PATENT APPLICATIONS UNDER PCT
The Patent Cooperation Treaty is an agreement for
international cooperation in the field of patents. It is the
most significant advancement in international cooperation in
this field since the adoption of the Paris Convention
itself. It is, however, largely a treaty for rationalization
and cooperation with regard to the filing, searching and
examination of patent applications and the dissemination of
the technical information contained therein. The PCT does
not provide for the grant of “international patents”. The
task and responsibility for granting patents remain
exclusively in the hands of the patent Offices of, or acting
for, the countries where protection is sought (the “regional
Offices”). PCT is a special agreement under the Paris
Convention open only to states, which are also party to the
Paris Convention. The PCT does not compete with but, in
fact, complements the Paris convention.
Introduction:
On 7th September
1998, India deposited its instrument of accession to the PCT
and on 7th December 1998 thus became a member of the PCT, as
the 98th Contracting
State of PCT. Furthermore, nationals and residents of India
are entitled to file international applications for patents
under PCT at Receiving Office at Patent Office at Delhi.
Principal Objectives of the PCT
The principal objective of the PCT is to simplify and to
render more effective and more economical—in the interests
of the users of the patent system and the offices that have
responsibility for administering it—the previously
established means of applying in several countries for
patent protection for inventions. Before the introduction of
the PCT system, virtually the only means by which protection
of an invention could be obtained in several countries was
to file a separate application in each country; these
applications, each being dealt within isolation, involved
repetition of the work of the filing and examination in each
country.
To
achieve its objective, the PCT:
-
Establishes an international system which enables
the filing, with a single patent Office (the
“Receiving Office”), of a single application (the
“International Application”) in one language having
effect in each of the countries which are party to
the PCT which the applicant names (“designates”) in
his application;
Provides for the formal examination of the
International Application by a single patent Office,
the Receiving Office;
Subjects each International Application to an
international search which results in a report
citing the relevant prior art (mainly published
patent documents relating to previous inventions)
which may have to be taken into account in deciding
whether the invention is patentable; that report is
made available first to the applicant and is later
published;
Provides for centralized international publication
of International Applications with the related
international search reports, as well as their
communication to the designated Offices; and
Provides the option of an international preliminary
examination of the International Application, which
gives to the Offices, that has to decide whether or not
to grant a patent, and to the applicant, a report
containing an opinion as to whether the claimed
invention meets certain international criteria for
patentability. The procedure described in the preceding
paragraph, comparing it with the traditional procedure,
is illustrated by two timelines such as chapter I and
chapter II of PCT. It is commonly called the
“International Phase” to describe the first part of the
patenting procedure, whereas one speaks of the “National
Phase” to describe the last part of the patent granting
procedure which, as explained in paragraph above, which
is the task of the designated Offices, that is, the
national Offices of, or Regional offices acting for the
countries which have been designated in the
International Application. (In PCT terminology, a
reference to “national” Office, “national” phase and
“national” fees, includes the reference to the procedure
before a regional patent Office).
Under
the PCT system, by the time the International Application
reaches the national Office, it has already been searched by
the International Searching Authority and possibly examined
by an International Preliminary Examining Authority, thus
providing the national patent Offices with the important
benefit of reducing their work loads since they have the
benefit of these international phase procedures and thus
need not duplicate those efforts. Further objectives of the
PCT are to facilitate and accelerate access by industries
and other interested sectors to technical information
related to inventions and to assist developing countries on
gaining access to technology.
Functions of The Receiving Office
1. The
first step is that the Receiving Office receives the
International Application from the applicant. An application
for the same invention has to be filed six weeks or
necessary permission under section 39 should be taken before
the filing of International Application.
2. The
second step is that the Receiving Office checks the
International Application to determine whether it meets the
prescribed requirements as to form and content of
International Applications. This check is of a formal nature
only and does not go into the substance of the invention. It
therefore extends only to a certain number of rather
elementary requirements specified in the Treaty as forming
part of that check.
