WELCOME TO ALL PARTICIPANTS BY A.T.PATRE. ASSTT. CONTROLLER OF PATENTS & DESIGNS PATENT OFFICE, MUMBAI.

INTRODUCTION TO THE PATENT COOPERATION TREATY (PCT) INTRODUCTION TO THE PATENT COOPERATION TREATY (PCT)

I MPORTANT TO KNOW PATENT A TERRITORIAL RIGHT: Patent right is enforceable only in the country of issue. PATENT A TERRITORIAL RIGHT: Patent right is enforceable only in the country of issue. DESIGNATION: Selection of the Country in PCT request form where the applicant want to obtain the Patent DESIGNATION: Selection of the Country in PCT request form where the applicant want to obtain the Patent ELECTION: Selection of the Country out of designated countries in PCT prelim. examn. form request form where the applicant want to obtain the Patent ELECTION: Selection of the Country out of designated countries in PCT prelim. examn. form request form where the applicant want to obtain the Patent SEARCH: An important part of the Patent application examn. to check whether the invention is novel or not. SEARCH: An important part of the Patent application examn. to check whether the invention is novel or not. PRIORITY DATE: the date of disclosure of the invetion, the protection for invention starts from P.D. PRIORITY DATE: the date of disclosure of the invetion, the protection for invention starts from P.D. INT. FILING DATE: the date of filing an international application & it is the priority date for the invention & also the date of Patent for the designated countries INT. FILING DATE: the date of filing an international application & it is the priority date for the invention & also the date of Patent for the designated countries

ROUTES TO FILE A PATENT APPLICATION ROUTES TO FILE A PATENT APPLICATION TRADITIONAL ROUTE TRADITIONAL ROUTE THE PATENT COOPERATION TREATY ROUTE THE PATENT COOPERATION TREATY ROUTE

TRADITIONAL PATENT SYSTEMS

TRADITIONAL PATENT SYSTEM REQUIRES TRADITIONAL PATENT SYSTEM REQUIRES FOR APPLICANTS: Expenses for -translations -patent attorneys -payment of fees for each Patent Office all at a time Often without knowing whether he is likely to obtain a patent FOR APPLICANTS: Expenses for -translations -patent attorneys -payment of fees for each Patent Office all at a time Often without knowing whether he is likely to obtain a patent FOR EACH PATENT OFFICE: -formal examination -search -substantive examination

THE PCT ( the Patent Cooperation treaty) THE PCT ( the Patent Cooperation treaty) Adopted in 1970 in Washington Adopted in 1970 in Washington Entered into force on Entered into force on Became operational on with 18 contracting states Became operational on with 18 contracting states As on today total 128 states are the member As on today total 128 states are the member India joined PCT on India joined PCT on THE PCT IS AN AGREEMENT FOR INTERNATIONAL COOPERATION IN THE FIELD OF PATENTS. THE PCT IS AN AGREEMENT FOR INTERNATIONAL COOPERATION IN THE FIELD OF PATENTS. IT IS A TREATY FOR RATIONALISATIONS AND COOPERATION WITH REGARD TO THE FILING, SEARCHING & EXAMINATION OF PATENT APPLICATIONS AND THE DISSEMINATION OF THE TECHNICAL INFORMATION CONTAINED THEREIN. IT IS A TREATY FOR RATIONALISATIONS AND COOPERATION WITH REGARD TO THE FILING, SEARCHING & EXAMINATION OF PATENT APPLICATIONS AND THE DISSEMINATION OF THE TECHNICAL INFORMATION CONTAINED THEREIN. The PCT is administered by IB, WIPO, Geneva, Switzerland The PCT is administered by IB, WIPO, Geneva, Switzerland

ESTABLISING an international system which enables: Filing single application (the international application ) Filing single application (the international application With a single patent office (the receiving office) In one language having effect in each contracting state (the designated office) One formal EXAMINATION ( by the receiving office ) One search ( by the international searching authority ) One international publication (by the IB of WIPO ) One optional preliminary EXAMINATION ( by the international preliminary examining authority) PCT ESTABLISHES PCT ESTABLISHES an international system which enables: an international system which enables:

LIMITATION OF THE PCT SYSTEM LIMITATION OF THE PCT SYSTEM PROVIDES PROTECTION FOR INVENTIONS BY APPLYING FOR PATENTS DESIGN & TRADEMARK PROTECTION CANNOT BE OBTAINED VIA PCT

PCT SYSTEM CONSISTS OF : PCT SYSTEM CONSISTS OF : 1. AN INTERNATIONAL PHASE, COMPRISING : (30/31 MONTHS LONG) * FILING OF INTERNATIONAL APPLICATION * * INTERNATIONAL SEARCH *** INTERNATIONAL PUBLICATION **** INTERNATIONAL PRELIMINARY EXAMINATION (optional) 2. A NATIONAL / REGIONAL PHASE,BEFORE: * DESIGNATED OFFICE ** ELECTED OFFICE.

IN PCT SYSTEM IN PCT SYSTEM NO PATENT IS GRANTED DURING THE INTERNATIONAL PHASE. NO PATENT IS GRANTED DURING THE INTERNATIONAL PHASE. THE PATENTS ARE GRANTED IN THE NATIONAL PHASE BY THE NATIONAL PATENT OFFICES WHICH IS ENFORCEABLE IN THAT COUNTRY ONLY. THE PATENTS ARE GRANTED IN THE NATIONAL PHASE BY THE NATIONAL PATENT OFFICES WHICH IS ENFORCEABLE IN THAT COUNTRY ONLY. THERE IS NO PCT PATENT THERE IS NO PCT PATENT

PCT TIMELINE-A (before ) PCT TIMELINE-A (before ) 30/31 FILE INTERNATIONAL APPLICATION INT. SEARCH REPORT FILING REQUEST FOR PRELIM EXAMN. INT. PUBLICATION PRELIM EXAMN REPORT ENTRY IN NATIONAL PHASE Ch II MONTHS FILE APPLICATION LOCALLY NON PCT APPLICATION 30/31 ENTRY IN N.P.Ch I NO REQUEST FOR EXAMN.

PCT TIMELINE-B (before ) PCT TIMELINE-B (before ) 30/31 INTERNATIONAL SEARCH REPORT FILING REQUEST FOR PRELIM EXAMN. INT. PUBLICATION PRELIM EXAMN REPORT ENTRY IN NATIONAL PHASE Ch II MONTHS FILE INTERNATIONAL APPLICATION 30/31 ENTRY IN N.P.Ch I NO REQUEST FOR EXAMN.

IA filed 1st written IPE opinion = ISA opinion (unless IPEA has declared otherwise) IPE procedure IPRP (Chapter II) to EOs IPRP (Chapter II) publicly available (on request of EO) Art. 19amdts No demand filed Applicant comments on ISA opinion to IB IPRP(Chapter I) (+ any comments) to DOs IPRP (Chapter I) (+ any comments) publicly available National phase entry Int’l publication: IA + ISR (+ Art. 19 amendments) National phase entry 0-12mths later of: WO of ISA+3 or 22 * 30 ISR ISA opinion on patentability criteria Chapter I Chapter II International preliminary report onpatentabilityby ISA (IPRP) (Chapter I of the PCT) (informal procedure) * must in practice file demand by 19 months for Article 22 transitional reservation countries (+ Art. 34 arguments, amendments) Demand (if no IPER established) International preliminary report onpatentabilityby IPEA (IPRP) (Chapter II of the PCT) (= IPER) EISPE system

COMPETENT RECEIVING OFFICE (Article 10, Rule 19) THE PATENT OFFICE CALCUTTA & ITS BRANCH OFFICES AT MUMBAI, CHENNAI,NEW DELHI (RO/IN) & INTERNATIONAL BUREAU (RO/IB)

