Patents Act,1970

DR.RAJESH DIXIT
Deputy Controller of Patents & Designs
Head PCT Division
Intellectual Property Office
New Delhi
E Mail- [email protected]
Website – www.ipindia.nic.in
22 July 2023 DR.RAJESH DIXIT 1
 HISTORY OF PATENT ACT

 The Patent Law of 1856

 The Patent and Designs Act, 1911.

 The Patents Act, 1970 [20th April

1972]

SG
THE PATENTS ACT, 1970 [20TH APRIL 1972]

 1949-JUSTICE (DR.) BAKSHI TEK CHAND

COMMITTEE

 1957-JUSTICE N. RAJAGOPALA AYYANGAR

COMMITTEE

SG
AMENDMENTS TO PATENT ACT

 THE PATENTS (AMENDMENT) ACT, 1999

 THE PATENTS (AMENDMENT) ACT, 2002

 THE PATENTS (AMENDMENT) ACT, 2005

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1. THE PATENTS (AMENDMENT) ACT, 1999 (1ST JANUARY
1995)

Joining Paris convention/PCT

 Filing of applications for product patents in the areas
of drugs, pharmaceuticals and agro chemicals
though such patents were not allowed (S. 5) [Mail
box].
 EMR

SG
2. THE PATENTS (AMENDMENT) ACT, 2002 (20TH MAY 2003)

 Harmonization with PCT provisions

 Term of patent - 20 years

 18 month Publication

 Request for Examination

 Establishment of appellate board

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3. THE PATENTS (AMENDMENT) ACT, 2005
(1ST JANUARY 2005)

Compliance of TRIPS agreement

Product patent regime
Both pre-grant and post-grant opposition

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PATENTS ACT, 1970 - SALIENT FEATURES
PROVISIONS OF PATENTS ACT, 1970
(AS AMENDED 2005)-OVERVIEW

23 CHAPTERS
162 SECTIONS

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 PATENTS ACT, 1970

I.GRANT II.MAINTANENCE III.ENFORCEMENT IV.MISCELLANEOUS

OF PATENT OF PATENT OF PATENT

-CHAPTERS 18 to 19 -CHAPTERS 20 to 23
-CHAPTERS 1 to 10 -CHAPTERS 11 to 17 -S.118 to 162
-S.1 to 59 -S.60 to 103 -S.104 to 117H

SG
I. GRANT OF PATENT [S.1 TO 59]
1. PRELIMINARY [S.1-2]
2. INVENTIONS NOT PATENTABLE [S.3-4]
3. APPLICATIONS FOR PATENTS [S.6-11]
4. PUBLICATION AND EXAMINATION OF APPLICATIONS [S.11A-21]
5. OPPOSITION PROCEEDINGS TO GRANT OF PATENTS [25-28]
6. ANTICIPATION [29-34]
7. PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS [35-42]
8. GRANT OF PATENTS AND RIGHTS CONFERRED THEREBY [43-53]
9. PATENTS OF ADDITION [54-56]
10. AMENDMENT OF APPLICATIONS AND SPECIFICATIONS [57-59]

SG
II. MAINTENANCE OF PATENT [S. 60 TO 103]
11. RESTORATION OF LAPSED PATENTS [60-62]

12. SURRENDER AND REVOCATION OF PATENTS [63-66]

13. REGISTER OF PATENTS [67-72]

14. PATENT OFFICE AND ITS ESTABLISHMENT [73-76]

15. POWERS OF CONTROLLER GENERALLY [77-81]

16. WORKING OF PATENTS, COMPULSORY LICENCES AND

REVOCATION [82-94]

17. USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND

ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT [99-
103]

SG
III. ENFORCEMENT OF PATENT
[S.104 TO 117H]

18. SUITS CONCERNING INFRINGEMENT OF PATENTS [S.104-

115]

19. APPEALS TO THE APPELLATE BOARD [S.116 -117H]

SG
IV. MISCELLANEOUS [118 TO 162]

20. PENALTIES [118-124]

21. PATENT AGENTS [125-132]
22. INTERNATIONAL ARRANGEMENTS [133-139]
23. MISCELLANEOUS [140-162]

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PATENT RULES, 2003
(AS AMENDED 2014) -OVERVIEW

16 CHAPTERS
139 RULES
5 SCHEDULES

SG
 PATENT RULES, 2003

I.GRANT OF PATENT
II.MAINTANENCE OF PATENT
-CHAPTERS 1 to 10
-RULES 1 to 83 -CHAPTERS 11 to 13
III.MISCELLANEOUS
-RULES 84 to 102
-CHAPTERS 14 to 16
-RULES 103 to 139

THE FIRST SCHEDULE [Rule 7-Fees]

THE SECOND SCHEDULE [Rule-8-Forms]
THE THIRD SCHEDULE [LP]
THE FOURTH SCHEDULE [Rule 136(1)-Award of costs]
THE FIFTH SCHEDULE [Rule 19- IA fee]

SG
 I. GRANT OF PATENT
[1 TO 9 CHAPTERS & RULE 1 TO 83]
1. PRELIMINARY (R.1 to 9)
2. APPLICATION FOR PATENTS (R.10 to 16)
3. INTERNATIONAL APPLICATIONS UNDER PCT (R. 17 to 23)
4. PUBLICATION AND EXAMINATION OF APPLICATIONS (R.24 to 37)
5. [omitted]
6. OPPOSITION PROCEEDINGS (R. 55 to 70)
7. SECRECY DIRECTIONS (R. 71&72)
8. GRANT OF PATENTS (R.73 to 80)
9. AMENDMENT OF APPLN., SPECN OR ANY DOC. RELATING THERETO (R.81 to 83)

SG
II. MAINTANENCE OF PATENT
[10 TO 13 CHAPTERS & RULE 84 TO 102]

10. RESTORATION OF PATENTS (R.84 to 86)

11. SURRENDER OF PATENTS (R.87)
12. REGISTER OF PATENTS (R.88 to 95)
13. COMPULSORY LICENSE AND REVOCATION OF PATENT (R.96 to 102)

SG
III. MISCELLANEOUS
[14 TO 16 CHAPTERS & RULE 103 TO 139]

14. SCIENTIFIC ADVISERS (R.103 to 107)

15. PATENT AGENTS (R.108 to 120)
16. MISCELLANEOUS (R.121 to 139)

THE FIRST SCHEDULE [Rule 7-Fees]

THE SECOND SCHEDULE [Rule-8-Forms]
THE THIRD SCHEDULE [LP]
THE FOURTH SCHEDULE [Rule 136(1)-Award of costs]
THE FIFTH SCHEDULE [Rule 19- IA fee]

SG
 Salient features of Patents Act, 1970, as amended

Patent Law - Salient Features

• Both product and process patent provided
• Term of patent – 20 years
• Examination on request
• Both pre-grant and post-grant opposition
• Fast track mechanism for disposal of appeals
• Provision for protection of bio-diversity and
traditional knowledge
• Publication of applications after 18 months with
facility for early publication
• Substantially reduced time-lines
CERTIFIED COPY
Rule 19(4) - On receipt of a request from the applicant and on payment of the fees
specified in the First Schedule, the appropriate office shall prepare a certified copy of
the priority document and promptly transmit the same to the International Bureau and
intimate the applicant and the Patent Office, Delhi branch.