3. i)
The receiving Office shall accord as the international
filing date the date of receipt of the international
application, provided that that Office has found that in
order in accordance with Article 11, at the time of receipt:
ii) (a)
If the receiving Office finds that the international
application did not, at the time of receipt, fulfill the
requirements listed in paragraph (1), it shall, as provided
in the Regulations, invite the applicant to file the
required correction.
(b) If
the applicant complies with the invitation, as provided in
the Regulations, the receiving Office shall accord as the
international filing date the date of receipt of the
required correction.
4.
Receiving Office checks certain formal and physical
requirements (Article 14).
That
check by the Receiving Office may show that the
International Application does not meet certain requirements
as to form and content and that the fees are not, or not
fully, paid. In that case, the Receiving Office communicates
with the applicant in order to give him an opportunity to
correct any defect.
6. If
the language of filing of the International Application is
one acceptable by theReceiving Office but is not acceptable
by the International Searching Authority that is to carry
out the international search, the applicant is required to
furnish, within one month from the filing date of the
application, a translation into a language which is all of
the following: (i) a language accepted by the International
Searching Authority that is to carry out the international
search; (ii) a language of publication; and (iii) a language
accepted by the Receiving Office (unless the International
Application is filed in a language of publication). In cases
where the applicant fails to furnish, within the applicable
time limit, a translation for the purposes of international
search, the Receiving Office invites the applicant to
furnish the missing translation, in certain cases subject to
the payment of a late furnishing fee. A separate invitation
procedure is provided for the case where the request does
not comply with language requirements. Where the applicant
does not furnish the missing translation within the time
limit fixed in the invitation, the International application
will, subject to certain safeguards for the applicant, be
considered withdrawn and the Receiving Office will so
declare.
7. Not
all the requirements of the International Application are
required to be examined by the Receiving Office. For
instance, the Receiving Office does not deal with
substantive questions such as whether the disclosure of the
invention in the application is sufficient and whether the
requirement of unity of invention is complied with. It also
does not check all the many detailed physical requirements
of the International Application. Those requirements are
only checked to the extent that compliance with such
requirements is necessary for the purpose of reasonably
uniform international publication.
8.
Typical examples of defects, which may be corrected without
affecting the international filing date, are:
–
Non-payment or partial payment of fees;
– Lack
of signature of the request;
– Lack
of a title of the invention;
– Lack
of an abstract;
–
Physical defects.
9. As
stated, in all such cases lack of correction leads to the
application being considered withdrawn, except where a
physical defect would not prevent reasonably uniform
international publication and except for the payment of
fees. With regard to the later, Rule 16b provides that the
Receiving Office must invite the applicant to pay the
missing fees together with a late payment fee. If the
applicant still does not pay the fees within the time limit
fixed in the invitation, the Receiving Office will declare
that the International Application is being considered
withdrawn. This solution protects the applicant against any
loss of his application due to an erroneously delayed or
incomplete payment of fees.
10. The
third step in the procedure before the Receiving Office is
that it must transmit the “record
copy” of
the International Application to the International Bureau
and the “search
copy” to
the International Searching Authority. The Receiving Office
keeps a third copy, the “home
copy.” The
transmittals do not take place if and as long as national
prescriptions concerning national security apply. The
Receiving Office will then declare that national security
provisions prevent the International Application from being
treated as such.
11. The
Receiving Office must mail the record copy promptly to the
International Bureau and in any case not later than five
days prior to the expiration of the 13thmonth
from the priority date. In many cases, the International
Application claims the priority of an earlier national
application and is filed at the end of the 12-month priority
period; the Receiving Office has only a few weeks for its
processing tasks
12. The
search copy must be transmitted by the Receiving Office to
the International Searching Authority at the time of the
transmittal of the record copy to the International Bureau
except where the search fees has not been paid on time, in
which case the transmittal of the search copy takes place
after that fee has been paid.
