India: Recent Developments In The Patent Cooperation Treaty (PCT) System

Last Updated: 1 May 2018
Article by Jyoti Chauhan

Introduction

The Patent Cooperation Treaty (PCT) system helps applicant seeking patent protection at the international level for their inventions. Such international application can be filed by anyone who is a member of PCT contracting state. It do also support patent offices in taking decisions related to  patent granting, and facilitates public access to technical information. By filing one international patent application under the PCT, applicants can simultaneously protect their patents in various countries.

Recent developments in the PCT system

Recently, there have been a few changes made to improve the PCT system. The changes are listed below:

a) PATENTSCOPE

User Interface has been updated for 2018 and advanced ePCT File view, ePCT Document routing and ePCT-Filing is now available to 55 receiving Offices (63 total PCT e-filing ROs)

PATENTSCOPE gives a user free access to over 67 million patent documents in addition to over 3.3 million PCT applications. It consists of the national patent data collections of several patent offices. PATENTSCOPE features a number of powerful tools, including cross-lingual and chemical compound search as well as machine translation.

Interface is now available in 10 languages. The 'Documents' tab includes the new section 'Search and Examination-Related Documents'. A new secure access system related to PATENTSCOPE is running via https. Cross-Lingual Information Retrieval (CLIR) (Cross-Lingual Expansion) is more developed allowing the search of a term/phrase and its variants in several languages. By entering the keyterm in one language, the system will suggest you all possible variants and will then translate the term(s), also facilitating the search of patent documents in other languages.

b) WIPO Pearl

A new feature called "WIPO Pearl" has now been added to the WIPO database which is an online terminology database used for searching multilingual contents. It is available in all 10 PCT languages. It helps to promote accurate use of key terms across various languages and also makes it easier to search and share scientific and technical knowledge. All the content under "WIPO Pearl" is validated by WIPO language experts and experienced terminologists.

c) Licensing availability

Applicants whoever is interested in executing licensing agreements in relation to their PCT application can intimate the International Bureau (IB) and request them to make this information available on PATENTSCOPE. Applicants should submit a "Licensing Availability Request" and fill form PCT/IB/382 and submit it to the IB using an ePCT "Action". Please note that this request can be made at the time of filing or within 30 months from the priority date. Applicants can file multiple licensing requests or update previously submitted ones (within 30 months from the priority date). The licensing indications will be then appeared on PATENTSCOPE under the "Bibliographic data" tab along with a link to the submitted licensing request.

WIPO GREEN, which has been revised now, is also a related platform that matches owners of environmentally sound technologies (ESTs) with technologies that are seeking licensing or partnership agreements.

d) Third Party Observations

Under this feature, third parties can submit their prior art observations relevant to 'novelty' and 'inventive step'. It is a Web-based system which uses ePCT or web-forms in PATENTSCOPE. Submissions are possible until the expiration date, which is 28 months from the priority date. Applicants may submit their comments in response to these observations until the expiration of 30 months from the priority date. This system makes observations available in PATENTSCOPE & it notifies the applicant of submission of observations.

e) PCT Direct

New services are being offered by the EPO and Israel Patent Office in which applicants can address their issues relating to patentability in the search opinion established for the priority application by the same office. Its aim is to improve the efficiency and quality of the procedure adopted by ISA. The informal comments are filed together with the application called "PCT Direct Letter".

f) WIPO Arbitration and Mediation Center (AMC) Fee Reductions

25% lifetime reduction is offered on AMC's registration and administration fees, wherein at least one party to the dispute has been named as an applicant or inventor in a published PCT application (no relationship to the dispute is required).

AMC is an independent body that offers alternative resolution options for commercial disputes between private parties. It gives time and cost efficient alternatives to litigation.

g) Time-limit for Supplementary search request

The deadline for requesting supplementary international search has been extended from 19 months to 22 months from the priority date (PCT Rule 45bis.1).

h) 90% fee reductions

Recently, an amendment was made to the PCT Schedule of Fees which clarifies an understanding that the 90% fee reductions in item 5 of the Schedule of Fees are intended only for persons filing an international application in their own right and not those filing an international application on behalf of a person or entity which is not eligible for the reduction.

i) Philippines as ISA/IPEA

Intellectual Property Office of the Philippines was appointed as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT.

j) j) New PCT Contracting State

There have been 152 States that have recently come under PCT Coverage. The recent additions into the list of contracting states are Jordan, Kuwait and Cambodia. Furthermore, nationals and residents of Jordan are entitled, as from 9 June 2017, to file international applications under the PCT.

Recent few important initiatives taken by the Indian Patent Office (IPO) to facilitate PCT filings

  1. Indian Patent Office (IPO) at 15th position in PCT filings- 3 million applications were published by February 2, 2017, out of which 711 PCT applications were filed by IN applicants. India is currently at the 15th position among top countries that do PCT filings.
  2. IPO as DAS- The Indian Patent Office (IPO) commenced operating as both, a Depositing and an Accessing office of DAS with effect from 31 January 2018. If the applicant has requested as a depositing Office, it will submit certified copies of patent applications and design applications as priority documents in DAS, including PCT applications filed at the Office on or after 31 January 2018. As an Accessing Office, it will recognize all the relevant priority documents available to it through DAS platform for the purposes of any application for which the time limit for submitting the priority document has not expired by 31 January 2018. Priority documents can be transmitted to IB through WIPODAS.
  3. Currency issue resolved-A new INR A/C has been opened in the name of CGPDTM at Central Bank of India FOREX division and the USD A/C in SBI Overseas bank has been closed now. The applicant can make payments directly through NEFT /RTGS towards IB fee and ISA and submit the UTR /Ref numbers via email to RO/IN. RO will prepare debit instructions to the bank and transmit the payment subsequently to IB and ISA. It will also intimate the same through e mail to all International authorities. Transmittal and Priority fee can also be paid through form 30 via the online payment portal.

Conclusion

There have been many developments on Patent Cooperation Treaty (PCT) System to facilitate PCT filings. The PCT portal has been revised to make it more user-friendly and the e-PCT filing system has been revised for smooth online filing of data.

There have been few important initiatives which were also taken by the Indian Patent Office (IPO) to facilitate PCT filings by Indian applicants. Since the Indian patent office (IPO) has reached the 15th position among top PCT filing countries, there has been a lot of focus on increasing the number of PCT patent applications in order to attain a higher position.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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