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WHAT IS PCT APPLICATION (International Patent Application)?

The Patent Cooperation Treaty, or PCT, is a multilateral treaty that comes under the World Intellectual Property Organization (WIPO). The PCT was formally arranged in Washington in 1970 and entered into force in 1978. The PCT is an international treaty with more than 145 contracting states (presently 156 states). The PCT application is commonly referred as international application. The PCT application is a useful way to reserve foreign patent rights without spending excessive money upfront. The PCT makes it possible for the patent applicant to seek patent protection for an invention in many countries by filing a single international patent application. There is no need of a separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in the “national phase”.

Why to file International Patent Application?        

Since the patent is protected only in the country where it is filed, an international patent application can also help the applicant to seek patent protection based on the priority date of the initial application in other countries. Therefore, there is a need for an international patent application for protecting the invention.

What are the advantages of PCT applications?

A single application in a single language filed in a single country is called the international application. The single application has the effect of filing simultaneously in different countries. Filing a PCT application will save time, expenses, and extra work to protect the invention in more than one country. It allows a deferral of national processing.

Who uses the PCT?

The PCT is used by various entities such as; World’s major corporations. Research Institutions Universities Small and Medium-sized Enterprises (SMEs) Individual Inventors.

What is the procedure for PCT application? WIPO.int

The PCT application has two phases. The first phase is an international phase in which the patent protection is pending under a single patent application filed with the patent office of the contracting states of the PCT. The second phase is a national or regional phase that follows the international phase. Rights are continued by filing necessary documents with the patent offices of separate contracting states of PCT.

Steps involved in PCT:

Filing an international application in a Receiving Office International search Report by an International searching authority. International preliminary examination by an International preliminary examining authority.

Who can file a PCT application?

If you are a resident of a PCT contracting state, you are eligible to file an international patent application under PCT. If there is more than one applicant named in the application, any one of them needs to comply with this requirement.   Generally, the patent applicants who wish to protect their invention in more than one country first file a national or regional patent application with their national or regional patent office. After filing a national or regional patent application, the patent applicant can file an international patent application under the PCT within 12 months from the filing date of that first application.

Additionally, while PCT helps to reserve foreign patent rights, it may not be for everyone. For example, as you are near the 12-month deadline from initial patent filing, you might seek patent protection in only one or two other countries. In that case, you can choose to file direct applications in the desired countries within 12 months from the priority date. It is also possible that the foreign countries you are thinking to apply are not members of the PCT. Consult with your Patent Agent/Attorney to prepare the strategies that make sense to avoid this inconvenience.

Where to file a PCT application?         

You can file an International patent application, in most cases, with your national patent office or directly with World Intellectual Property Organization if permitted by your state’s national security provisions. You can consult with your Patent Agent/ Attorney to get a strategic idea about where to file your PCT application.

How long does the PCT process take?  

The time required for the examination and grant of the patent varies across patent offices, and it depends on national or regional patent laws, regulations and practices. Generally, it takes 30 months from filing the initial patent application. You claim priority before beginning the national phase procedures with national patent offices. It is unnecessary to wait for 30 months, and you can also request an early entry into the national phase.

What are the costs associated with a PCT application?

An international filing fee is payable to the International Bureau of WIPO within one month from the date of filing. A search fee can vary depending on the International Search Authority and payable within one month from the date of filing. A small transmittal fee is payable to the receiving office within one month of filing the international application. The transmittal fee can vary depending on the receiving office.

Cost of filing the PCT application in India:

Transmittal fee of e-filing- Natural Person- 3200 INR, Small Entity – 8000 INR, Others – 16000 INR and for physical filing – Natural Person- 3250 INR, Small Entity – 8800 INR, Others – 17600 INR

The international filing fee for Indian Applicant – 1471 USD (Fee per sheet over 30 is 17 USD and reduction in fee for PCT easy filing 11 USD) Search fee for Indian applicant choosing Indian Patent Office as ISA, for individuals 2500 INR and others 10,000 INR. Preliminary Examination fee where ISA/IN issued the ISR for individuals is 2500 INR and others 10,000 INR and where ISA/IN did not issue the ISR for individuals is 3000 INR and others 12,000 INR. So, this is how PCT brings the world of inventions closer and controls the process of different formality requirements, and it also reduces significant costs associated with seeking multinational patent protection provides strong ideas for patenting decisions.