13. If
an applicant who is a resident or national of a PCT
Contracting State; erroneously files his International
Application with a national office which acts as a Receiving
Office under the Treaty but which is not competent under
Rule 19.1 or 19.2, having regard to the applicant’s
residence and nationality, to receive that International
Application, or if an applicant files his International
Application with the competent Receiving Office in a
language which is not accepted by that Office under Rule
12.1(a) but is in a language accepted under that Rule by the
International Bureau as Receiving Office, the International
Application will be considered to have been received by the
national Office on behalf of the International Bureau as
Receiving Office on the date on which it was received by the
national Office, and will be promptly transmitted to the
International bureau as Receiving Office (unless such
transmittal is prevented by national security
prescriptions). The transmittal may be subjected by the
national Office to the payment of a fee equal to the
transmittal fee. All other fees already paid to that Office
will be refunded by that Office to the applicant and the
applicable fees will have to be paid to the International
bureau as Receiving Office
The
following conditions should be fulfilled for according an
international filing date:
The
applicant should be a resident or national of the
Contracting State for which the Receiving Office acts, and
has consequently the right to file with that Receiving
Office (note, however, that the International Application is
to be transmitted to the International Bureau as Receiving
Office under Rule 19.4(a)(i) if that condition is not
fulfilled);
(ii)
The International Application should be in the language, or
one of the languages, accepted by the Receiving Office for
the purpose of filing International Applications (note,
however, that the International Application is to be
transmitted to the International Bureau as Receiving Office
under Rule 19.4(a)(ii) if that condition is not fulfilled);
(iii)
The International Application should contain at least the
following elements: (a) an indication that it is intended to
be an International Application, (b) the designation of at
least one Contracting State(c) the name of the applicant in
a form allowing the applicant’s identity to be established,
(d) a part which on the face of it appears to be a claim or
claims.
(iv) If
one of these requirements is only complied with after
correction, the international filing date will be the date
on which the correction was received. In other words, in
these cases a defect, which is corrected later, affects the
international filing date. If all such defects are not
properly corrected, the application will not be treated as
an International Application.
(v) For
all the other cases, non-compliance with the formal
requirements does not affect the international filing date.
In other words, if the applicant corrects a defect in such
cases, the international filing date remains unchanged. If
the applicant does not correct, the defect properly, the
International Application will, however, be considered
withdrawn by the Receiving Office. Extension of the time
limit fixed by the Receiving Office for the correction of
defects under Article 14 may be requested.
Monitoring of time limits
Easy
supervision and monitoring of only a few time limits and
events is required by applicants, namely:
(i)
Monitoring the receipt of the confirmation of receipt of the
International Application by the Receiving Office;
(ii)
Monitoring the time limits for payment of fees;
(iii)
Checking the notification from the International Bureau
confirming the receipt of the International Bureau
confirming the receipt of the record copy (Form PCT/IB/301)
for correctness of the designations indicated on the Form
and if needed and confirm precautionary designations within
15 months from the priority date;]
(iv)
Deciding, after receipt of the international search report,
whether or not to file a demand for international
preliminary examination (which must be filed prior to the
expiration of 19 months from the priority date.
(v)
Deciding, after receipt of the international search report,
whether or not to file amended claims under Article 19,
within the applicable time limit; This will usually be
considered only if demand for international preliminary
examination is not filed;
(vi)
Monitoring the receipt, during the 19th month from the
priority date, of the notice from the International Bureau
(Form PCT/IB/308) that the publication of the International
Application and its communication to the designated Offices
(Article
20) has
been effected; (vii) entering the national phase before the
expiration of 30/31 months from the priority date by paying
the national fees and furnishing (if required) a translation
of the International Application.
Filing of the International Application:
a
) Request form (PCT/RO/101)
1.
International Application must be filed with any of the
receiving offices i.e. Patent office, Kolkata, New Delhi,
Mumbai, and Chennai(RO/IN) or International bureau (RO/IB)
of WIPO. The request form and the documents attached
therewith should be in triplicate.