LANGUAGE OF FILING (Rule 12) LANGUAGE OF FILING (Rule 12) RO/IN--ENGLISH OR HINDI RO/IB--ANY LANGUAG

ELEMENTS TO ACCOMPANY THE INTERNATIONAL APPLICATION ELEMENTS TO ACCOMPANY THE INTERNATIONAL APPLICATION REQUST(PCT/RO/101)--Article 4 REQUST(PCT/RO/101)--Article 4 DESCRIPTION --Article 5 DESCRIPTION --Article 5 ONE OR MORE CLAIMS -- Article 6 ONE OR MORE CLAIMS -- Article 6 ABSTRACT --Rule 8 ABSTRACT --Rule 8 DRAWING (where applicable) --Article 7 DRAWING (where applicable) --Article 7 FEES --Rules 14,15&16 FEES --Rules 14,15&16 PA/GPA(where applicable) --Rule 90 (not necessary as per pct amendment ) PA/GPA(where applicable) --Rule 90 (not necessary as per pct amendment )

NO.OF COPIES REQUIRED [Rule 11.1(b)] NO.OF COPIES REQUIRED [Rule 11.1(b)] RO/IN-- * FOUR COPIES OF EACH OF REQUEST,DESCRIPTION, CLAIMS,DRAWINGS & ABSTRACT IF FILED AT POB,Mumbai, Chennai,NewDelhi * THREE COPIES OF EACH DOCUMENT AS MENTIONED ABOVE IF FILED IN P.O., CALCUTTA RO/IB--ONE

THE REQUEST (Article 4, Rule 3) THE REQUEST (Article 4, Rule 3) Printed request form (PCT/RO/101) * may be obtained free of charge: from RO/IN or from RO/IB * available on internet ( Printed request form (PCT/RO/101) * may be obtained free of charge: from RO/IN or from RO/IB * available on internet ( FROM PCT EASY SOFTWARE DOWNLOADED FREE OF COFT FROM site FROM PCT EASY SOFTWARE DOWNLOADED FREE OF COFT FROM site Computer- generated request * layout and contents must be same as the printed form * slight adjustments are permitted * any text printed in italics may be omitted Computer- generated request * layout and contents must be same as the printed form * slight adjustments are permitted * any text printed in italics may be omitted

FUNCTION OF RECEIVING OFFICE FUNCTION OF RECEIVING OFFICE – RECEIVING INTERNATIONAL APPLICATION FOR PATENT UNDER PCT INTERNATIONAL APPLICATION FOR PATENT UNDER PCT ACCORDING INT. FILING NO. & DATE ACCORDING INT. FILING NO. & DATE PROCESSING/ CHECKING OF ESSENTIAL REQUIREMENTS WHICH AFFECTS THE I.F.D. PROCESSING/ CHECKING OF ESSENTIAL REQUIREMENTS WHICH AFFECTS THE I.F.D. AND OF OTHER FORMAL & PHYSICAL REQUIREMENT AND OF OTHER FORMAL & PHYSICAL REQUIREMENT of SAID APPLICATION of SAID APPLICATION --TRANSMITTING * RECORD COPY TO IB **SEARCH COPY TO ISA, (CHOOSEN BY APPLICANT ) ***APPLICABLE FEES TO APPROPRIATE AUTHORITY --TRANSMITTING * RECORD COPY TO IB **SEARCH COPY TO ISA, (CHOOSEN BY APPLICANT ) ***APPLICABLE FEES TO APPROPRIATE AUTHORITY R.O. DOES NOT PERFORM SUBSTANTIVE EXAMINATION R.O. DOES NOT PERFORM SUBSTANTIVE EXAMINATION

CONDITIONS FOR ACCORDING CONDITIONS FOR ACCORDING INTERNATIONAL FILING DATE: INTERNATIONAL FILING DATE: ARTICLE 11 ARTICLE 11 i) Applicant –resident or national of India ii) Application –in English or Hindi iii) Elements to accompany the application, a) a request b) applicant’s name & address c) description d) one or more claim(s) i) Applicant –resident or national of India ii) Application –in English or Hindi iii) Elements to accompany the application, a) a request b) applicant’s name & address c) description d) one or more claim(s) e) Designation of atleast one PCT e) Designation of atleast one PCT contracting state (designation to all pct contracting states are automatic now as per pct amendment) contracting state (designation to all pct contracting states are automatic now as per pct amendment)