Rule 133 Supply of certified copies and certificates under sections 72 and 147
(1) Certified copies of any entry in the register, or certificates of, or extracts from
patents, specifications and other public documents in the patent office, or from
registers and other records including records in computer floppies, diskettes or any
other electronic form kept there, may be furnished by the Controller on a request
therefor made to him and on payment of the fee specified therefor in the First
Schedule: Provided that certified copies shall be issued in the order in which the
request is filed.
(2) Notwithstanding anything contained in sub-rule (1), certified copies shall be
furnished within a period of one week if such request is made along with the fee
specified therefore in the First Schedule.
 OPPOSITION
Pre Grant Opposition Post Grant Opposition
 Application Published But Not  After Grant Of Patent
Granted
 In Form 7A  In Form 7
 Represent By Way Of Opposition
by any person  Represent By Way Of Opposition by
 Before Grant Of Patent Or Six
interested person
Months Which Later  At Any Time But Within One Year
From Date Of Grant Publication

 NO FEE
 FEE

22 July 2023 DR.RAJESH DIXIT 22

 DISCLOSURE OF BIOLOGICAL
PUBLICLY KNOWN
MATERIAL NOT SUFFICIENT
OR
USED IN INDIA
WRONGFUL
OBTAINING
LACKING
INVENTIVENESS
PRIOR
PUBLICATION
APPLICATION NOT FILED
WITHIN 12 MONTHS GROUNDS OF
FROM F.D. IN CON. COUNTRY OPPOSITION POST PRIORITY
PUBLICATION
BUT PRIOR CLAIMING
NOT
PATENTABLE INFORMATION
U/S 2[1{J}], 3, 4 REGARDING FOREIGN
FILING NOT FILED

INSUFFICIENCY OF TRADITIONAL KNOWLEDGE

22 July 2023 DISCLOSURE
DR.RAJESH DIXIT 23
OF INDIA OR ELSEWHERE
 REGISTER OF PATENTS
R E G IS TER OF P ATENT S

Section 67

R e g i ster of patents an d partic ulars to be enter ed ther ein

(1) There shall be kept at the patent office a register of patents, wherein shall be entered—
(a) the names and addresses of grantees of patents;
(b) notifications of assignments, extension, and revocations of patents; and
(c) particulars of such other matters affecting the validity or proprietorship of
patents as may be prescribed.
(2) No notice of any trust, whether express, implied or constructive, shall be entered in the
register, and the Controller shall not be affected by any such notice.
(3) Subject to the superintendence and directions of the Central Government, the register
shall be kept under the control and management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Controller
to keep the register of patents or any part thereof in computer floppies, diskettes or any
other electronic form subject to such safeguards as may be prescribed.
(5) Notwithstanding anything contained in the Indian Evidence Act, 1872 (1 of 1872), a copy
of, or extracts from, the register of patents, certified to be a true copy under the hand of the
Controller or any officer duly authorised by the Controller in this behalf shall, in all legal
proceedings, be admissible in evidence.
(6) In the event the register is kept wholly or partly in computer floppies, diskettes or any
other electronic form
 RENEWAL (TIMELINES AND ANNUITY)
Rule 80

R e n ewa l fees under section 5 3

(1) To keep a patent in force, the renewal fees specified in the First
Schedule shall be payable at the expiration of the second year from
the date of the patent or of any succeeding year and the same shall
be remitted to the patent office before the expiration or the second
or the succeeding year.
(1A) The period for payment of renewal fees so specified in sub-rule
(1) may be extended to such period not being more than six months
if the request for such extension of time is made in Form 4 with the
fee specified in the First Schedule.
(2) The annual renewal fees payable in respect of two or more years
may be paid in advance.
(3) The Controller shall, after making such enquiry as he may deem
necessary, credit any renewal fee and issue a certificate that the fee
has been paid.
INSPECTION OF REGISTER
Rule 95

I n s pect ion of re gister of patents unde r sectio n 72 and fees payabl e theref or

(1) The register of patents shall be open for public inspection during office
hours on payment of the fees specified therefor in the First Schedule.

(2) When register of patents or any part thereof is in computer floppies,

diskettes or any other electronic form the person authorised by the Controller
under sub-rule (3) of rule 88 shall provide access to the computer floppies,
diskettes or other electronic form or printouts of the records thereof.
 RESTORATION OF PATENTS
Section 60
Appl i cations for restoratio n o f lapsed patents

(1) Where a patent has ceased to have effect by reason of failure to pay any
renewal fee within the period prescribed under section 53 or within such
period as may be allowed under sub-section (4) of section 142,
the patentee or his legal representative, and where the patent was held by
two or more persons jointly, then, with the leave of the Controller, one or
more of them without joining the others, may, within eighteen months from
the date on which the patent ceased to have effect, make an application
for the restoration of the patent.
(2) An application under this section shall contain a statement, verified in the
prescribed manner, fully setting out the circumstances which led to the
failure to pay the prescribed fee, and the Controller may require from the
applicant such further evidence as he may think necessary.
REVOCATION OF PATENTS(SECTION 64)

Revocation of patent or amendment of complete specification on directions from

Government in cases relating to atomic energy(Section 65)
WORKING OF PATENTS (FORM-27)
Rule 131

F o r m a nd man ner in which st atemen ts requ ired un der sec tion 14 6 (2) to be furn ished

(1) The statements shall be furnished by every patentee and every licensee
under sub-section (2) of section 146 in Form 27 which shall be duly verified by
the patentee or the licencee or his authorised agent.
(2) The statements referred to in sub-rule (1) shall be furnished in respect of
every calendar year within three months of the end of each year.
(3) The Controller may publish the information received by him under sub-
section (1) or sub-section (2) of section 146.
COMPULSORY LICENSE
Section 84
Compulsory licences
(1) At any time after the expiration of three years from the date of the grant of a
patent, any person interested may make an application to the Controller for
grant of compulsory licence on patent on any of the following grounds, namely:—
(a) that the reasonable requirements of the public with respect to the
patented invention have not been satisfied, or
(b) that the patented invention is not available to the public at a
reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
 International Arrangements

DR.RAJESH DIXIT
Deputy Controller of Patents & Designs
Head PCT Division
Intellectual Property Office
New Delhi
E Mail- [email protected]
Website – www.ipindia.nic.in
22 July 2023 DR.RAJESH DIXIT 31
 THE WORLD INTELLECTUAL PROPERTY
ORGANIZATION (WIPO)
 The World Intellectual Property Organization (WIPO)
is one of the specialized agencies of the United
Nations (UN) system of organizations.
 The “Convention Establishing the World Intellectual
Property Organization” was signed at Stockholm in
1967 and entered into force in 1970.
 The origins of WIPO go back to 1883 and 1886, with
the adoption of the Paris Convention and the Berne
Convention respectively.
 The Mission of WIPO
 Is to promote through international cooperation the creation,
dissemination, use and protection of works of the human mind for the
economic, cultural and social progress of all mankind.
 Its effect is to contribute to a balance between the stimulation of
creativity worldwide, by sufficiently protecting the moral and material
interests of creators on the one hand, and providing access to the
socio-economic and cultural benefits of such creativity worldwide on
the other.
 One of promoting intergovernmental cooperation in the
administration of intellectual property
 WIPO is increasingly adopting a global approach not only to intellectual property in
itself, but to the place of intellectual property in the wider framework of emerging issues
such as Traditional Knowledge, Folklore, Biological Diversity, Environmental Protection
And Human Rights.
 One of the Most Significant Present-day Tasks Of WIPO is to demystify intellectual
property, so that it is recognized as a part of everyday life not only by those directly
involved in it at governmental, legal, industrial and cultural levels, but also by any others
who compose civil society, whether in non-governmental organizations or small
businesses, whether farmers, public health personnel, individual creators or simply
interested members of the general public.
 Realizing the importance of small- and medium-sized enterprises (SMEs) as the
backbone of market economies, WIPO has established a program aimed at helping
them to fulfill their potential as a powerful force behind wealth creation.
 STRUCTURE
 The General Assembly consists of all the States that are members of WIPO
and also members of any of the Unions.
 Unlike the General Assembly, the Conference consists of all the States which
are members of WIPO, whether or not they are members of any of the Unions.
 Governments have negotiated and adopted multilateral treaties in the
various fields of intellectual property, each of which establishes a “Union” of
countries which agree to grant to nationals of other countries of the Union the
same protection as they grant to their own, as well as to follow certain common
rules, standards and practices.
 The Unions administered by WIPO are founded on the TREATIES. A Union
consists of all the States that are party to a particular treaty.
 ADMINISTRATION

The Convention establishing WIPO provides for four different

organs:
The General Assembly,
 the Conference,
the Coordination Committee
 the International Bureau of WIPO or Secretariat.
INTRODUCTION TO INTERNATIONAL
TREATIES

Paris Convention,
PCT,
CBD,
Budapest Treaty
Impact of Paris Convention, TRIPS, PCT and WTO on the Indian Patent Law
 WIPO ADMINISTERED TREATIES
HTTP://WWW.WIPO.INT/TREATIES/EN/
Treaties administered by WIPO (26 total including WIPO
convention)
 Patent cooperation treaty
http://www.wipo.int/treaties/en/registration/pct/

 PARIS CONVENTION

http://www.wipo.int/treaties/en/ip/paris

 WIPO Performances and Phonograms Treaty

(http://www.wipo.int/treaties/en/ip/wppt/)