2. The
International Application must contain a request, a
description, one or more claims, one or more drawings (where
required) and an abstract; it must comply with the
prescribed physical requirements; it must be in one of the
prescribed languages; finally, the required fees must be
paid. These requirements will be dealt with one by one.
3. The request may
be made on a printed form, copies of which can be obtained
free of charge from the Receiving Office or from the
International Bureau of WIPO. The request may also be
presented as a computer printout as prescribed by Section
102(h) of the Administrative Instructions or, alternatively,
as a computer printout prepared using the PCT-SAFE
(PCT-EASY) software, in which case it must be accompanied by
a computer diskette containing a copy in electronic form of
the data contained in the request and of the abstract.
Online application filing also is possible now.
4. The
request must first of all contain a petition, that is, a
request that the International Application be processed
according to the PCT. It must further contain the title of
the invention, the necessary data concerning the applicant,
the inventor and the agent representing the applicant. It
must be signed by the applicant or his agent. Where there
are two or more applicants, each applicant must sign at his
choice either the request or, if the request is signed by an
agent, a separate power of attorney.
5. The
request may contain some optional indications, in particular
a priority claim according to the Paris Convention for the
Protection of Industrial Property.
b)
Priority
1. Only
one certified copy is required of each priority of the
application and to be furnished within 6 months from the
filing date; no copies for each designated Office are
needed. The copies for the designated Offices are
prepared—at no additional cost to the applicant—by the
International Bureau.
2.
Transmittal of the priority document need not be monitored
if a request for transmittal by the Receiving Office to the
International Bureau of an application filed with that
Receiving Office was made in the Request Form and the
applicable fee for a priority document was paid to the
Receiving Office.
c)
Description
1. The description of
the invention in the International Application must disclose
the invention in a manner sufficiently clear and complete
for the invention to be carried out by a person skilled in
the art.
2. The
description first repeats the title of the invention. It
then specifies the technical field to which the invention
relates. It indicates the so-called “background art,” that
is, the technical and, in particular, patent literature,
pertaining to that technical field, constituting the “prior
art” or “state of the art” or known technology for the newly
filed application. It discloses the intention in a way,
which allows the technical problem and its solution to be
understood. It states the advantageous effects of the
invention as compared with the known technology. It briefly
describes the figures in the drawings. It sets forth the
best mode contemplated by the applicant for carrying out the
invention and any other mode he wants to include.
Finally, it indicates the way in which the invention is
capable of exploitation in industry.
d)
Sequence Listing: -
1.
Section 806 of PCT allows a designated Office to require
that a copy of a sequence listing part filed only on an
electronic medium under new Section 801 be furnished, for
the purposes of the national phase, on paper.
2. For
applicants who do not wish to file the sequence listing part
of their international applications under new Section 801,
the current provisions will continue to apply, including the
filing in written form only (under Rule 5.2) and the
concurrent or subsequent furnishing, as provided under PCT
Rule 13ter and Section 208, of the sequence listing parts in
computer readable from but only for the purposes of
international search and/or international preliminary
examination. In such cases the current system for
calculating the basic fee, on the basis of the total number
of sheets of the international application including the
sequence listing part, will continue to apply (see item 1(b)
of the Schedule of Fees).
3. It
is important to note that international application filed
under new section 801 may only be filed with receiving
Offices, which are prepared to accept them, and on such
electronic media as specified by the receiving Offices (for
further details pl. see PCT Applicant’s Guide).
e)
Claims:
1. The claims must
define the subject matter of the invention for which
protection is sought. They must be clear and concise and
fully supported by the description.
2. With
respect to the structure and drafting of claims, the PCT
requirements are largely similar to what is accepted in most
patent Offices.
f)
Drawings:
The drawings are
only required where they are necessary for the understanding
of the invention. This will be the case for an engineering
type of invention. It will not be the case when an invention
cannot be drawn, as is the case for a chemical product. Here
again, the requirements are similar to those of most patent
Offices.
g)
Abstract:
1. The abstract is
intended to serve the purpose of technical information. The
Treaty says clearly that it cannot be taken into account for
any other purpose. This means in particular that it cannot
be used for the purpose of interpreting the scope of the
protection sought.
