If you are an Indian resident and your invention or your novel product is catered to markets of multiple countries or if you are thinking to expand your business overseas, then it is highly recommended to file patent application internationally in all those countries to show the monopoly over the invention. I am often asked these common set of questions by most of our clients who want to file patent application outside India. Here in this article, I have tried to answer most common questions you will have when you are planning to file an international application.
By filing an international application, will I get the protection all over the world?
First, it is probably worth explaining that there is no such thing as an international patent. To prevent competitors from making, using and selling the patented invention in other countries, the inventor needs to independently file a separate patent application in each country where patent protection is desired. It is necessary to seek patent protection in each country because individual countries issue patents. There are few international processes (such as PCT and Paris convention treaty) that are convenient in allowing inventors to start down the road toward patent protection in any number of countries.
How will I file a patent application in multiple countries?
Typically, when foreign patent protection is required, the inventor needs to file a “PCT or Convention” patent application after six weeks and within one year from the filing date of Indian application. Yes, it is mandatory to file in India first if you are an Indian resident, then after six weeks you may file PCT application or Convention application based on your requirements. In a specific scenario, let’s consider a condition where you think the your is not suitable for Indian market and has huge demand outside India, in that case you have get something called Foreign filing license from Indian government to file outside India directly without actually filing in India first.
Further, not to forget, there are few countries which don’t come under PCT or Paris Convention but again these countries don’t have any patent laws at all.
1. What is a PCT application and how does it work?
Patent Cooperation Treaty, or the PCT as it is typically referred to, came into existence in 1970. The Treaty, which like any other Treaty is a legal agreement entered into between various countries. The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries. By filing through the PCT process you can embark on the path to seek patent protection for an invention simultaneously in 152 countries that are members to the Treaty.
As it is already mentioned, one has to file PCT application within one year from the filing date of Indian application. Once the PCT patent application is filed, the inventor has up to 30/31 months from the Indian application filing date to enter into any desired PCT-member countries. Once the patent application is entered PCT member countries, the application is now treated as nation phase application, and then each of the selected countries will do their own independent review of the national phase application for granting.
2. What is a convention application and how does it work?
Convention application refers to a patent application filed in accordance with the terms of another international patent treaty called Paris convention Treaty. The Paris convention treaty is an international agreement for filing patent applications, where an application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries. The Treaty protects an inventor of 177 member countries by ensuring priority for his/her inventions over all or any inventor from non-member countries.
In order to get convention status, an applicant should file the application in the convention country (i,e., the country which is the part of the Treaty) Office after six weeks and within 12 months from the date of first filing of a similar application in India. Filing a convention application is pretty straight forward, unlike PCT, the convention application is filed directly in the convention country and the each of the convention country will do their own independent review of the application for granting.
Why do most people prefer filing a PCT application over a convention application?
Well there are few major advantages of filing a PCT application over convention application, importantly,
- A single application can be filed in the applicant’s home country, in the local language.
- It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.
- The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.
- Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.
Having said that, it is important to consider that there are certain advantages of filing a convention application also, most importantly, convention application offers a faster grant of the patent. The sooner an application is filed in an individual country, the sooner it can be examined. These direct filings can often proceed to grant significantly faster than those going by the PCT route. Also, the convention application provides you a wider coverage as the number of countries under Paris convention treaty is higher than PCT. So, it all narrows down to the fact that, based on the inventor needs and requirements, he/she may choose which one to opt for.
How do I decide which all countries to file in? Is there any specific logic?
This is completely based on your initial market research and the product/invention type and ya there is no hard and fast rule for this. Typically there are set of countries where maximum market opportunity exists for any innovation and you are likely to want to pursue protection in those countries where the economy is well developed to provide the most economic potential. With some inventions, there are many countries that are capable of supporting a market, which sometimes is the main reason for people to want to apply for patents in those set of countries.
Also, before filing a patent application in a specific country, it is important to check whether your invention has the Patentable subject matter that is susceptible of patent protection in that particular country. The patent law of every country has a list of exemptions that cannot be patented. For example, in India, section 3 of patent act quotes multiple things which are not considered as inventions, out of which software per se, a method of agriculture or horticulture, topography of integrated circuits are few things which do not qualify as inventions. Contrarily, in US, software related inventions are patentable but the only condition is that the application should not be abstract.
Hence it is very important to do the market research before you file patent in any country. Of course, you can always take a professional help and make the whole process easy on you.