 Budapest Treaty

http://www.wipo.int/treaties/en/registration/budapest/

o Hague Agreement

http://www.wipo.int/treaties/en/registration/hague/
o Madrid Agreement
http://www.wipo.int/treaties/en/registration/madrid_protocol/

oBerne Convention

http://www.wipo.int/treaties/en/ip/berne/

o WIPO Convention

http://www.wipo.int/treaties/en/convention/

oWTO (TRIPS)

ohttp://www.wipo.int/treaties/en/text.jsp?file_id=305907
oUniversal Copyright Convention (UCC)
http://www.wipo.int/wipolex/en/other_treaties/details.jsp?treaty_id=208
o Strasbourg Agreement
http://www.wipo.int/treaties/en/classification/strasbourg/
o WIPO COPYRIGHT TREATY
http://www.wipo.int/treaties/en/ip/wct/
o PATENT LAW TREATY
http://www.wipo.int/treaties/en/ip/plt/ ETC……
 INDIAN MEMBERSHIP TO INTERNATIONAL TREATIES

 India became a founder member of WTO and

agreed to the TRIPS obligations during 1995.
Indian membership of IP treaties and date of
ratification is appended below.
• Berne Convention April 1, 1928
• WIPO Convention January 5, 1975
• UCC January 7, 1988
• WTO (TRIPS) January 1, 1995
• Paris Convention December 7, 1998
• PCT December 7, 1998
• Budapest Convention December 17, 2001
• Madrid Protocol July 8, 2013
 PARIS CONVENTION
 The Paris Convention is an international treaty that is currently administered
by the World Intellectual Property Organization (WIPO) and based in Geneva
Switzerland.
 The treaty was signed into effect on March 20, 1883 and was a milestone for
international patent law because it paved the way for international patents
and helped to enforce them for the first time.
 The Convention applies to industrial property in the widest sense, including
Patents, Marks, Industrial Designs, Utility Models (a kind of “small patent”
provided for by the laws of some countries), Trade Names (designations under
which an industrial or commercial activity is carried on), Geographical
Indications (indications of source and appellations of origin) and the
repression of Unfair Competition
The principal features of the Paris Convention have been listed below:

 National treatment
 Right of priority
 Independence of patents
 Parallel importation
 Protection against false indications and unfair competition
 The total number of Nation States party to the Convention are 173
 WTO (WORLD TRADE ORGANIZATION)

o It’s a ‘Member driven’ Org. deals with regulation of

trade between participating countries by providing a
framework for negotiating trade agreements and a
dispute resolution process aimed at enforcing
participants' adherence to WTO agreements, which are
signed by representatives of member governments
and ratified by their parliaments.
 Functions of WTO
 Administering WTO trade agreements
 Forum for trade negotiations
 Handling trade disputes
 Monitoring national trade policies
 Technical assistance and training for developing countries
 Cooperation with other international organizations
 The Basic Principles Of The WTO

1.TradeWithout Discrimination
2. Reciprocity
3. Binding and Enforcement Commitments
4. Transparency
5. Safety Values.
 TRADE-RELATED ASPECTS OF INTELLECTUAL
PROPERTY RIGHTS (TRIPS)
 TRIPS contains requirements that nations' laws must meet for
copyright rights, including the rights of Performers, producers of
sound recordings and broadcasting organizations;
 Geographical indications, including appellations of origin;
 industrial designs; integrated circuit layout-designs; patents;
 Monopolies for the developers of new plant varieties; trademarks;
trade dress; and undisclosed or confidential information.
 WTO TRIPS AGREEMENT AND INDIA.

 WTO (TRIPS Agreement) tries to ensure a

minimum level of IPR protections which is common
to all countries. No state which is a member of WTO
can grant a level of protections that is inferior to
what has been provided in TRIPS.
 However, they are free to grant more superior IPR
protection than what is prescribed under TRIPs.
 In India, the Government guided by Dr. Manmohan
Singh unleashed the process of Liberalisation ,
Privatisation and Globalisation.
 The subsequent Governments followed the same
 BERNE CONVENTION
 Signed : 9 September 1886
 Location :Berne, Switzerland
 Parties : 168
 Articles: 38
 Depositary: Director General of the World
Intellectual Property Organization(WIPO)
 Languages: Signed in French and English,
officially translated in Arabic,
 German, Italian, Portuguese and Spanish
 It is the most significant international
convention in the field of protecting copyright.
 BUDAPEST TREATY
o The Budapest treaty on the international recognition of the
deposit of microorganisms for the purpose of patent procedure,
signed on April 28, 1977, was amended on September 26, 1980.
The Budapest Treaty eliminates the need to deposit
microorganisms in each country where patent protection is sought.

 This is an international convention governing the recognition of

deposits in officially approved culture collections for the purpose of
patent applications in any country that is a party to it.
 NATIONAL INTELLECTUAL PROPERTY
RIGHTS POLICY
 India has a TRIPS compliant, robust, equitable and
dynamic IPR regime.
 An all encompassing IPR Policy will promote a holistic
and conducive ecosystem to catalyse the full
potential of intellectual property for India’s economic
growth and socio-cultural development, while
protecting public interest.
 The rationale for the National IPR Policy lies in the
need to create awareness about the importance of
IPRs as a
marketable financial asset and economic tool.
 The Policy lays down Seven Objectives.
1. IPR Awareness: Outreach and Promotion (To create public awareness about the economic,
social and cultural benefits of IPRs among all sections of society)
2. Generation of IPRs – (To stimulate the generation of IPRs )
3. Legal and Legislative Framework – (To have strong and effective IPR laws, which
balance the interests of rights owners with larger public interest)
4. Administration and Management – (To modernize and strengthen service oriented
IPR administration)
5. Commercialization of IPR – (Get value for IPRs through commercialization)

6. Enforcement and Adjudication – (To strengthen the enforcement and

adjudicatory mechanisms for combating IPR infringements)
7. Human Capital Development – (To strengthen and expand human resources,
institutions and capacities for teaching, training, research and skill building in
IPRs )
Measures the government plans to undertake to bring this idea to completion
so that people can get maximum benefits.
 Bringing the administration and implementation of all IP laws under the
Department of Industrial Promotion and Policy (DIPP).
Enhancing Information and Communications Technology infrastructure at
different levels for making the administration process more efficient.
Promoting infusion of funds to Research & Development.
 Launching a nationwide promotion campaign titled
"Creative India; Innovative India" to increase awareness about the benefits
of the new IPR policy in India.
 A "Cell for IPR Promotion and Management" under the command of DIPP
for promotion, creation and commercialization of IP assets may also be
constituted.
 Expanding the ambit of Traditional Knowledge Digital Library (TKDL) to
allow public research institutions and private players to use it..
 By developing Intellectual property rights curriculum, the Policy intends to
raise awareness of IP issues.
Considering how Intellectual Property is one of the most important assets of
startups, the strengthening of the IP culture in India would be nothing but a
huge boost to them.
INTERNATIONAL CLASSIFICATION
The Strasbourg Agreement
establishes the International Patent Classification (IPC) which divides technology into
eight sections with approximately 70,000 subdivisions. Classification is indispensable
for the retrieval of patent documents in the search for "prior art".

India has joined three WIPO treaties designed to ease the search for trademarks and
industrial designs on 7th June,2019

Vienna Agreement Establishing an International Classification of the Figurative

Elements of Marks

Nice Agreement Concerning the International Classification of Goods and Services

for the Purposes of the Registration of Marks

 Locarno Agreement Establishing an International Classification for Industrial

Designs
 PCT- RO/ISA/IPEA

DR.RAJESH DIXIT
Deputy Controller of Patents & Designs
Head PCT Division
Intellectual Property Office
New Delhi
E Mail- [email protected]
Website – www.ipindia.nic.in
22 July 2023 DR.RAJESH DIXIT 55
 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 of

Patent applications for obtaining patents internationally
 More specifically, the PCT establishes a procedure for the filing and
processing of a single application for a patent which has legal effect in
the countries which are Treaty members
 Simplifies the procedure for obtaining patent protection in many
countries, 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
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

IMPACT OF PCT- PATENT APPLICATIONS
FILING TREND IN INDIA
60000

Trend of filing of applications

50000 There was a sudden dip 47854
in the patent filings 46904
45444
when India joined PCT 43674 42951 42763

40000

30000

20000 17466

12613
11466
10592
10000 8503

4824

0 0 0 0 0 0 0 0 0 0 0 0
0
0 1999-00
0 2000-01
0 2001-02
0 2002-030 2003-04 02004-05 2012-13
0 2013-14
0 2014-15
0 2015-16
0 2016-170 2017-18 0
PCT NATIONAL PHASE APPLICATIONS FOR THE
TOP 20 OFFICES, 2017
PCT APPLICATIONS FROM TOP 20 COUNTRIES
INDIA RANKS 13 IN THE PCT FILINGS OUT OF 152 COUNTRIES