2. The
abstract consists of a concise summary of the disclosure of
the invention as contained in the description, claims and
drawings in preferably within 50 to 150 words. It must be
drafted in a way, which allows the clear understanding of
the technical problem, the gist of the solution of that
problem through the invention, and the principal use of the
invention.
h
) Language of filing
1. The
International Application must be filed in the language,
or one of the languages, which the Receiving Office accepts
for that purpose (Rule 12.1(a)). If
the application is filed in any receiving office in India it
has to be either in English or Hindi.
Neither
the Treaty nor the Regulations enumerate the languages in
which International Applications may be filed. Whether a
given language can be used depends on the readiness of the
Receiving Office to accept International Applications in
that language. Each Receiving Office must, however, accept
at least one language for the filing of International
Applications which is both a language accepted by the
International Searching Authority or, if applicable, by at
least one International Searching Authority, competent for
the international searching of International Applications
filed with that Receiving Office and one of the languages of
publication (that is, Chinese, English, French, German,
Japanese, Spanish or Russian), so that applicants always
have the option of filing the international search or
international publication purposes; in other words, either
words, either the International Application in its original
language or the translation will be sufficient for the
processing by the Receiving Office, for international search
and for international publication.
2. If
the language of filing of the International Application is
the one acceptable by the Receiving Office but is not
accepted by the International Searching Authority, the
applicant is required to furnish, within one month from the
date of receipt of the application, a translation into a
language which is all of the following: (i) a language
accepted by the International Searching Authority that is to
carry out the international search; (ii) a language of
publication; and (iii) a language accepted by the Receiving
Office (unless the International Application is filed in a
language of publication) (Rule 12.3).
3. If
the language of filing of the International Application is
accepted by the Receiving Office and the International
Searching Authority but is not a language of publication (at
present, this is the case only where the International
Application is filed in Dutch and certain Nordic languages),
the International Application will be published in English,
the translation into that language being prepared under the
responsibility of the International Searching Authority
which undertakes the search (see Rule 48.3).
4. The
request must always be filed in a language that is accepted
by the Receiving Office and which is also one of the seven
languages of publication
International Search.
A high
quality international search report is established by the
International Searching Authority. For the purpose of Indian
applicant following are Competent International Searching
Authorities( ISAs)
Austrian Patent Office (AT)
Australian Patent Office (AU)
European Patent Office (EP)
China Intellectual Property Office (CN)
United States Patent & Trademark Office (US)
Swedish Patent Office (SE)
2. If
the International Application did not claim any priority,
the international search report is available within nine
months from the international filing date, If priority is
claimed, that report is available usually during the 16th
month from the priority date. Even where priority is
claimed, the international search report is normally
available in time before publication of the International
Application. This allows time for the applicant to withdraw
the application before publication, if desired.
PCT FEES (may vary from time to time)
Receiving Office (RO/IN) (The Patent Office, Kolkata, New
Delhi, Mumbai and Chennai)
Transmittal fee: INR 2,000 [for individual(s)] , INR 8,000
[for legal entity]
ii.
International Fee: USD 1134* USD 1211 (from 1-3-2005)
iii.
Supplement per sheet in excess of 30: USD 12* USD 13 (from
1-3-2005)
(*
Amounts on 1 February 2005 unless otherwise indicated).
iv.
Search fee: (Amounts on 1 February 2005, unless otherwise
indicated)
ISA/AT
– USD 182 USD 214**
ISA/EP
– USD 1920** USD 2,075*
ISA/AU
– USD 865
ISA/CN
– USD 181
ISA/US
– USD 1000 USD 300***
ISA/SE
– USD 1920 USD 2,075*
vi. Fee
for preparing certified copy of priority document and
transmission of the same to IB
INR
1,000 [for individual(s)] INR 4000 [for legal entity]
(* from
15-3-2005,
** from
1-3-2005)
Failure
to pay fees or underpayment of fees can be corrected under
Rule 16b. An invitation to pay missing amounts will be
issued by the Receiving Office. Payment can be made later,
together with a late payment fee.