If you consult with an experienced Patent Agent/Attorney, you can get detailed information and help in understanding these crucial factors while applying for patent protection in foreign countries. Thereby you can save time, money and reduce the risk of infringement.

There are a lot of misunderstandings about the ever-greening of the patents. Few think it’s possible to get protection for the same invention repetitively after 20 years, and as a professional, I have an opinion that it’s not possible. Let’s try to understand how the ever-greening of patents can be done, how it can be enforced, and the advantages of ever-greening patents.

India, as a developing country, has defined many inventions as non-patentable. One example quoted by the Indian professional is Novartis. Yes, they tried ever-greening by trying to patent the Beta form of the same molecule. But this patent was refused by the India patent office, and even by Supreme Court stood by the patent office’s decision. The same patent was awarded in 30+ countries. But still, base requirements are there.

Similar things are impossible for engineering inventions.

Section 3 of the Indian patent Act:

https://brainiac.bee-logical.co.in/INVENTIONS_NOT_PATENTABLE_Section_3

Back to the topic:

The technologies related to basic engineering, like mechanical engineering, civil engineering, and electrical engineering have an extended lifespan of more than 20 years; therefore, it becomes crucial for the original inventor to try to protect such inventions beyond 20 years. The patents always get published. The competitors will utilize such published information to launch the same product after the patent expires. Create a barrier to create hindrance all to create an image, or in perception that still there is a patent live on that particular technology, people tend to file several patents with minor modifications.

There are always some modifications in the patent document, specifically in the claims when a new patent application is filed. Some modifications are required to get a grant for the new patent application. It is impossible to get a grant for the same claims again and again.

For example, suppose someone first filed a patent application for the IC engine while drafting a patent application. In that case, the drafter will draft a patent application with the entire construction and working of an IC engine.

If the same applicant/inventor wants to extend protection for the same (identical) IC engine, he cannot get it. Such an application will not be granted (there is no restriction on filing a patent application; all the criteria are for the grant only).

Then the same inventor will try to add some constructional element to the old invention and again file for a new patent. Such patent applications will have the same description and additional few sentences, a paragraph or a page write-up about the new construction features, and an additional sentence in the claim for the new features. Often the readers get confused and assume that it’s the same patent filed again, which is also the invention of the original inventor, to mislead the readers.

If this modification qualifies all 3 requirements of patentability, then it will be granted.

Patentability Criteria:

1. Novelty – Yes, such patent application, if granted, has something new.
2.Non-Obviousness (inventive step) – A patent application will be granted if the examiner fails to cite a document relevant to the inventive step. Owners of such miss-out are disclaimed by all the patent offices globally. So you can blame why they missed or how it got granted.
3.Utility (industrial application) – most inventions qualify this criteria.
While drafting such a patent application, the drafter creates an impression in such a way that it seems like the inventor is repetitively filing the same patent application for the same technology, and it is granted, but when you observe it minutely, you will see minimal differences which will qualify patentability requirements.

Examiner never misses a patent/application filed by the same applicant/inventor. He can miss patents filed by other applicants/inventors if there is a purposeful change in nouns and verbs used to describe the same invention.

Advantages of such patents:

1. The competitor will not sell the product blindly when he knows there are live patents on the product, and if he sells the same product in the market, the original inventor/patentee will take some legal action. Delay due to fear is the first advantage.
2.History of litigation/infringement suits by the original patentee creates more fear.
3.Some competitors may not launch the product ever. That is a complete win for the patentee. This is what he wants.

This is the advantage the original patentee gets by filing several patents on minor modifications he has come up with. Sometimes these modifications may not even use or implemented. It’s just for the sake of profile/fear. The competitors will take more time, spend more money on risk analysis, and always fear while launching the product. So these are the advantages a patentee gets by filing several patents on minor modifications.

