Use of the PCT - National Perspective

Dr. Rajesh Dixit/ Sameer SwarupDeputy Controller of Patents & Designs Intellectual Property Office, India

Patent Cooperation Treaty

PCT was signed on 19th June 1970 It came into force on 25th January 1978 with Chapter I of the PCT

in respect of 13 States

Chapter II of the PCT entered into force on 29 March 1978 It commenced operations with PCT Receiving office on 1

June 1978

India Joined PCT on 7th December 1998 as 98th Member At present 152 countries are member to PCT

Patent Cooperation Treaty

PCT is an international system to facilitate and streamline filing ofPatent applications for obtaining patents internationally

More specifically, the PCT establishes a procedure for the filing andprocessing of a single application for a patent which has legal effect inthe countries which are Treaty members

Simplifies the procedure for obtaining patent protection in manycountries, making it more efficient and economical for:

(1) users of the patent system (applicants and inventors); and (2) patent Offices

However it is not at a system of patent grant globally Under PCT, each member country has flexibility to grant or refuse the

patent on PCT application as per national Law

Principal Objectives of the PCT

To simplify filing of patent applications in several countries: To enable business

To avoid duplication of works: filing with a single patent office, of a single application, in one language

To facilitate and accelerate access to technical information related to inventions

To benefit from the PCT system the applicant must be national or resident of one of the PCT Contracting States

THE PCT system-general facts

The PCT system is a patent “filing” system, not a patent “granting” system. There is no “PCT patent” The PCT system provides for an international phase comprising:

♣ filing of the international application ♣ international search and written opinion of the ISA ♣ international publication and ♣ international preliminary examination

a national/regional phase before designated Offices The decision on granting patents is taken exclusively by national or regional Offices in the national phaseinternational application can be put in order before national phasetranslations and national fees required at 30 months*, and only if applicant wishes to proceed

Impact of PCT- Filing in India

8954

4824

850310592 11466

12613

17466

43674 42951 42763

4690445444

Trend of filing of applications

There was a suddendip in the patent filings when India

joined PCT

1998-99 1999-00 2000-01 2001-02 2002-03 2003-04 2004-05 2012-13 2013-14 2014-15 2015-16 2016-17 2017-18 2018-19

4785450666

Patent Cooperation Treaty (PCT) System

International Phase

Filing of international application

International search

International publication in PCT gazette

International preliminary examination

National Phase

Filing of application before designated office/elected office

Decision on granting patent

Trend in PCT filingsPatent applications filed worldwide reached 3.3 million

PCT applications from top 15 countriesIndia ranks 13th in the PCT filings out of 152 countries

5614253345

49702

1988317014

7914

5641 4568 4162 3720 337 2422 2013 1899 1836

No of applications

International Patent applications from Indiaonly 12.33% of the Indian applicants file PCT applications, which needs to be promoted to increase our ranking worldwide

9911 10941

1207113066 13219

1310 1321 1429 1412 1529

2012 2013 2014 2015 2016

Indian applications PCT Applications

India (+12.33%)

2013

16289

2018

Top PCT applicants from IndiaApplicant Applications

COUNCIL OF SCIENTIFIC AND INDUSTRIAL RESEARCH 109

SUN PHARMACEUTICAL INDUSTRIES LIMITED 49

RELIANCE INDUSTRIES LIMITED 41

DR. REDDY'S LABORATORIES LTD. 32

MYLAN LABORATORIES LTD. 22

LUPIN LIMITED 21

INDIAN INSTITUTE OF TECHNOLOGY 18

PIRAMAL ENTERPRISES LIMITED 17

WOCKHARDT LIMITED 15

CIPLA LIMITED 14

Top Indian applicants for patents

Applicant Applications

INDIAN INSTITUTE OF TECHNOLOGY 536BHARAT HEAVY ELECTRICALS LTD. 179BOSCH LIMITED 173TATA CONSULTANCY SERVICES 171CSIR 165WIPRO LIMITED 147TVS MOTOR 129

PCT Applicants: Top 15 UniversitiesSl.No Name of the University Country Applications