Physical requirements of international application (Rule 11) A4 size paper for all sheet A4 size paper for all sheet Line spacing: 1.5 cms for pages of text in description, claim & abstract Line spacing: 1.5 cms for pages of text in description, claim & abstract Minimum & maximum margins for the sheets and drawing as explained in the next slide Minimum & maximum margins for the sheets and drawing as explained in the next slide Drawings: should not contain text matter in the drawings, so as to avoid problem of translation for national phase Drawings: should not contain text matter in the drawings, so as to avoid problem of translation for national phase

Margin requirements for text (Rule 11) Margin requirements for text (Rule 11)

Margin requirements for drawing Margin requirements for drawing

NATIONAL SECURITY MATTERS (Rule 22 & Section 330 of A.I.under PCT) NATIONAL SECURITY MATTERS (Rule 22 & Section 330 of A.I.under PCT) AT THE PATENT OFFICE, CALCUTTA ALL INTERNATIONAL APPLICATION FOR PATENT ARE REFERRED TO THE EXPERT COMMITTEE FOR REVIEW OF NATIONAL SECURITY MATTERS, AND IF NATIONAL SECURITY CLEARANCE IS REFUSED OR IS NOT OBTAINED THE SAME IS NOTIFIED TO THE APPLICANT & IB OF WIPO

PCT FEES TO RECEIVING OFFICE (THE PATENT OFFICE,CALCUTTA & ITS BRANCH OFFICES AT NEW DELHI, MUMBAI,CHENNAI) 1. Transmittal fee : INR 2,000--for natural person INR 8,000--for legal entity 2. International filing fees : Basic & designation fees combined to form international (30sheets) :filing fees - USD 1102.All states designated. 3. Supplement per sheet excess of 30 : USD 12 * 4. Search fee : ISA/AT -- USD 262 ISA/EP -- USD 1877* ISA/AU -- USD 942 ISA/CN -- USD 181 ISA/US -- USD 1000 ISA/SE -- USD Fee for preparing of certified copy of priority document and transmission the same to IB : INR 1,000--for natural person INR 4,000--for legal entity 6. PCT EASY reduction --- USD * 75% REDUCTION IN FEES FOR NATURAL PERSON FROM INDIA { Rule 14,15,16& 96 }

INTERNATIONAL PRELIMINARY EXAMINATION FEES * 75% FEE REDUCTION FOR NATURAL PERSON INTERNATIONAL PRELIMINARY EXAMINATION FEES * 75% FEE REDUCTION FOR NATURAL PERSON IPEA FEES OF IPEA HANDLING FEE AT EUR 200 EUR 129 AU AUD 550 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 157

MODE OF PAYMENT IN USD MODE OF PAYMENT IN USD TO FECILITATE THE PAYMENT IN USD, AN ACCOUNT HAS BEEN OPENED BY RO/IN WITH SBI, NEW YORK BRANCH ASSIGNING A/C NO INDIAN APPLICANT, FILING INTERNATIONAL APPLICATION FOR PATENT UNDER PCT, TO REMIT THE CONSOLIDATED AMOUNT IN USD BY D.D. PAYBLE TO THE CONTROLLER OF PATENTS AT SBI, NEW YORK BRANCH FOR PAYMENT TOWARDS BASIC FEE, DESIGNATION FEE & SEARCH FEE

COMPETENT INTERNATIONAL SEARCHING & EXAMINING AUTHORITIES (ISAs) (Article 16, Rule 35) COMPETENT INTERNATIONAL SEARCHING & EXAMINING AUTHORITIES (ISAs) (Article 16, Rule 35) AUSTRIAN PATENT OFFICE (AT) AUSTRIAN PATENT OFFICE (AT) AUSTRALIAN PATENT OFFICE(AU) AUSTRALIAN PATENT OFFICE(AU) EUROPEAN PATENT OFFICE ( EP) EUROPEAN PATENT OFFICE ( EP) CHINESE INTELLECTUAL CHINESE INTELLECTUAL PROPERTY OFFICE (CN) PROPERTY OFFICE (CN) UNITED STATES PATENT& UNITED STATES PATENT& TRADEMARK OFFICE (US) TRADEMARK OFFICE (US) SWEDISH PATENT OFFICE (SE) SWEDISH PATENT OFFICE (SE)