56142
53345
PCT applications for the top 20 Countries, 2018
49702

19883
17014

7914
5641 4568
4162 4138 3337
2422 2013 1899 1836 1825 1578 1475 1443 1409
INTERNATIONAL PATENT APPLICATIONS FROM
INDIA
ONLY 12% OF THE INDIAN APPLICANTS FILE PCT APPLICATIONS, WHICH NEEDS TO BE
PROMOTED TO INCREASE OUR RANKING WORLDWIDE
indian applications PCT Application
India (+12%)

15574

13066 13219
12071
10941
9911

1429 1412 1529 1702

1310 1321

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

 TOP INDIAN APPLICANTS FOR PATENTS
Sl. No. Name of applicants Applications filed
1. INDIAN INSTITUTE OF TECHNOLOGY (COLLECTIVE) 540

2. COUNCIL OF SCIENTIFIC AND INDUSTRIAL 176

RESEARCH
3 DEFENCE RESEARCH &DEVELOPMENT 126
ORGANISATION
4 WIPRO LIMITED 125
5 AMITY UNIVERSITY 119
6 SAVEETHA DENTAL COLLEGE AND HOSPITALS, 118
SAVEETHA UNIVERSITY
7 TATA CONSULTANCY SERVICES 90
8 SRM UNIVERSITY 81
9. HIKE LIMITED 66
10 BHARATH UNIVERSITY 66
APPLICATIONS FROM INDIAN INSTITUTES AND
UNIVERSITIES

Sl. No. Name of Institutes/Universities Applications filed

1 INDIAN INSTITUTE OF TECHNOLOGY (COLLECTIVELY) 540

2 AMITY UNIVERSITY 119
SAVEETHA DENTAL COLLEGE AND HOSPITALS, SAVEETHA
3 UNIVERSITY 118
4 SRM UNIVERSITY 81
5 BHARATH UNIVERSITY 66
6 SHOOLINI UNIVERSITY 62
7 CHANDIGARH GROUP OF COLLEGES 58
7 INDIAN INSTITUTE OF SCIENCE 58
8 G.H. RAISONI COLLEGE OF ENGINEERING 56
8 G.H.R. LABS AND RESEARCH CENTRE 56
9 SANDIP INSTITUTE OF ENGINEERING AND MANAGEMENT 46

10 KCG COLLEGE OF TECHNOLOGY 40

 TOP-PCT APPLICANTS: GOVERNMENT AND
PUBLIC RESEARCH ORGANIZATIONS
Sl.No Organization Country Applications

1 COMMISSARIAT A L'ENERGIE ATOMIQUE ET AUX ENERGIES

France 329
ALTERNATIVES
2 FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG DER
Germany 252
ANGEWANDTEN FORSCHUNG E.V.
3 AGENCY OF SCIENCE, TECHNOLOGY AND RESEARCH Singapore 162

4 INSTITUT NATIONAL DE LA SANTE ET DE LA RECHERCHE

France 146
MEDICALE (INSERM)
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 AND

Japan 122
TECHNOLOGY
8 COUNCIL OF SCIENTIFIC AND INDUSTRIAL RESEARCH India 109
9 Republic of
KOREA INSTITUTE OF INDUSTRIAL TECHNOLOGY 83
Korea
10 United States of
SLOAN-KETTERING INSTITUTE FOR CANCER RESEARCH 73
America
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

28435
28248

27078

26492
26404

26057

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

TOP TEN APPLICANTS FOR PCT NATIONAL
PHASE (COUNTRY-WISE)
France, 953
, 947

Sweden, 1001

UK, 1017

U.S.A., 8619
Korea, 1104

Netherland, 1331

China, 2115

Germany, 2166
Japan, 3537
PATENT APPLICATIONS AT THE TOP 10
OFFICES
Resident Non-resident

1,338,503

605,571

318,381

208,830
159,358
67,899 45,057 41587 34,745 28,394

China U.S. Japan Rep. of EPO Germany India Russian Canada Australia
Korea Federation
 STATE WISE TREND OF FILING OF
APPLICATIONS
4000
3744

3500

3000
2737

2500

1971
2000

1419
1500

974
1000
719 702
533
444
500 308 271 247 190

0
 AVERAGE AGE OF PATENT IN FORCE
AT SELECTED OFFICES, 2016
12.8

11.6
11.0 10.9
10.6
10.3 10.1
9.9 9.7 9.6
9.3 9.0 8.9 8.8 8.7 8.7
8.2 8.0
7.5
7.2 7.2
Measures to improve International applications
under PCT- WIPO-DAS
 Notification and Implementation of WIPO Digital Access Service (DAS) for submission and
retrieval of Priority documents (Under the Framework Provisions of WIPO Digital Access
Service)

 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 the service
for the purposes of any application for which the time for furnishing the priority document 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.
 IPO Initiatives

AUGMENTATION OF MANPOWER
Examiner of Patents – 459 in 2016; More post of controllers
01 Examiner of Trademarks – 59 with Contact Examiners-74

ICT-INFRASTRUCTURE
02 IT-enabled functioning of IPO , Computerization,
Electronic Work-flow

TRANSPARENCY
03 Ushered in by providing for dissemination of
information through dynamic web-based innovative
utilities, accessible by public.
E-DIGITAL INITIATIVES
Ease of digital access to stakeholders- e-filing,, online
04 patent / trademark certificate generation , Mobile App,
SMS, Video-conferencing

LEGISLATIVE AMENDMENTS
05 Patents and Trademark Rules amended for smoother and
speedier processing
 EXPEDITED EXAMINATION

 Expedited examination allowed for patent applications filed by

 Startups and
 Applicants who have selected Indian Patent office as ISA/IPEA for their
International application under PCT
 Separate queue for Requests for Expedited Examination
 Timelines for Expedited Examination :
o Examiner to give Examination Report to controller within 1 month, but
not exceeding 2 months from date of reference by Controller.
o Response to FER within 6 months (with extension allowed for 3
months)
o Controller to dispose of the application within 3 months of the receipt
of response from Applicant.
 • Comprehensive e-filing facility on 24x7 basis
• Comprehensive payment gateway.
• Complete electronic processing of Patents and Trademarks applications
through specialized modules.
• Auto allocation of patent applications for examination across all patent
Ease of
offices to remove disparity in terms of time of examination
Access • 10% rebate on online filing -increase in online filing from around 30% to
around 95%
• Expedited examination
• Online Certificate of Grant of patent and Registration of TM through e-mail
• Withdrawal of Applications allowed

• Human Resources:, large no. of Examiners and Controllers recruited in

Patents and Trademarks for reducing the pendency in examination and
disposal of applications
Infrastructure
development and • In TMR, pendency in Examination is reduced to less than one month.
Human resources Pendency in patent examination will be brought at manageable level by
Augmentation
December 2019 .
• ICT infrastructure: updated to cope with the increased need of
computerisation and IT-enablement of IPO
Video Conferencing System
o Facility introduced to eliminate the need of either party to be
physically present at the office where examination of application is
being conducted
o Facility to enable Applicants/ Authorized agents to attend hearing
with Controllers remotely i.e. from their own office/premises.
o Ability to conduct VC between more than two parties at different
locations under processing

Improving Stakeholder participation:

o Feedback mechanism has been made available in IPO website to
resolve stakeholders’ difficulties and lodge online complaints/
suggestions.
o Also, regular stakeholder consultations are held by DIPP/ CGPDTM for
resolving their difficulties and improving IP Office functioning.
SMS SERVICE

 SMS service for Patents started on 1 Nov 2017

 Facility envisages to help Applicants in getting
information/updates about:
 Successful Filings
 Issuance of Examination Reports
 Scheduled Hearings
 Disposals
 Oppositions
 Other critical events
IPO MOBILE APP

 IPO Mobile APP developed and opened for

stakeholders/public
 IMPORTANT DEVELOPMENTS
 Expedited examination
 For startups
 Applicant selecting Indian Patent office as ISA or IPA
 Fastest case granted in just 113 days
 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
 Augmentation of human resources:
 458 new Patent Examiners recruited in addition to the existing 130
 220 Patent examiners have been selected in this year and their training
will start from July 2019
ROLE OF RECEIVING OFFICE RO/IN IN
PCT
Bimi G B 7/22/2023

83
 Bimi G B 7/22/2023

RECEIVING OFFICE & ITS FUNCTIONS

 Receiving office or RO –Receipts the IA

 Does the following verifications;