(*** --
Refer PCT Fee Tables [Footnotes to Fee Tables Para.18])
An
Indian applicant, filing an International Application for
Patent under Patent Cooperation Treaty, is required to remit
the consolidated amount in US Dollar by Demand Draft,
payable to the Controller of Patents at State Bank of India,
New York Branch, for payment towards basic fee, designation
fee and search fee.The required fees, which must be paid to
receiving office, are the Transmittal Fee, the International
Fee and the Search Fee. They must all be paid to the
Receiving Office.
The
Transmittal Fee is for the benefit the Receiving Office. It
is intended to compensate that Office for the work, which is
required to be performed in connection with the
International Application. The amount is left to be fixed by
the Receiving Office. It is due within one month from the
date of receipt of the International Application. The
International Fee is for the benefit of the International
Bureau. It is intended to cover the cost of the work the
International Bureau must perform under the PCT. The amounts
are fixed in the Schedule of Fees, which forms part of the
regulations. The international fee is due within one month
from the date of receipt of the International Application.
The Search Fee is for the benefit of the International
Searching Authority. It is intended to compensate that
Authority for the work it must perform in connection with
the establishment of the international search report. It is
due within one month from the date of receipt of the
International Application. The amount is fixed by the
International Searching Authority.
Withdrawal of the application
An
International Application can be withdrawn at any time
during the international phase. Where the intent of the
withdrawal is to prevent publication, the notice of
withdrawal must reach the International Bureau before
technical preparations for international publication have
been completed (that is, not later than 15 days before the
date of publication).
2. A
withdrawal of an International Application can be made with
the condition that the withdrawal be effective only if the
international publication can still be prevented.
Amendments:
1.The
claims can be adjusted to the results of the international
search report by amending them once (under Article 19) with
effect in all designated States. Such amendments save costs
for preparation of different sets of amendments and for
local agents filing such amendments before designated
Offices, and guarantee better provisional protection and
patents in registration countries. Individual amendments
before each designated Office are also permitted in the
national phase (under Article 28 or 41) and all parts of the
application can be amended (under Article 34(2)) during the
international preliminary examination procedure under
Chapter II.
International Preliminary Examination (Optional)
The
following are Competent International Preliminary Examining
Authorities [IPEAs] for the purpose of Indian applicant:]
Austrian Patent Office (AT)
Australian Patent Office (AU)
European Patent Office (EP)(only if ISA was AT, EP or SE)
China
Intellectual Property Office (CN)
United
States Patent & trademark office (US)
Swedish
patent Office (SE)
2. The
use of International Preliminary Examination
(i) Is
optional for the applicant;
(ii)
Provides, in addition to the international search report, an
international preliminary Examination report containing an
opinion on the usual criteria of patentability before
expenses are incurred for the national phase (for
translation, fees and foreign agents);
(iii)
Helps the applicant to adapt the International Application
to the results of the international search report;
(iv)
Allows, with effect for all elected Offices, the amending of
all parts of the International Application (description,
claims and drawings) during international preliminary
examination;
(v) The
international preliminary examination report gives, for
minimal cost, an opinion and the probability of obtaining a
patent:
(viii)
The application will be more or less ready for acceptance by
the elected Offices after receiving international
preliminary examination report.
(ix) If
the report is negative and it is decided to abandon the
application, the applicant has saved all the expenses
otherwise incurred before the elected Offices for the
payment of national fees, the preparation of translations
and the appointment of local agents.
