is the 12-month convention period, which helps the applicant to seek funds or to perform market research and turn an idea into a commercial product. All such exercises can be done by filing a Convention Application without risking a loss of rights in other countries.
The team at GPF consist of expert patent attorneys having a subsequent technological background for effectively filing with the patent application with perfect drafting of specification with the subject matter experts having years of experience. The dedicated support staff and attorneys are fully devoted to provide with all the advice required by the client for maximizing patent protection in multiple jurisdictions either through the Convention route or PCT.
Read MorePatent Translation Service
To apply for a patent globally, many countries such as China, Japan, Korea, Brazil, among many others, require translations in their respective languages, making it critical to have translations done in such a manner that the most appropriate and technically relevant translated words are used consistently, as similar words may have different meanings and interpretations in different geographical locations. Expertise and experience are therefore must-have attributes to convey the meaning of any technical term in its desired form. With patent translation, it’s more than just a Google Translate. The importance lies in the meaning and nature of the legal language associated with it. With a team of professionals across the world.
The team at GPF consists of experienced practitioners from varied fields who have expertise in doing translations for different nations. The GPF management team works hard to accommodate the scheduled timelines that are expected in different jurisdictions. Through association with Khurana & Khurana, Advocates, and IP Attorneys (which is among the leading IP and Commercial Law practices in India), GPF is aiming to raise the bar higher.