1 UNIVERSITY OF CALIFORNIA United States of America 434

2 MASSACHUSETTS INSTITUTE OF TECHNOLOGY United States of America 236

3 HARVARD UNIVERSITY United States of America 162

4 JOHNS HOPKINS UNIVERSITY United States of America 158

5 UNIVERSITY OF TEXAS SYSTEM United States of America 152

6 SEOUL NATIONAL UNIVERSITY Republic of Korea 122

7 UNIVERSITY OF TOKYO Japan 108

8 LELAND STANFORD JUNIOR UNIVERSITY United States of America 104

9 HANYANG UNIVERSITY Republic of Korea 101

10 UNIVERSITY OF FLORIDA United States of America 97

11 UNIVERSITY OF PENNSYLVANIA United States of America 96

12 UNIVERSITY OF MICHIGAN United States of America 94

13 KOREA UNIVERSITY Republic of Korea 87

14 SHENZHEN UNIVERSITY China 87

15 KOREA ADVANCED INSTITUTE OF SCIENCE AND Republic of KoreaTECHNOLOGY

87

Top-PCT Applicants: Government and Public Research Organizations

Sl.No Organization Country Applications

1 COMMISSARIAT A L'ENERGIE ATOMIQUE ET AUX ENERGIESALTERNATIVES

France 329

2 FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG DERANGEWANDTEN FORSCHUNG E.V.

Germany 252

3 AGENCY OF SCIENCE, TECHNOLOGY AND RESEARCH Singapore 162

4 INSTITUT NATIONAL DE LA SANTE ET DE LA RECHERCHEMEDICALE (INSERM)

France 146

5 CHINA ACADEMY OF TELECOMMUNICATIONS TECHNOLOGY China 145

6 CENTRE NATIONAL DE LA RECHERCHE SCIENTIFIQUE (CNRS) France 135

7 NATIONAL INSTITUTE OF ADVANCED INDUSTRIAL SCIENCE ANDTECHNOLOGY

Japan 122

8 COUNCIL OF SCIENTIFIC AND INDUSTRIALRESEARCH

India 109

9 KOREA INSTITUTE OF INDUSTRIAL TECHNOLOGY Republic ofKorea

83

10 SLOAN-KETTERING INSTITUTE FOR CANCER RESEARCH United States ofAmerica

73

PCT International Applications filed at RO/IN

790

568 566459

472

Individual Legal Entity

1042

816801

693744

2012-13 2013-14 2014-15 2015-16 2016-17 2017-18 2018-19

252 248 235 234 272 276 331

568435

711

899

e-PCT

Indian Patent office participated in the development and testing of e-PCT

Filing and processing of International applications through ePCT was centralized in April 2017

Applications filed under PCT online ,through e PCT module are being processed and record copy transmitted to WIPO by Patent Office Delhi.

Year Wise Paper and E-PCT Filing 2009-2018~80% of the applications are filed electronically, slowly moving towards diminishing paper filing practice

441

585

525496

399

442

332

145

18

317 330313

364

418

360

128

7

285

223

454

614

127

2009 2010 2011 2012 2013 2014 2015 2016 2017 2018

PAPER FILING PCT EASY ePCT

National phase in India

For grant of patent in India, the applicant has to file a national phase application in India before the expiry of 31 months from the priority date of the application.

This time limit is not extendable

The international application as filed designating India under the PCT is treated as corresponding application in India.

National Phase filing under PCT

28965 2843527078

26057

28248

2011-12 2012-13 2013-14 2014-15 2015-16 2016-17 2017-18 2018-19

26595 26728 27147

Filing activity in China grew by 11.6% for patents India saw strong growth in patent filings (+7.5%)

Patent applications at the top 10 offices , 2018

0

10000

20000

30000

40000

50000

60000

Total Filing E-filing

3521

8

417

3681

2

3012

3428

7

5430

3940

0

6573

4319

7

9642

4369

2

1247

6

4296

0

1517

8

4276

3

3319

8

4690

4

4023

54544

4

4052

8

4785

4

4300

35065

9

4628

6 2007-082008-092009-102010-112011-122012-132013-142014-152015-162016-172017-182018-19

FILING TREND (NEW APPLICATIONS)

Origin of Applications in India

0

2000

4000

6000

8000

10000

12000

14000

16000

18000

16289

10023

4676

2859 27282321

1338 1193 1192 1168 976601

Origin of Applications

Average age of patent in force at selected offices 2018

519502

02013-14

Trend of Filing and disposal of applications in ISA, India

135 18

2014-15 2015-16 2016-17 2017-18 2018-19

711 621

940 983

12131156

17381639

200

400

600

800

1000

1200

1400

1600

1800

Filed

Disposed

Measures to improve International applications under PCT Considering the difficulties faced by the applicants for payments in USD, a new

INR A/C was opened in Central Bank of India

Now applicant can make payment towards IB fee and ISA (except ISA/IN) fees directly through NEFT /RTGS and submit the UTR /Ref nos via email to RO/IN

RO prepares debit instructions to the bank and transmits the payment subsequently to IB and ISA and also intimate the same through e mail to all International authorities.

No unnecessary burden on applicant towards bank charges and commission forDemand Draft and Bank charges

Notification and Implementation of WIPO Digital Access Service (DAS) for submission and retrieval of Priority documents (Under the Framework Provisions of WIPO Digital AccessService)

IPO as a depositing Office will deposit certified copies of patent and industrial design applications as priority documents, including PCT applications filed at the Office on and after 31.01.2018, which the applicant specifically requests be made available to the service

IPO as an accessing Office will recognize priority documents available to it through theservice for the purposes of any application for which the time for furnishing the prioritydocument has not expired by 31.01.2018.

All documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;

As an Accessing Office, the Office will accept color, grey-scale black and white documents in PDF format as deposited by depositing Offices.

Measures to improve International applications under PCT- WIPO-DAS

Important developments• Expedited examination

▫ For startups▫ Applicant selecting Indian Patent office as ISA or IPA▫ Fastest case granted in just 113 days

• Startups▫ 80% Fee reductions▫ Fee reimbursement for facilitators

• MSMEs/ Small Entities▫ 50% Fee reduction▫ 55 % patent applications by Indian MSMEs

• Auto allotment▫ Application gets allotted to an Examiner from the closest technical field in any of the 4

locations• Cross location examination

▫ Applications are referred to examiners and controllers at any location• E filing

▫ 10% lower fees for e-filing: electronic filing increased from around 30 percent to more than 90 percent.

• Video conferencing▫ applicants and patent agents can use video conferencing▫ higher level of customer service.

• Augmentation of human resources:▫ 458 new Patent Examiners recruited in addition to the existing 130

THANK YOU