In the current globalisation market scenario it is necessary to file a patent application across the globe. Based on business opportunities, filing a patent application in multiple geographies is very much required as the patent rights are limited to the geography where it has been filed. The patent holder or applicant can only enforce their patent rights in the country where it is filed and granted by the respective patent office.
Once the applicant decides to file their application in foreign countries then knowing the procedures involve from filing to grant to maintaining the patent application are important. This is because there are different routes available to file a patent application in foreign countries and patent filing and prosecution requirements of each patent office are different. Singhwal is constantly engaged in filing application from India to abroad and vice- versa. This also means keeping a constant contact with the respective office in US, EP, JP, and other regional office elsewhere, where ever opportunities takes us. It gives us and edge over keeping things updated with the Regional Office along with the filing status and the regular changes in formalities, rules and regulations.
Singhwal guides and helps its client to go across borders and achieve protection to their ideas and credibility. The most important question is to, why to file a patent application in abroad? The patent is enforceable only in a country where an application of patent is applied to and granted. This means, if we require multi-country protection, we need to file in multi countries. Subsequent question is how to file in multiple countries.
First of the regulation of each countries are different and then establishing communication with each countries office is difficult due to language and time differences, as well as distances. Hence, we help our clients to file the applicants in different jurisdiction with the help of strong network of our associates and partners in different countries.
To file application internationally, we take care to help our clients to choose between two available routes to file the application as mentioned below:
Patent Cooperation Treaty (PCT) route:
Through this route we can file application in 152 countries who are parties to this international covenant. To take advantage of this route, firstly the applicant has to enter International Phase by filing an International application at World Intellectual Property Organization (WIPO). The application can be filed with India as receiving office or directly at WIPO. This application is never granted and has just procedural significance.
This application is mandatory for the subject of Patent search; however examination is optional as per requirements of an applicant and by filing a separate request for the same. Getting a positive examination report has significance for some countries where the application can directly be granted by supplying this examination report, and the particular office grants the application considering this report.
Another importance of this report is done much earlier with respect to other applications which are applied for grant in specific jurisdiction, hence a positive report increase commercial prospect of the invention and technology based on the Invention. After 30/31 months of the priority application filing, the International application is to move into National phase of each country where the applicant seeks for the protection. This is enabled by filing National Phase application, which we help our clients to file with support of our strong associate networks.
This 30/31 months timeline provide sufficient time to the applicant to coordinate with the patent attorney in multiple countries in order to comply with the filing requirement such as translation etc. Further, this timeline provides financial befits to the applicant as he has to pay the fees in the individual national patent office at the time of national phase rather paying fees at the initial stage itself. Therefore, the cost associated with the translation of patent application, official fees of the national patent office and the fees for the patent agent/ attorney can be delayed up to 30/31 months. Alternatively, if the applicant decides not to proceed with certain countries then the said cost can be totally saved.
One of the lesser known advantage of national phase via the PCT application is to have 12 months (maximum period) extra life term of a patent application. For example, applicant XYZ files a provisional patent application in India on Jan 01, 2018 and files a complete application in India on Jan 01, 2019. In this case the term of the patent expires on Jan 01, 2038 (20 years from the initial filing date). On the other way, if the applicant files PCT patent application on Jan 01, 2019 (12 months from provisional filing date) without filing corresponding complete application in India and later entering into India as a national phase application. In this case the term of the patent expires on Jan 01, 2039 which is calculated from international/ PCT filing date.
Once the PCT/ international patent application published online, the database PATENTSCOPE can be used to display if the applicant has interest to license the invention. Hence, the PATENSCOPE database can be used as an advertising platform for any potential licensing opportunities as the database is used by numerous relevant third parties all over the world.
Another major advantage of the PCT route is international search report (ISR) and written opinion (WO) which are available, in general, at 16 months from the priority date under Chapter I. The ISR and WO provide details of potential patentability of the invention. Once the ISR is generated then the applicant has an opportunity to amend the claims in view of the cited prior art in ISR. It is has to be noted that it is not mandatory to respond to WOISR. Hence, the ISR and WO help the applicant to strategize their business and way forward. In case of unfavourable opinion from the ISR and WO, if the applicant wishes to withdraw the application then he can do it before the publication. Hence, the application will be not be available in public domain.
In addition to ISR and WO, the PCT route provides another optional examination of the international patent application under chapter II. This optional examination demand is filed before International Preliminary Examination Authority (IPEA) which generates International Preliminary Examination Report (IPER). The applicant has to demand International Bureau (IB) for this optional examination.