 Formality Check :Nationality/Residence

 At least one of the applicants must have the right to file with the RO
 The application must be in a language accepted by the RO

 (English/Hindi)

 (If formality criteria not satisfied, IA referred to IB)

 Accords or refuses international filing date(Article
11(1) )

84
 Bimi G B 7/22/2023

RECEIVING OFFICE & ITS FUNCTIONS

Checks the technical elements of International application The
application must contain at least:
 An indication that it is intended as an international
application
 A request which has the effect of making all possible
designations (Article 4 and Rules 3 and 4.9)
 The name of the applicant (Rule 4.5)
 A description (Rule 5)
 A claim (Rule 6)

Decides on requests for incorporation by reference of missing

elements or parts (Rules 20.5 to 20.7)

 Checks whether translation of international application is required

(Rules 12.3 and 12.4)

85
 Bimi G B 7/22/2023

RECEIVING OFFICE & ITS FUNCTIONS

 Checks if the required fees (RO/IB /ISA) are timely paid
(Rule14,15, 16bis)
 Checks priority claim(s) (Rules 4.10 and 26bis)

 Decides on requests for restoration of the priority right

(Rule 26bis.3)
 Specifies the International Searching Authority
 Specifies the International Preliminary Examining
Authority

86
 Bimi G B 7/22/2023

RECEIVING OFFICE & ITS FUNCTIONS

 Checks for national security clearance/FFL (as per section 39 of Patent Act 1970)

 Section :39 : Residents not to apply for patents outside India without prior
permission. -(1) No person resident in India shall, except under the authority of a
written permit sought in the manner prescribed and granted by or on behalf of the
Controller, make or cause to be made any application outside India for the grant of
a patent for an invention unless-(a) an application for a patent for the same
invention has been made in India, not less than six weeks before the application
outside India; and
 (b) either no direction has been given under sub-section (1) of section 35 in relation
to the application in India, or all such directions have been revoked.
 (2) The Controller shall dispose of every such application within such period as may
be prescribed: Provided that if the invention is relevant for defence purpose or
atomic energy, the Controller shall not grant permit without the prior consent of
the Central Government.
 (3) This section shall not apply in relation to an invention for which an application
for protection has first been filed in a country outside India by a person resident
outside India .]

87
 Bimi G B 7/22/2023

RECEIVING OFFICE & ITS FUNCTIONS

Forwards the record copy to IB and the search copy to

ISA, including any required translation (Article 12 and
Rules 22.1 and 23.1)
Forwards and receives correspondence from
applicants and the international authorities
Establishes priority documents of PCT applications
filed with it (Rule 21.2)

88
 Bimi G B 7/22/2023

COMPETENT INTERNATIONAL SEARCHING AUTHORITIES (ISAS)

(ARTICLE 16, RULE 35)

INDIAN PATENT OFFICE (IN)

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)

89
 Bimi G B 7/22/2023

THE PCT APPLICANT (ARTICLE 9 AND RULE 18)

 The applicant may be any natural person or legal

entity (for example, the assignee, the inventor)

 It is possible to indicate different applicants for

different designated States (Rule 4.5(d));

 At least one of the applicants must be a national or

resident of a PCT Contracting State (Rule 18.3)

90
 Bimi G B 7/22/2023

CONTENTS: INTERNATIONAL APPLICATION

 Request (Article 3(2)) –RO/101
 description (Article 3(2))
 one or more claims (Article 3(2))
 abstract (may be filed later without affecting the international filing
date) (Articles 3(2) and 3(3))
 drawings (where applicable) — later submission may, subject to certain
conditions, result in a later international filing date (Articles 3(2) and
14(2))
 sequence listing part of description (where applicable) (Rule 5.2(a))
 indications containing references to deposited microorganisms or other
biological material (some designated Offices (e.g. Japan) require that
they be in the description or in the international application on the
international filing date) (Rule 13bis)

91
 Bimi G B 7/22/2023

ELEMENTS WHICH MAY ACCOMPANY

THE INTERNATIONAL APPLICATION
 translation of the international application for the purposes of international search or
international publication — may be furnished later without affecting the international
filing date (Rules 12.3 and 12.4)

 separate power of attorney or copy of general power of attorney — may be filed later
without affecting the international filing date (Rules 90.4 and 90.5)

 priority document(s) –prepared by the RO to be transmitted to IB((Rule 17.1) )

 sequence listing in electronic form complying with the Standard set out in Annex C of
the Administrative Instructions— may be furnished later directly to the ISA without
affecting the international filing date but subject to a late furnishing fee (Rule 13ter)

 separate indications concerning deposited biological material that are not part of the
international application, for ex., Form PCT/RO/134 (Rule 13bis)

92
 Bimi G B 7/22/2023

THE REQUEST – RO/101

Computer-generated request (Rules 3.1 and 3.4, Section 102(h))

 International application number
 Filing date
 Name and address of applicants
 Nationality and residence of applicants
 Name and address of authorised patent agents
 Priority claims with date –multiple priorities can be claimed
 ISA nominated
 Fee reduction details
 Number of pages
 Declaration by inventors

93
 Bimi G B 7/22/2023

THE REQUEST – RO/101

 Request can be updated based on any missing
data for which objections are raised by RO
 RO/101 is available on the e PCT module while
filing or is available with the RO or WIPO
website (can be downloaded
(http://www.wipo.int/pct/en/forms)) in case of
Offline filing.
 any text printed in italics may be omitted

94
 Bimi G B 7/22/2023

THE REQUEST – RO/101

 The request must be signed by all persons (legal entity or natural

persons (Rules 4.15, 26.2bis(a)) indicated as “applicant” or
“applicant and inventor”

 BUT: if only one of the applicants signs, the lack of signature of the
other applicants will not be considered a defect

 WARNING: Any notice of withdrawal would have to be signed by

or on behalf of all applicants (including applicant/inventors)

95
 Bimi G B 7/22/2023

HEADINGS OF THE DESCRIPTION (RULE 5 AND

SECTION 204 OF THE PCT ADMINISTRATIVE INSTRUCTIONS)

 Technical Field
 Background Art
 Disclosure of Invention or Summary of Invention
 Brief Description of Drawings
 Best Mode for Carrying Out the Invention or, where
appropriate, Mode(s) for Carrying Out the Invention
 Industrial Applicability
 Sequence Listing
 Sequence Listing Free Text

96
 Bimi G B 7/22/2023

DECLARATIONS UNDER RULE 4.17

 Purpose:

 possibility to anticipate certain national phase requirements during

the international phase (Rule 51bis.2)
 Inclusion in request or subsequent filing is optional
 Declarations relate to the following matters (Rule 4.17):

 identity of the inventor

 applicant’s entitlement to apply for and be granted a patent
 applicant’s entitlement to claim priority of an earlier application
 declaration as to inventorship (for the US designation only)
 non-prejudicial disclosures or exceptions to lack of novelty

97
 Bimi G B 7/22/2023

ADDITION/CORRECTION OF DECLARATIONS(RULE 26TER)

 Applicants may correct or add any of the declarations filed

under Rule 4.17
 Time limit:
 until the expiration of 16 months from the priority date (or
even later, provided that the declaration is received by the
International Bureau before the technical preparations for
international publication have been completed)

 The receiving Office or International Bureau may invite the
applicant to correct any declaration that is not worded as
required or, in the case of the declaration of inventorship
(Rule 4.17(iv)), is not signed as required

98
 Bimi G B 7/22/2023

FEES PAYABLE TO THE RECEIVING OFFICE (RO)

 transmittal fee
 international filing fee (for IB)
 search fee (for ISA)
 supplement per sheet in excess of 30 (for IB)
 fee for priority document
 late payment fee
 late furnishing fee (translation of international application)
 fee for copies of documents

 (Fees indicated in italics are to be paid only as per

instructions from RO

99
 Bimi G B 7/22/2023

INTIMATION OF FEE PAYMENT :RO /102

 After request is filed, the Fees to be paid towards
International filing, search , priority and transmittal fees are
calculated by RO.
 RO/102 issued
 Demand letter with the INR equivalent towards calculation of
IB fee and a mode of payment letter is dispatched to
applicant (hardcopy/email) on the same day by RO
 Applicant is given 1 month time from international filing date
to pay all fees ((Rules 14.1(c), 15.4 and 16.1(f))
 Applicant has to intimate RO about UTR no , after making the
payment ,after which the fees shall be transmitted to IB and
ISA’s and e search copies confirmed to IB. (Search copies
dispatched physically in case of ISA/US)

100
 Bimi G B 7/22/2023

FORMS ACCOMPANYING RO/102

 RO/105 is issued for intimation of international
application number
 RO/106 – in case of defects
 RO/110- Priority defects
 RO/132- where no other form is prescribed
 After basic forms are issued and processed, the record
copy is transmitted to IB
 Applicant gets instant intimation through his email
recorded in the e PCT module.