I term such activity patent fencing, filing several patents with minor modifications around a technology. Few can be implemented, and few may not. The fencing can be done by the original patentee or by the competitors. The timing of patenting is crucial. Whoever does it first win? It isn’t easy to break such a fence.

The primary purpose of patenting should always be to block competitors and not seek protection. Protection doesn’t fetch money.

In developed countries, people are cautious and are keen to take legal action against the infringers. Things get much more difficult in these countries where the litigation cost also is very high.

If the infringer is a small company where he has not earned any profits, a legal suit may not be logical. Legal Notices can do miracle. The fear works, and it multiplies with such notices.

This is the advantage of patent fencing. Who does it first, wins.

Suneet Sabale

Patent Infringement Suit in India

What is the limitation period for the Patent Infringement suit in India?

The Indian Limitation Act governs the period of limitation for bringing a suit for infringing a patent, which is three years from the date of infringement. Therefore, it is essential to note that the limitation period for the suit runs from the date of the infringing activity and not from the date of the grant. Suppose the patent has ceased to be affected due to non-payment of the renewal fee. Then patentee will not be entitled to institute the proceedings for the infringement committed between the date on which the patent ceased to have an effect and the date of publication of the application for restoration of the patent.

Before taking any action against an infringer, the patent must be sure that

• IP right granted to him is enforceable
• Know the relevant prior art by conducting an extensive search.
• Know the accused infringer’s product in detail
• Evidence of infringement in case of process claims

Possible counterclaim by the infringer

• The infringer may question the patent’s validity, and the court then decides.
• The infringer may also say that what is being done does not constitute an infringement.
• Infringement is determined primarily by the language of the patent claims and, if what Defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

What is the Punishment for Patent Infringement?

The provisions related to penalty have been incorporated in the Patents Act, 1970 to safeguard and prevent a patent from being illegally misused or exploited and preserve the interest of the patentee who has an exclusive right over the invention granted a patent. The Act prescribes punitive as well as pecuniary punishment for offences committed under the Act. Section 120 of the Act penalizes instances of unauthorized claims to patent rights. Thus, any person who falsely represents any article sold by him to be patented in India or is the subject of an application for a patent in India is punished with a fine which may extend to one lakh rupees.

What are the examples of patent Infringement?

Let’s have a look at an infringement case related to Novartis Vs Cipla,

Facts

· Novartis (Plaintiff) sued Cipla (Defendant) for infringing patents covering Onbrez (Indacaterol-drug used to treat chronic obstructive pulmonary disease) and sought damages.

· The drug is protected by 5 patents in India consisting of product composition and process patents.

· In 2014, Defendant launched a generic version of Onbrez and, in the process, petitioned to have Plaintiff’s patents revoked. It contended that the disease had reached an ‘epidemic’ stage, and the monopoly of the Plaintiff was limiting the extent of the drug.

· In light of that, requested the Central Government to revoke the patent under Section 92 (3) (compulsory license under special circumstances) and Section 66 (patents which are prejudicial to the public) of the Patents Act.

· Defendant contended that Plaintiff was not manufacturing the drug locally and imported only limited quantities through a licensee.

· Plaintiff then filed a case before the Delhi HC claiming patent infringement and damages.

Court Decision

· Delhi High court barred the Defendant from making or selling a generic copy of Plaintiff’s drug by granting a temporary injunction to Plaintiff.

· The HC observed that Plaintiff had a strong prima facie case, and as the validity of the patent is not seriously questioned, there is a straightforward way to grant an injunction.

· The Defendant had previously also stated that there was a drug shortage and inadequacy thereof. However, the HC observed that Defendant failed to provide any proof or figures for such claims.

In 2017, Cipla filed an appeal against this order. However, the appeal was dismissed on similar grounds. The 2017 Appeal further divided into the implications of a drug being imported and whether the extent of imports was sufficient to meet the demands in India.

Conclusion

Even though the patent system provides exclusive rights to the patentee for his commercial gains for a fixed period, it is crucial to understand that it should not obstruct the research and development in the field of art due to granted patents in that particular field of art. For this purpose, the researchers need to learn about infringing patent activities and non-infringing activities. Hence it is always advisable to seek professional help for that.