Steps to File an International Patent Application Under PCT

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO). It allows you to file a single international patent application that has the effect of a national application in all PCT member countries. You do not get a single "world patent" through the PCT; instead, you get a unified filing procedure that preserves your priority rights for up to 30 or 31 months from the earliest filing date before you must enter the national phase in each country where you seek protection.

The primary advantage of the PCT route is that it delays the significant costs of filing separate national patent applications, translations, and local agent fees. Instead of filing multiple applications immediately, you file one international application, receive an international search report and written opinion on patentability, and then decide which countries to pursue. This gives you time to assess the commercial value of your invention and secure funding or licensing partners. The PCT is governed by the Patent Cooperation Treaty and implemented in India through the Patents Act, 1970.

The process involves several distinct stages. Here are the steps to file an international patent application under PCT:

1. File a priority application (optional but recommended): Before filing the PCT application, you should first file a national patent application in your home country (e.g., with the Indian Patent Office). This establishes a priority date. You must file the PCT application within 12 months of this priority date.

2. Prepare your PCT application: Draft the international application, which includes a request form (PCT/RO/101), a description, claims, abstract, and drawings (if any). The application must be in English or another language accepted by the Receiving Office.

3. Choose your Receiving Office (RO): You can file the PCT application with the Indian Patent Office (which acts as a Receiving Office for Indian residents and nationals) or directly with the International Bureau of WIPO in Geneva.

4. Pay the fees: You must pay three sets of fees: the transmittal fee (to the Receiving Office), the international filing fee (to the International Bureau), and the search fee (to the International Searching Authority). For Indian applicants, the fees are significantly lower than in many other countries.

5. File the application: Submit the completed application and fees to your chosen Receiving Office. You can file electronically through WIPO's ePCT system or physically.

6. Receive the international filing date: The Receiving Office will check the application for compliance and assign an international filing date. This date is crucial as it establishes your priority right.

7. International search and written opinion: The International Searching Authority (ISA) will conduct a search of prior art and issue an International Search Report (ISR) and a written opinion on patentability. You receive this typically within 16 months from the priority date.

8. International publication: The International Bureau publishes your application and the ISR approximately 18 months from the priority date.

9. Optional: File a demand for preliminary examination: Within 22 months from the priority date, you may file a demand for international preliminary examination to obtain a more detailed opinion on patentability. This is optional but can strengthen your application.

10. Enter the national phase: Within 30 months (or 31 months for some countries) from the priority date, you must enter the national phase in each country where you want patent protection. This involves filing translations, paying national fees, and appointing local agents.

If you are an Indian resident or national, you have two options for filing your PCT application. First, you can file with the Indian Patent Office (IPO) as the Receiving Office. The IPO is located in Kolkata, with branch offices in Mumbai, Chennai, Delhi, and Ahmedabad. Second, you can file directly with the International Bureau of WIPO in Geneva. However, if you file directly with the International Bureau, you must still comply with Indian patent law requirements, including obtaining any necessary foreign filing permission.

For Indian applicants, the IPO is generally the more convenient and cost-effective option. The IPO charges lower transmittal fees compared to the International Bureau. Additionally, filing with the IPO ensures that your application is processed under Indian patent law, which may be advantageous if you plan to eventually file a national phase application in India. The IPO will also act as the Receiving Office and forward your application to the International Bureau and the International Searching Authority.

The fees for filing a PCT application from India are structured in three parts. First, the transmittal fee is payable to the Indian Patent Office. As of 2024, this fee is approximately INR 4,000 for individuals and small entities, and INR 8,000 for large entities. Second, the international filing fee is payable to the International Bureau of WIPO. This fee is approximately CHF 1,330 (Swiss Francs) for an application up to 30 pages, with an additional fee per page beyond 30. Third, the search fee is payable to the International Searching Authority. For Indian applicants, the ISA is typically the Indian Patent Office or the European Patent Office, and the fee ranges from approximately INR 15,000 to INR 50,000 depending on the ISA chosen.

You should note that these fees are subject to change and may vary based on exchange rates. Additionally, if you file a demand for international preliminary examination, you will need to pay a preliminary examination fee. The total cost for filing a PCT application from India, including all fees, is generally between INR 50,000 and INR 1,00,000 for a standard application. This is significantly less than filing separate national applications in multiple countries. You can check the current fee schedule on the WIPO website or the Indian Patent Office website.

After you receive the International Search Report (ISR) and Written Opinion from the International Searching Authority, you have several options. The ISR lists prior art documents that may affect the patentability of your invention, and the Written Opinion provides a preliminary, non-binding assessment of whether your invention meets the criteria of novelty, inventive step, and industrial applicability.

You can use this information to decide whether to proceed with the national phase. If the Written Opinion is favorable, you can proceed with confidence. If it identifies issues, you may amend your claims under Article 19 of the PCT within two months of the ISR's transmittal. You can also file a demand for international preliminary examination under Chapter II of the PCT within 22 months from the priority date. This results in an International Preliminary Report on Patentability (IPRP), which provides a more detailed and potentially more favorable assessment.

The ISR and Written Opinion are not binding on national patent offices. Each national office will conduct its own examination. However, they provide valuable guidance and can help you refine your patent strategy. If the ISR and Written Opinion are negative, you may decide to abandon the application and save the costs of national phase entry. If they are positive, you can proceed with greater certainty.

If you have an invention and are considering international protection, you should first file a priority application with the Indian Patent Office. Then, within 12 months, prepare and file your PCT application. Given the procedural complexities and strict deadlines, consult a qualified patent agent or attorney who can guide you through the process, draft the application correctly, and help you decide which countries to enter in the national phase.

---

This page provides preliminary information. It is not legal advice. For your matter, consult a qualified professional.