101
 Bimi G B 7/22/2023
INVITATION TO PAY MISSING FEES (CHAPTER I) (RULE
16BIS)

 If the fees due (i.e., transmittal fee, search fee, international

filing fee) are not paid within the applicable time limit(s):
 the RO invites the applicant to pay to it the missing fees
within one month from the date of the invitation through
RO/133
 Late Payment Fee is calculated as not more than 50% of IB
fee and not less than 50% of transmittal fee.
 The RO will not transmit the search copy to the ISA until the
search fee is paid (Rule 23.1(a))

 Consequence in case of non-payment:

 the international application will be considered withdrawn
(RO/117) by the RO
102
 Bimi G B 7/22/2023

International Filing USD 1,366 **

Fee
Search Fees
(AT) USD 2,202***

(AU) USD 1,722

(CN) USD 316
(EP) USD 2202***

(SE) USD 2202***

(US) USD 2080
For small entity
USD 1,040
For micro entity:
USD 520
(IN) INR 10000 USD 153
INR 2500* USD 38*

103
 Bimi G B 7/22/2023

RECENT INITIATIVES
 To Facilitate the Payment in USD, An account has been opened by RO/IN With
SBI, New York Branch Assigning A/C NO. 2111-250821-001
 Indian applicant, filing international application for patent under PCT, to remit
the consolidated amount in USD by D.D. Payable to the controller of patents at
SBI, New York branch for payment towards international filing fee & search
fee
 The collection charges and Swift charges - to be added in the fee payable in
USD
 Each bank has its own collection charges
 IPO had also issued public notice with Annexures indicating the collection
charges of certain banks
 Swift charges and internal bank charges were included
 This was the practice from 1998 till 2016

104
 Bimi G B 7/22/2023

RECENT INITIATIVES
 Considering the difficulties faced by the applicants while
making the payments in USD, a new INR A/C was
opened in Central Bank of India FOREX division
 The 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 tranmits
the payment subsequently to IB and ISA and also
intimate the same through e mail to all International
authorities.

105
 Bimi G B 7/22/2023

BENEFITS OF USING PCT – FOR

APPLICANTS
 International Filing fees
 **90% FEE REDUCTION FOR NATURAL PERSON
 Search fees (AT/EP/SE)
 ***75% FEE REDUCTION FOR NATURAL PERSON

 If one of the applicant has a different nationality/Residence, 90%

IB fee reduction cannot be claimed.

 Mode of payment: Draft, Banker’s Cheque, Cash, Online fund

transfer (RTGS/NEFT)

106
 Bimi G B 7/22/2023

FOR APPLICANTS FILING THROUGH AGENTS (ONLINE

PCT FEE CHART AS ON 01/01/2018)

For e-filing For physical filing

INR 16000/- INR 17,600/- for legal entity

Transmittal Fee

INR 3200/- INR 3,500/- for natural person

INR 8000/- INR 8800/- for small entity

INR 5000/- INR 5,500/- for legal entity

Fee For Certified
Copy
INR 1000/- INR 1,100/- for natural person

INR 2500/- INR 2,750/- for small entity

107
 Bimi G B 7/22/2023

ADVANTAGES/BENEFITS OF PCT FILING

 For Applicants
 A single application in a single language filed in a single
country called the international application and has the
effect of filing simultaneously in different countries
(designated countries).
 Online filing through e PCT offers the following fee
reductions;
 USD 205(XML filing)
 USD 308(PDF filing)

108
 Bimi G B 7/22/2023

AFTER INTRODUCTION OF E PCT

PCT FILING TRENDS

BEFORE INTRODUCTION OF E PCT

109
Bimi G B 7/22/2023

110
 Bimi G B 7/22/2023

FILING TREND AT RO/IN

 As on date 95% of International

applications are filed online through e
PCT .
 In case of offline filing three copies
with RO/IN or one copy with RO/IB

111
 Role of Indian Patent Office as
ISA & IPEA under the PCT

DR.RAJESH DIXIT
Deputy Controller of Patents & Designs
Head PCT Division
Intellectual property Office,
New Delhi
E Mail- [email protected]
Website – www.ipindia.nic.in
Dr.Rajesh Dixit

7/22/2023
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

PCT system
Local patent application followed within 12 months by international
application under the PCT, claiming Paris Convention priority, with
“national phase” commencing at 30 or 31 months*:
 one set of formality requirements
 international search
 international publication
 international preliminary examination
 international application can be put in order before national
phase
 translations and national fees required at 30 0r 31 months*,
 and only if applicant wishes to proceed
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

The PCT System

--typical use, in more detail

Enter
national
phase
International
(months) publication
0 12 16 18 22 28 30

File local File PCT International (optional) (optional)

application application search report & File International
written opinion demand for preliminary
International report on
preliminary patentability
examination
Typically a national
patent application in
the home country of
the applicant
Which ISA(s) is (are) competent (Rule 35)
DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

 The competent ISA(s) is (are) specified by the RO

 If more than one is specified by the RO, the applicant has the
choice:
 in making that choice, the applicant must take into account the
language(s) accepted by the ISA (a translation of the
international application for the purposes of international
search may be required in certain cases (Rule 12.3))

 If the international application is filed with RO/IB, the

competent ISAs will be those which would have been
competent if the international application had been filed with
(any of) the national or regional Office(s) which, on the basis of
applicant's nationality or residence, could be a competent RO

 Choice of ISA to be indicated in the request (Box No. VII)

 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

ISA/IPEA for Indian Applicant

 Australia
 Austria
 China
 India
 Sweden
 United States of
America
 European Patent
Office
 Language for examination - English
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

ISA/IN AND IPEA/IN

 Indian Patent office starts functioning as ISA & IPEA

under the PCT on 15th October,2013

 More then 550 examiners trained in ISA & IPEA

 More then 110 examiners working in ISA/IPEA from

different field of science and engineering

 More then 2000 search copies received and

examined by ISA/IN
ISA FILING TRENDS
2500

2000

1500

1000
Series1

500

0
2013 2014 2015 2016 Total

4 533 636 871

2044
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Quality Policy
Vision
Our policy is to achieve and maintain the best standards of quality
in all our products and services.
Mission
We, at the Indian Patent Office, identify the following yardsticks
determining the quality of our products and services-
Reliability of our search reports,
Consistency in our examination reports,
Timeliness in delivering services,
Correctness of data while providing patent information
Real time dissemination of information
Stakeholder satisfaction encouraging feedbacks and being
responsive and
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Kind of Fee or Charges Amount (INR)

10000
1 Search fee (Rule 16.1(a))
(2500)"
10000
2 Additional fee (Rule 40.2(a))
(2500)"
4000
3 Protest fee (Rule 40.2(e) and 68.3(e))
(1000)"
4000
4 Late furnishing fee (Rule 13ter.1(c) and 13ter.2)
(1000)"
5 Preliminary examination fee (Rule 58.1(b)):
- where the international search report was issued by the 10000
Authority (2500)"
12000
-in other cases
(3000)"
6 Additional fee (Rule 68.3(a)):
–where the international search report was issued by the 10000
Authority (2500)"
12000
–in other cases
(3000)"
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

International Search
and
Written Opinion of the ISA
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

The International Searching Authority

 Checks unity of invention (Rules 13 and 40), Checks title (Rule
37); checks abstract (Rule 38) Searches claimed invention (Article
15(3), Rule 33.3)
 Authorizes rectification of obvious mistakes if the mistake is:
 in any part of the international application other than the request,
(Rule 91.1(b)(ii)) or
 in any paper submitted to that Authority (Rule 91.1(b)(iv))
 Establishes international search report (ISR) (Rules 42 and 43)
and/or
 declaration that no international search report will be established
(Article 17(2))
 Establishes written opinion of the ISA (Rule 43bis):
 non-binding first opinion on novelty, inventive step (non-
obviousness) and industrial applicability of claimed invention
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Prior art for international search