COMPETENT INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES (IPEAs) (Article 32, Rule 59) COMPETENT INTERNATIONAL PRELIMINARY EXAMINING AUTHORITIES (IPEAs) (Article 32, Rule 59) AUSTRIAN PATENT OFFICE (AT) AUSTRALIAN PATENT OFFICE (AU) EUROPEAN PATENT OFFICE ( EP) CHINESE INTELLECTUAL PROPERTY OFFICE (CN) UNITED STATES PATENT & TRADEMARK OFFICE (US) SWEDISH PATENT OFFICE (SE)

ENTRY INTO NATIONAL PHASE ENTRY INTO NATIONAL PHASE Entry in National Phase as later as 31 months from priority date by filing: Entry in National Phase as later as 31 months from priority date by filing: A request on form 1 or on a plain paper containing details of international application. A request on form 1 or on a plain paper containing details of international application. Pay National fees (for India 1000/4000.) Pay National fees (for India 1000/4000.) Proof of right to file if applicant is not inventor. Proof of right to file if applicant is not inventor. Information regarding foreign filing form 3. Information regarding foreign filing form 3. Declaration as to inventorship (form-5). Declaration as to inventorship (form-5). Copy of PCT pamphlet with international application & search report. Copy of PCT pamphlet with international application & search report. Copies of any amendments, preliminary examination report. Copies of any amendments, preliminary examination report. PA/GPA where applicable (Note :- The grant of Patent is governed National law) designated country. PA/GPA where applicable (Note :- The grant of Patent is governed National law) designated country.

STEPS FOR GRANT OF A PATENT THROUGH PCT ROUTE FILING OF AN INTERNATIONAL APPLICATION FILING OF AN INTERNATIONAL APPLICATION FORMAL EXAMN. BY R.O. FORMAL EXAMN. BY R.O. INT. SEARCH BY I.S.A. INT. SEARCH BY I.S.A. INT. PUBLICATION BY WIPO INT. PUBLICATION BY WIPO PRELIM. EXAMN. BY I.P.E.A.(OPTIONAL) PRELIM. EXAMN. BY I.P.E.A.(OPTIONAL) ENTRY INTO NATIONAL PHASE IN DESIGNATED COUNTRY ENTRY INTO NATIONAL PHASE IN DESIGNATED COUNTRY EXAMN. BY DESIGNATED COUNTRY OF PATENT APPLICATION AS PER THEIR OWN PATENT LAW EXAMN. BY DESIGNATED COUNTRY OF PATENT APPLICATION AS PER THEIR OWN PATENT LAW GRANT OF THE PATENT BY DESIGNATED COUNTRY GRANT OF THE PATENT BY DESIGNATED COUNTRY  Denotes international phase  Denotes National phase

BENEFITS OF PCT SYSTEM. Fast processing of applications for grant of Patent during National Phase. Fast processing of applications for grant of Patent during National Phase. Saving of time and money if search report by ISA is adverse by abandoning the application. Saving of time and money if search report by ISA is adverse by abandoning the application. Applicant gets 30/31 months for entry into National Phase. This time may be used to explore market values of his invention. Applicant gets 30/31 months for entry into National Phase. This time may be used to explore market values of his invention.

BENEFITS OF PCT SYSTEM. BENEFITS OF PCT SYSTEM. The application for the Patent in the designated office is deemed to have been filed on the date of International filing i.e 19 or 30/31 months prior to entry to N.P. The application for the Patent in the designated office is deemed to have been filed on the date of International filing i.e 19 or 30/31 months prior to entry to N.P. Language of filing does not affect the prority date if filed in the language accepted by R.O. Language of filing does not affect the prority date if filed in the language accepted by R.O. Some countries provide fees reductions in fees in National Phase when comes through PCT. Some countries provide fees reductions in fees in National Phase when comes through PCT. Priority documents need not to be filed in N.P by applicant the same is sent by the I.B., WIPO to the National Offices. Priority documents need not to be filed in N.P by applicant the same is sent by the I.B., WIPO to the National Offices. No need to draft different applications for different designated offices. International application serves for all. No need to draft different applications for different designated offices. International application serves for all.

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