Preliminary examination fees (Amounts on 1 February 2005
unless otherwise indicated)
IPEA Preliminary examination fee Handling fee (CHF 200)
AT
EUR 159 EUR 129
AU
AUD 550
1000** AUD 218
CN CNY 1,500 CNY eq CHF 200
EP
EUR 1,530 EUR 129
SE
SEK 5,000 SEK 1,160
US
USD 600 USD 162
173 (From 1-3-2005)
(** Refer
PCT Fee Tables (footnotes to Fee Tables para.20.)
The National Phase
1) The
national phase follows the international phase. In the
national Phase before processing and examination in the
designated or elected Offices, the applicant must perform
certain acts thereby effecting “entry into the national
phase.” If the applicant does not enter the national phase,
namely, if he does not perform these acts within the
prescribed time limit, the International Application loses
its effect in the designated or elected States concerned
with the same consequences as the withdrawal of any national
application in that State (Article 24).
2. For
entry into the national phase before a designated or elected
Office (if Preliminary examination is undertaken and
countries elected), it is necessary that the national fee be
paid to it and, where the International Application has not
been filed or published in the official language, or one of
the official languages of that Office, a translation into an
official language be filed. The time limits for entry into
the national phase are, in some Offices, even longer than 31
months.
3. The
national fees to be paid are usually same as the fees
required for the filing of a national or regional
application. Some Offices, not in India however, levy lower
national or regional filing, search or examination fees, or
refund certain fees, on account of the existence of the
international search report or where an international
preliminary examination report has been established. This
offsets, at least partly, the costs of filing an
International Application.
4.
Where the original drawings are of a good quality, the
applicant is not required to file additional formal drawings
with the Designated or Elected Offices, permitting
substantial economies in some cases. It is therefore
important to file drawings with the Receiving Office that
fully comply with the format requirements of the Regulations
under the PCT.
5.
Where the priority of an earlier application is claimed and
a certified copy of that application has been provided, it
is not necessary to submit a certified copy of the priority
document to each designated or elected Office. The
International Bureau sends any required copies of the
priority document to the Offices concerned.
Legal Remedies; Protection against Loss of Rights
Where,
as a result of a mistake which was not timely corrected, an
International Application is considered withdrawn, the
applicant may request review of that decision by each of the
designated Offices. In addition to requesting review, the
applicant has the opportunity to submit at the same time, to
each designated Office, a request for excuse of failure to
comply with a time limit. The legal basis of, and the
conditions for, such a request are to be found in the
applicable national law or regional convention, which
applies equally to International Applications. Where that
law or convention provides for reinstatement, this can be
requested. Where there is a possibility of requesting
further processing of the application, this can also be
done. Procedural safeguards are thus available in each
designated State to PCT applicants in the same way, as they
are to applicants for national or regional applications not
made via the PCT.
Preparation of Patent Applications
1. Any
patent application, drafted in accordance with the
requirements of the PCT, allows a maximum flexibility and
benefit from the advantages of the PCT:
(i) The
same application documents can then be used for filing
national and/or SJinternational applicants;
(II) No
adaptation of the original application is then required in a
much as the PCT format is valid for all designated Offices
(including the EPO, the Japanese Patent Office and the
United States Patent and Trademark Office).
Fee savings. National
fees are reduced or completely dispensed with for the
procedure before some Offices which provides considerable
savings, for example:
European Patent Office (EPO): –
European search fee waived if international search report by
AT, EP, ES, SE; 20%
reduction of European search fee if search report by AU, CN,
JP, RU, US; – 50%
reduction of European examination fee if international
preliminary examination report by EP.
German Patent Office:
–
Filing fee waived if the Office was the Receiving Office;
–
Examination fee reduced if an international search report
has been established.
Hungarian Patent Office:
–
Filing fee waived if the Office was the Receiving Office;
Japanese Patent Office:
–
Approximately 80% reduction of examination fee if
international search report established by JPO;
–
Approximately 20% reduction of examination fee if
international search report established by ISA other than
JPO.
United Kingdom Patent Office:
refund of part of preliminary examination and search fee.
Patent law firms delhi india attor