In general second written opinion has to be established before issuing negative IPER. In case, the ISA is the same office then there won’t be any second opinion as the first opinion is sufficient. The applicant has an opportunity to amend the description, drawings and claims of the international application filed once he receives second written opinion. EPO issues second written opinion before issuing International Preliminary Examination Report (IPER). Hence, this optional examination provides a unique/ second opportunity to amend the claim, in addition to description and drawings, as patentable while entering into national phase. Filing IPEP is to get a clear IPER. For example, if the objection is based on lack of novelty and lack of clarity then the applicant can amend the claim in order to overcome the objection. On the other way if the objection is based on inventive step, then the applicant may not amend/ argue with the examiner and do the amendment in the national patent office as per the local law requirement.
It is important to mention here that some of the PCT contracting states that heavily rely on PCT reports to decide whether to grant the patent or not.
Once the patent application is entered into national phase in the contracting states which have a provision of patent prosecution highway (PPH) or any other agreement similar to PPH then the said provisions enable the examiner to examine the national phase application in fast tract. The PCT-PPH bilateral agreements allow the examiner to use the work carried out by other office(s). In most cases, the applicant can refer the granted claim in other jurisdiction to the examiner in order to convince the examiner regarding patentability of the invention.
The PCT application can be filed by combining two or more patent applications as a single patent application within 12 months from the earliest priority/ filing date of the patent application.
In a nutshell, the PCT route provides sufficient time for the patent applicant to decide the foreign national countries where the patent protection is required without losing the priority. It provides patentability of the invention before entering into national phase so that the applicant may amend the claim or be prepared to respond to the rejections would be raised by the national phase in view of ISR/WO and/or IPER or withdraws the application before entering into national phase. Additionally, if the applicant wants to increase the patent term by one year by entering the national phase in the country, wherein the first priority application was filed, through PCT route.
Paris Convention route:
In cases, the applicant is financially viable, or has a need to file in 1-3 countries more beyond Indian filing or requires filing in a country which is not part of PCT, the suggested route is Paris convention route. In this case, the application for foreign jurisdiction is to be filed within 12 months of the earliest priority application. For example, the company XYZ files a provisional patent application in USA on Jan 01, 2018 then he can file the complete application in multiple jurisdictions like IN, EP, AU etc within Jan 01, 2019 without losing the priority of Jan 01, 2018.
Here also, we support in filing for multi-country through our partners in various jurisdictions. As per latest update, there are 177 contracting states are members of the Paris convention. In some cases, as per commercial requirements of an applicant, we strategize for filing through both the suggested international routes. Each case has different requirements, and accordingly we develop a patent filing strategies for our clients.
The applicant has 12 months time period to assess potential of the invention, generate investment and identify the potential marketing countries where he can go for patent protection. Therefore, the 12 months time frame helps the patent applicant to file the application in the countries of interest to avoid unnecessary filing of patent application in all/ most of the geography in order to get financial benefits. Additionally, this time period help the applicant to assess the business opportunities of the invention in specific countries and go for patent protection in those countries only.
Another advantage of Paris convention is that the foreign contracting state(s) don’t show partially between their own citizen applicant and non citizen patent applicant. Means the contracting states provides equal rights to the foreign applicants and the requirements are same for all the contracting member states.
In case of any new matter / claim added while filing a conventional application then the priority of the added matter/ claim will be considered from the conventional filing date rather the original filing date. The prior arts available before the filing date is considered for assessing the patentability of the added matter instead of the first filing date or priority date of the application.
The Paris convention recognises multiple priorities. Hence, two or more patent applications can be combined together and filed in the member states within 12 months from the earliest priority/ filing date. The multiple priorities not only include the patent applications from same country but include patent application from multiple contracting states as well.
In a nutshell, if the applicant is confident enough to file the patent applications in two to three jurisdictions only then Paris convention route is preferred. This is applicable when the applicant analyzed about the potential infringement of the patented invention would happen in the limited jurisdiction by the competitor(s) or the applicant’s market interest is in those limited countries. Additionally, if the applicant is confident enough about the patentability of the invention and does not want to check it before entering into national phase then also Paris convention route is advisable.
Singhwal helps client to come across the following events with the least possible labour or effort needed from the client Direct filing, filing under Paris Convention, International filing under PCT, searching by International Search Authority, examination by International Preliminary Examination Authority, Transmittal Fee for RO/IN , Written Opinion of Search Authority (WOSA) after ISA is conducted and Office Action as reply is duly filed and Publication by WIPO, and National Phase filings and prosecutions under PCT.