PATENT COOPERATION TREATY APPLICATION
An Indian applicant can file a PCT International application in the following manner:
a) Filing in the Indian Patent Office acting as Receiving Office. In such cases, it is advisable that the application be accompanied by permission for foreign filing granted u/s 39 by the Controller through Form 25. If such permission is sought along with the application, there is a probability that the permission may be deferred and the application may be referred to DRDO / Department of Atomic Energy for their directions.
· An international Patent Application can be filed in Indian Patent Office as a Receiving Office, in request form (PCT / RO / 101) in triplicate, which can be obtained free of charge from the Receiving Office or from the International Bureau of WIPO or can be downloaded from WIPO website.
· In this case, the applicant shall make request for permission under Section 39. After the grant of such permission, the Indian Patent Office shall transmit the patent application to the IB. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.
b) Filing directly in the International Bureau of WIPO after taking permission u/s 39 from the Indian Patent Office.
· An international patent application can be directly filed in IB along with the prescribed fee, in request form (PCT / RO / 101), in duplicate. Permission u/s 39 is required for filing directly in IB. Such an application may also be filed electronically.
c) After filing a patent application in India, anytime before the expiry of 12 months from the date of filing, file an international in IB of WIPO or in Indian Patent Office as Receiving Office. However, if the international filing is within 6 weeks from the date of filing in India, such filing shall be made after taking permission u/s 39 from the Indian Patent Office.
· An international patent application can be filed within twelve months from the filing of patent application in India, in the Indian Patent Office, as a Receiving Office. However, if such an application is filed before the expiry of 6 weeks from the date of filing in India, permission u/s 39 is required. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.
· An applicant has another option to file an International Application within twelve months from the filing of patent application in India, directly in IB, claiming the priority of the previously filed Indian Patent Application along with the prescribed application fee. A certified copy of the Indian Patent Application may be filed with the International application within sixteen months from the date of priority.
Many companies operating from India cater to foreign markets, especially US. Hence, such companies are keen on filing patent applications outside India. Such companies generally contemplate adopting two options:
1. File patent applications in foreign countries without filing a patent application in India
2. File a patent application in India, and soon after, file patent applications in foreign countries
1. File patent applications in foreign countries without filing a patent application in India
When the first option is adopted, patent applicants have to complete a formality with the Indian Patent Office (IPO) before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents of India. The formality requires the patent applicant to request the IPO to grant permission to apply for patent outside India. The IPO grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defence purposes and atomic energy.
2. File a patent application in India, and soon after, file patent applications in foreign countries
When the second option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application, and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed, if one or more inventors in the patent application are residents of India.
Once the IPO grants permission or 6 weeks have passed since the filing of the Indian patent application, patent applications can be filed in one or more countries outside India.
FOREIGN FILING LICENSE:
When an inventor or a company who is a resident in India, desires to file a patent application directly in a foreign country, it is necessary to obtain an FFL from the Indian Patent Office.
In 2002, the foreign filing license requirement was introduced in the Indian Patents Act of 1970. This requirement provided that any inventor who is a resident of India should file or cause to be filed a patent application for his/her own invention first in India; and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India. Alternatively the inventor was required to obtain the Controller’s permission for filing the patent application outside India. The scope and applicability of section 39 did not create much of a stir among inventors in India, but there has been a lingering confusion over the definition and coverage of the term “residence” provided in section 39. Since the written permission takes time resulting in a loss of priority, filing an application first in India is the preferred way of complying with these provisions.
Prima facie, the text of the Section 39 seems to mandate that a foreign filing license must be obtained before the filing of a PCT application, this would cause a detriment to every applicant filing a PCT application via the Registered Office. In such cases, the international filing date would only be granted after the Section 39 clearance is obtained. On the other hand, an applicant who first files for an application domestically, would have the right to claim initial filing date as the international filing date. This approach seems to discriminate between the two methods for filing a PCT application under the Act. Any applicant pursuing a PCT route should be aware of the fact that filing a PCT application by way of Section 39 clearance may lead to a waste of, in many cases, extremely precious days, with regard to the international filing date.
Violation of the above requirement results in criminal liability under section 118 of the Indian Patent Act of 1970, in which the term of imprisonment may extend to 2 years or a monetary fine imposed on the inventor, in addition to abandonment of the patent application or revocation of the patent even if it is already granted. Hence it very important to abide by the mandatory requirements stated in the section 39 of the Indian Patent Act of 1970, to fortify oneself from the ramification of Section 118 of the said Act.