(Article 15(2) and Rule 33)
Prior art:
 everything which has been made available to the public,
 anywhere in the world,
 by means of written disclosure,
 which is capable of being of assistance in determining that the
claimed invention is or is not new and that it does or does not
involve an inventive step,
 provided the making available to the public occurred prior to the
international filing date.
 PCT Minimum Documentation (Rule 34)
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

International Search Report (ISR) (Rules 42

and 43)
Contains:

 IPC (International Patent Classification) symbols

 indications of the technical areas searched
 indications relating to any finding of lack of unity
 a list of the relevant prior art documents
 indications relating to any finding that a meaningful search
could not be carried out in respect of certain (but not all)
claims

 Time limit to establish ISR and written opinion of the ISA:

 3 months from the date of receipt of the search copy by the

ISA (usually within approximately 16 months from the priority
date if priority is claimed); or
 Cases where no international search
report will be established (1)

■ The application relates to a subject matter which the ISA is

not required to search, and in the particular case decides not to
search (Article 17(2)(a)(i) and Rule 39.1))
■ The description, claims or drawings do not comply with the
prescribed requirements to such an extent that a meaningful
search cannot be carried out in respect of any of the claims
(Article 17(2)(a)(ii))
■ The application contains the disclosure of a nucleotide and/or
amino acid sequence, but:
no listing of that sequence is furnished, the listing
furnished does not comply with the Standard set out in
Annex C of the Administrative Instructions or is
not in electronic form (Rule 13ter.1(d)), or
the fee for late furnishing of the sequence listing
 Cases where no international search
report will be established (2)

■Consequences:

the ISA will declare that no international

search report has been established and that
declaration will be published as part of the
published international application (Rule
48.2(a)(v))

the application remains valid but the IPEA will

not be obliged to carry out the international
preliminary examination for lack of an international
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Written opinion of the ISA

(Rule 43bis)

 Initial preliminary non-binding opinion on:

 novelty (not anticipated)

 inventive step (not obvious)
 industrial applicability
 A written opinion will be established for all international
applications at the same time as the ISR
 The written opinion is sent to applicant and the International
Bureau together with the ISR
 The written opinion is NOT published together with the application
 No formal procedure for applicants to respond to written opinion
of the ISA
 Possibility to submit informal comments to the International
Bureau which will communicate such comments to DOs together
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

International preliminary report on patentability

(IPRP) (Chapter I of the PCT) (Rule 44bis)
If applicant does not file a demand for international
preliminary examination:

 IB establishes IPRP (Chapter I) on basis of the written

opinion of ISA
 IPRP (Chapter I) and any informal comments by the
applicant are sent to designated Offices
 are made publicly available (but not “published” like the
international application and ISR)
 but not before the expiration of 30 months from the
priority date
Use of the written opinion of the ISA for the
purposes of the Chapter II procedure (Rule
66.1bis)

 If applicant files a demand for international

preliminary examination:

 written opinion of the ISA becomes written opinion

of the IPEA (exception: IPEA decides not to accept
written opinions by certain ISAs)

 informal comments by applicant on written opinion

of ISA will not be sent to IPEA (Article 34
amendments/arguments only)
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Amending the Claims under Article 19

Amendments under Article 19 (Rule 46) (1)
DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

 One opportunity to amend the claims only after receipt of the

international search report and written opinion of the ISA

 Amended claims must not go beyond disclosure of the

international application as filed (Article 19(2)) (compliance with
that requirement is, however, not checked at this point)

 Amended claims may be accompanied by a statement (Article

19(1), Rule 46.4)

 Normally must be filed within two months from the date of

transmittal of the international search report and written
opinion of the ISA (Rule 46.1)
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Amendments under Article 19 (Rule 46) (2)

 Filed directly with the IB (Rule 46.2)

 Generally used to better define provisional protection, where

available

 Published as part of the international application at 18 months,

together with the claims as originally filed (Rule 48.2(f))
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Filing of Demand for International

Preliminary Examination
Basics of international preliminary examination
DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

(1)
 Optional procedure for applicants from a PCT Contracting State
bound by Chapter II (at present all Contracting States are bound
by Chapter II)

 Requested by filing, directly with the International Preliminary

Examining Authority, a “demand” which contains the automatic
“election” of all the States bound by Chapter II and which had
been designated

 Results in a preliminary, non-binding opinion by IPEA on novelty,

inventive step and industrial applicability

 Does not give an opinion on patentability according to the

national laws of the various elected States
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Basics of international preliminary examination

(2)
 Gives applicant the opportunity to amend the entire
international application before entering the national phase in
the elected Offices

 In respect of designated Offices for which the 20-month time

limit under Article 22(1) continues to apply, it defers entry into
national phase from 20 to 30 months from the priority date if
examination is requested within 19 months from that date
 Who is entitled to make a demand?
(Article 31(2)(a) and Rule 54.2)

 The applicant, or if there are two or more

applicants, at least one of them,

 who is a resident or national of a PCT Contracting

State bound by Chapter II, and

 whose international application has been filed

with a receiving Office of or acting for a
Contracting State bound by Chapter II (currently
all States)
Where to file the demand? (Rule 59) (1)

■ Directly with the competent IPEA

■ The competent IPEA(s):
is (are) specified by the RO
if more than one is specified by the RO,
applicant has the choice

■ In making his choice, the applicant must take into

account:
the language(s) accepted by the IPEA
that some IPEA(s) accept only international
applications which have been searched by certain ISAs
(that is the case, for example, of IPEA/EP)
Where to file the demand? (Rule 59) (2)

■ If the international application was filed with IB as

RO, the competent IPEAs will be those which would
have been competent if the international application
had been filed with (any of) the national Office(s)
which, on the basis of applicant's nationality or
residence, could be a competent RO

■ Choice of IPEA should be indicated on the first

sheet of the demand
At what time should a demand be filed?
(Rule 54bis.1(a)) (1)
■ At any time prior to the expiration of whichever of
the following
periods expires later:
3 months from the date of transmittal of the ISR and
WO of the ISA
22 months from the priority date
■ In respect of designated Offices for which the 20-
month time limit under Article 22(1) continues to
apply, prior to the expiration of 19 months from the
priority date, in order to delay national phase from 20
to 30 months from the priority date
■ International preliminary examination will not start
before the expiration of the time limit under Rule
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Amending the Application under

Article 34
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Amendments under Article 34 (Rules 53.9

and 66.3 to 66.9) (1)
 All parts of the international application may be amended in
connection with the international preliminary examination
under Chapter II.
 They should be filed together with the demand for
international preliminary examination so that examination will
be based on the application as amended (Rule 53.9); or
 at least before the expiration of the time limit to file a demand
(Rule 54bis.1(a)).
 Attention: amendments need not be taken into account by the
examiner if they are received after he has begun to draw up
another written opinion or the report (Rule 66.4bis).
Amendments under Article 34 (Rules 53.9 and
DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

66.3 to 66.9) (2)

 Amendments shall not go beyond the disclosure of the

international application as filed (Article 34(2)(b))

 If an amendment goes beyond the disclosure in the
international application as filed, the international preliminary
examination report shall be established as if that amendment
had not been made, and the report shall so indicate. The report
shall also indicate the reasons why the amendment is
considered to go beyond the disclosure in the international
application as filed. (Rule 70.2(c))
 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

International Preliminary Examination

 DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

Start of international preliminary examination

(Rule 69.1)
 When the IPEA is in possession of:
 the demand
 the international search report (or the declaration under Article 17(2)(a)) and
the written opinion of the ISA
 the preliminary examination and handling fees
 provided that the IPEA shall not start the international preliminary
examination before the expiration of the applicable time limit under Rule
54bis.1(a) unless the applicant expressly requests an earlier start
 If the demand contains a statement about amendments, when copies of
these amendments are available (see Rule 69.1(c), (d) and (e))
 If international preliminary examination is to be carried out on the basis of a
translation of the international application, when that translation is available
(see Rule 55.2(c))
The international preliminary report on
DR.RAJESH DIXIT 7/22/2023 3:30:37 PM

patentability (Chapter II) (1)

 Must be established by the IPEA within:
 28 months from the priority date
 6 months from the time provided under Rule 69.1 for the start
of the international preliminary examination
 6 months from date of receipt by IPEA of translation under
Rule 55.2,
 whichever expires last (Rule 69.2)
International preliminary examination (1)

■ The purpose of the international preliminary

examination is to provide a preliminary non-binding
opinion on
novelty (not anticipated) (Article 33(2) and Rule 64)
inventive step (not obvious) (Article 33(3) and Rule
65)
industrial applicability (Article 33(4))
■ Relevant prior art (Rule 64, see also Rule 33)
■ Only claims relating to the invention(s) searched by
the ISA will be examined by the IPEA (Rules 66.1(e)
and 66.2(a)(vi))
International preliminary examination (2)

