International Patent Filing: Everything You Need to Know

An Indian applicant can file an International application using Patent Cooperation and Paris cooperation treaty wherein a single application can save a date for your invention. Alternatively, the applicant has the option to file an individual application in separate countries as well.

A patent application is always jurisdictional and the protection provided is limited to the country in which you file your application.

What is International Patent Application?

There is no such thing as an international patent application, but the filing of the patent application in another country can be streamlined through following international agreements.

  1. Patent Cooperation Treaty
  2. Paris Convention
  3. Direct Method

The common way of filing a patent application internationally is through the Patent Corporation Treaty (PCT).

Patent Cooperation Treaty

PCT is a unified procedure for filing a patent application in the PCT approved nations. A PCT application is generally known as an International application among applicants. This way the applicant needs to file a single application in a standardised format.

Eligibility Criteria

The applicant must meet the following eligibility criterion:

  • The applicant must be national or resident of  PCT Contracting state
  • The applicant needs to translate the application in English, French, German, Korean, Portuguese, Russian or Spanish.

The application is generally filed 1 year after the corresponding application filed at the Receiving office, for Indian applicant the receiving office will be Indian Patent office.

The PCT Procedure

The PCT procedure begins with the International phase and ends with a grant of protection in a number of nations. The procedure mainly consists of two main phases.

1. International Phase

Once a patent application is filed under the patent cooperation treaty with the patent office, the priority date for the application is set. The applicant has to go through 5 stages in the international phase.

  • Filling and processing of the application by the Receiving Office(RO).
  • International search report and opinion of the authority based on the search report.
  • Publication of the international patent application and the search report by WIPO
  • Establishing a supplementary international search report carried out by International search authority(ISA)
  • Based on the search report the designated office may communicate with the regional office about the international patentability report.
Note: Last 2 stages in international phase are optional

2. National Phase

Once the international phase is completed the applicant needs to take action before every national office where he desires to file an application. The national stage application is to be filed with the patent office of each designated country before the expiry of 30 months from the date of the first filed application.

Keep in mind: the countries selected must be one from the list of country that the applicant has previously designated in his demand

Paris Convention Treaty

The Paris convention treaty established the right of priority for patent applicants based on the first application filed with the contracting states. The applicant as per the treaty has a 12 month time period to submit the application in the regional office of every country they seek protection.

For Indian Applicants

Indian applicant can file a convention application with the Indian patent office and within 12 months, can file an application with the countries they want to secure a patent claiming the date of the first filed application.

For Foreign Applicants

As India is a signatory of Paris Convention treaty, foreign applicants can claim priority of already filed application in other convention states.

International Patent Application Validity

The validity of patent application remains 20 years from the date the first application was filed with the patent office. Irrespective of the type of application (Provisional or Non-provisional) the validity remains same.

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