Patent Cooperation Treaty (PCT) Filing from India: Process, Cost, and Benefits

For Indian innovators seeking international patent protection, the Patent Cooperation Treaty (PCT) offers a strategic and cost-effective pathway. Administered by the World Intellectual Property Organization (WIPO), the PCT simplifies the process of seeking patent protection in over 150 member countries by allowing a single "international" patent application to have the effect of a national filing in each of those countries.

This article provides a detailed guide for Indian applicants on the process, costs, and key benefits of utilizing the PCT system to secure global patent rights.

Understanding the PCT System

It is crucial to understand that the PCT itself does not grant a patent. It is a procedural treaty that streamlines the preliminary stages of patent filing across multiple jurisdictions. The final decision to grant a patent rests with the national or regional patent office of each designated country. The PCT process is divided into two main phases:

1. The International Phase: This phase involves filing a single international application, an international search, and a preliminary examination. It provides a crucial window for the applicant to assess the patentability and commercial viability of their invention before committing to the significant costs of national filings.

2. The National Phase: After the international phase is complete, the applicant must enter the national phase in the specific countries where they want to secure a patent. This involves filing the application with each country's patent office, paying national fees, and complying with local requirements.

Step-by-Step PCT Filing Process for Indian Applicants

The process begins with the filing of an international application from India. An Indian resident or national can file a PCT application either with the Indian Patent Office (IPO), which acts as a PCT "Receiving Office" (RO/IN), or directly with the International Bureau (IB) of WIPO.

Step 1: Prior Indian Filing and Foreign Filing License

While not mandatory, it is a common and often advisable practice for Indian applicants to first file a provisional or complete patent application in India. This establishes an early "priority date" for the invention.

• Foreign Filing License (FFL): A critical legal requirement for Indian residents is to obtain a Foreign Filing License (FFL) from the IPO before filing a patent application in any foreign country. This is governed by Section 39 of the Patents Act, 1970. The FFL is required if the applicant wishes to file a PCT application abroad without a prior Indian filing, or within six weeks of the Indian filing date.

Step 2: Filing the International Application

The international application must be filed within 12 months of the priority date (i.e., the date of the first filing, which is typically the Indian provisional or complete application).

• Required Documents: The application package typically includes:

  • The PCT Request Form (PCT/RO/101).

  • A description of the invention.

  • One or more claims.

  • Drawings (if applicable).

  • An abstract.

• Language: The application can be filed in English or Hindi if filed with the Indian Patent Office (RO/IN). However, it is generally recommended to prepare the application in English from the outset, as this is the primary language for international processing.

Step 3: International Search and Written Opinion

Once the application is filed, the Receiving Office forwards it to an International Searching Authority (ISA). The Indian Patent Office (IPO) itself is a recognized ISA, along with others like the USPTO and the European Patent Office (EPO).

• International Search Report (ISR): The ISA conducts a comprehensive search of existing "prior art" (patents, scientific literature, etc.) to determine the novelty and inventive step of the invention. The search results are compiled into an ISR.

• Written Opinion (WOISA): The ISA also provides a preliminary written opinion on whether the invention appears to meet the patentability criteria (novelty, inventive step, and industrial applicability) under the PCT.

These two documents are invaluable, as they give the applicant a strong indication of their invention's patentability on a global scale. This allows the applicant to make a well-informed decision about which countries to pursue further.

Step 4: International Publication

Approximately 18 months from the priority date, the international application and the ISR are published by WIPO. This publication makes the invention part of the global public domain. It also establishes "patent pending" status in the designated countries and provides a public record of the invention.

Step 5: Entering the National Phase

This is the final and most critical step. The applicant has a period of up to 30 or 31 months from the priority date to enter the national phase in the countries of interest. This extended timeline is a key benefit of the PCT.

• Requirements: To enter the national phase, the applicant must file the application with the national patent office of each country, pay the required national filing and translation fees, and appoint a local patent agent.

Costs of PCT Filing from India

The total cost of a PCT application can be divided into three parts: professional fees, international official fees, and national phase costs.

1. Professional Fees

• Patent Attorney Fees: The fees for drafting the application, filing, and managing the international phase vary widely depending on the complexity of the invention and the firm. For an Indian applicant, these fees can range from ₹50,000 to over ₹1,00,000 for the international phase.

2. International Official Fees

These fees are paid to the Receiving Office and WIPO and are typically in US Dollars or Swiss Francs.

• Transmittal Fee: Paid to the Receiving Office for handling the application. (e.g., approximately ₹3,250 for individuals/startups filing in India).

• International Filing Fee (IB Fee): Paid to the International Bureau of WIPO. This is the main filing fee.

• International Search Fee (ISA Fee): Paid to the International Searching Authority. The amount varies based on the ISA chosen. The IPO offers a highly competitive search fee for Indian applicants.

3. National Phase Costs

This is where the major expenses are incurred.

• Official National Fees: Each country has its own filing and examination fees.

• Translation Costs: If the application is not in the local language, it must be translated. This can be a substantial cost.

• Local Patent Agent Fees: Each country requires a local agent to prosecute the application.

Key Benefits of the PCT System for Indian Innovators

• Time and Cost Deferral: The PCT provides up to 30 or 31 months to decide where to file. This gives innovators crucial time to secure funding, conduct market research, and refine their commercial strategy before committing to the high costs of national filings.

• Simplified Procedure: Instead of filing separate applications in multiple languages within 12 months, a single application can be filed in one language, streamlining the initial process.

• Informed Decision Making: The ISR and Written Opinion provide a valuable, early assessment of patentability. This allows applicants to drop applications for inventions that are unlikely to be granted, saving significant resources.

• Global Recognition and Valuation: A PCT-filed application is often seen as more valuable by investors and potential licensees due to the initial international search and opinion, which validates the invention's novelty and inventive merit.

Conclusion

PCT system is a powerful tool for Indian innovators with global ambitions. By providing a strategic window for market assessment and a single point of entry into the international patent system, it transforms a complex, country-by-country filing process into a manageable, two-phase journey. While the process requires meticulous attention to detail and a clear understanding of the costs involved, the benefits of time deferral, informed decision-making, and global reach make the PCT route a highly recommended strategy for any inventor serious about protecting their innovation on the world stage.