 Finding of lack of unity of invention (Rule 68)

 same criteria as for international search (Rule 13

and paragraphs 10.20 to 10.59 of the International
Search and Preliminary Examination Guidelines)

 invitation by the IPEA to restrict the claims or to

pay additional fees (which can be paid under
protest)

 applicant can select invention as “main invention”

and those inventions for which additional fees are
paid
Written opinion of IPEA (Rule 66.2)

■ The written opinion of the ISA is considered to be the

written opinion of the IPEA (exception: IPEA decides
not to accept written opinions by certain other ISAs)

■ Where the written opinion of the ISA is taken as the

written opinion of the IPEA, no second written opinion
has to be issued

■ If a second written opinion is issued, the applicant

may respond within the time limit fixed in that second
written opinion
The international preliminary report on
patentability (Chapter II)(1)

 Must be established by the IPEA within:

 28 months from the priority date

 6 months from the time provided under Rule 69.1 for

the start of the international preliminary examination

 6 months from date of receipt by IPEA of translation

under Rule 55.2,
whichever expires last (Rule 69.2)
The international preliminary report on
patentability (Chapter II)(2)

 May contain “annexes” (Rule 70.16):

 replacement sheets containing amendments under

Art. 19 or Art. 34 and any letter indicating the basis
for the amendments

 replacement sheets containing rectifications of

obvious mistakes authorized under Rule 91 by the
IPEA and accompanying letter

 when referred to in the report, any sheet and letter

concerning the rectification of an obvious mistake
The international preliminary report on
patentability (Chapter II)(3)

 May contain “annexes” (Rule 70.16):

 earlier amendments when later amendments are not

used as a basis for the report because they are

 considered to go beyond the disclosure in the

international application or

 not accompanied by a letter indicating the basis for

the amendments
The international preliminary report on
patentability (Chapter II)(4)

■ No provisions for appeal or further proceedings

during the international phase before the International
Authorities

■ Sent to the applicant and the IB (Rule 71.1)

■ IB forwards copies of the report, and any required

translation of the report into English (prepared by the
IB), to the elected Offices (Article 36(3)(a) and Rule
72.1)

■ The annexes are not translated by the IB (Article

Reasons for delays in international preliminary
examination (1)
■ On the part of the applicant:
late payment of fee(s)
late correction of defects in the demand
incomplete statement, in the demand, concerning
amendments
failure to attach amendments referred to in the
statement
late furnishing of any required translation of the
international application or of amendments
late response to invitation to pay additional
examination fees in case of finding of lack of unity
late response to written opinion
failure to file replacement sheets containing
 Which ISA(s) is (are) competent (Rule 35)
 The competent ISA(s) is (are) specified by the RO

 If more than one is specified by the RO, the applicant has the choice:
 in making that choice, the applicant must take into account the language(s)
accepted by the ISA (a translation of the international application for the
purposes of international search may be required in certain cases (Rule
12.3))

 If the international application is filed with RO/IB, the competent ISAs will be
those which would have been competent if the international application had
been filed with (any of) the national or regional Office(s) which, on the basis
of applicant's nationality or residence, could be a competent RO

 Choice of ISA to be indicated in the request (Box No. VII)

7/22/2023 Dr.Rajesh Dixit

 ISA/IPEA for Indian Applicant

 India
 Australia
 Austria
 China
 Sweden
 United States of
America
 European Patent
Office
Language for examination - English
7/22/2023 Dr.Rajesh Dixit
 ISA/IN AND IPEA/IN

 Indian Patent office starts functioning as ISA & IPEA

under the PCT on 15th October,2013

 More then 550 examiners trained in ISA & IPEA

 More then 200 examiners working in ISA/IPEA from

different field of science and engineering

 More then 6000 search copies received and

examined by ISA/IN since October,2013

7/22/2023 Dr.Rajesh Dixit

 The International Searching Authority
 Checks unity of invention (Rules 13 and 40), Checks title (Rule
37); checks abstract (Rule 38) Searches claimed invention (Article
15(3), Rule 33.3)
 Authorizes rectification of obvious mistakes if the mistake is:
 in any part of the international application other than the request,
(Rule 91.1(b)(ii)) or
 in any paper submitted to that Authority (Rule 91.1(b)(iv))
 Establishes international search report (ISR) (Rules 42 and 43)
and/or
 declaration that no international search report will be established
(Article 17(2))
 Establishes written opinion of the ISA (Rule 43bis):
 non-binding first opinion on novelty, inventive step (non-
obviousness) and industrial applicability of claimed invention

7/22/2023 Dr.Rajesh Dixit

 International Search Report (ISR) (Rules 42 and
43)
Contains:

 IPC (International Patent Classification) symbols

 indications of the technical areas searched
 indications relating to any finding of lack of unity
 a list of the relevant prior art documents
 indications relating to any finding that a meaningful search could not be
carried out in respect of certain (but not all) claims

 Time limit to establish ISR and written opinion of the ISA:

 3 months from the date of receipt of the search copy by the ISA (usually
within approximately 16 months from the priority date if priority is claimed);
or
 9 months from the priority date, whichever time limit expires later

7/22/2023 Dr.Rajesh Dixit

 Written opinion of the ISA (Rule 43bis)

Initial preliminary non-binding opinion on:

 novelty (not anticipated)

 inventive step (not obvious)
 industrial applicability
 A written opinion will be established for all international applications at the
same time as the ISR
 The written opinion is sent to applicant and the International Bureau together
with the ISR
 The written opinion is NOT published together with the application
 No formal procedure for applicants to respond to written opinion of the ISA
 Possibility to submit informal comments to the International Bureau which
will communicate such comments to DOs together with the IPRP (Chapter I) if
and when it is sent

Dr.Rajesh Dixit
7/22/2023
 Who is entitled to make a demand?
(Article 31(2)(a) and Rule 54.2)

 The applicant, or if there are two or more applicants, at least one of

them,

 who is a resident or national of a PCT Contracting State bound by

Chapter II, and

 whose international application has been filed with a receiving Office

of or acting for a Contracting State bound by Chapter II (currently all
States)

7/22/2023 Dr.Rajesh Dixit

 Where to file the demand? (Rule 59) (1)

■ Directly with the competent IPEA

■ The competent IPEA(s):
is (are) specified by the RO
if more than one is specified by the RO, applicant has the choice

■ In making his choice, the applicant must take into account:

the language(s) accepted by the IPEA
that some IPEA(s) accept only international applications which
have been searched by certain ISAs (that is the case, for
example, of IPEA/EP)

7/22/2023 Dr.Rajesh Dixit

 At what time should a demand be filed?
(Rule 54bis.1(a)) (1)
■ At any time prior to the expiration of whichever of the following
periods expires later:

3 months from the date of transmittal of the ISR and WO of the ISA
22 months from the priority date

■ In respect of designated Offices for which the 20-month time limit under
Article 22(1) continues to apply, prior to the expiration of 19 months
from the priority date, in order to delay national phase from 20 to 30
months from the priority date

■ International preliminary examination will not start before the expiration of

the time limit under Rule 54bis.1(a) unless applicants expressly
request earlier start

7/22/2023 Dr.Rajesh Dixit

 The international preliminary report on
patentability (Chapter II) (1)
 Must be established by the IPEA within:

 28 months from the priority date

 6 months from the time provided under Rule 69.1 for the start of the
international preliminary examination

 6 months from date of receipt by IPEA of translation under

Rule 55.2,

 whichever expires last (Rule 69.2)

7/22/2023 Dr.Rajesh Dixit

 WHY OPTING ISA/IPEA INDIA?

 Competitive very less search and examination fee

 Opportunity to get expedited examination of applications under Patents

Act(Rule 24C)

 Quality report

 Timely report issued

7/22/2023 Dr.Rajesh Dixit

 PCT YEARLY REVIEW 2019
Of the top 10 ISAs, the office of India (+48.7%) recorded the most pronounced growth,
whereas KIPO (−7%) and the office of Israel (−5.9%) experienced the sharpest decreases.

India transmitted more than 99% of such ISRs within three months.

Timeliness in transmitting international search reports to the International Bureau,

measured from priority date by international searching authority, 2018 India -99.5%

Timeliness in transmitting international search reports to the International Bureau,

measured from date of receipt of the search copy by international searching authority,
2018 India-99.1%
 Quality Policy
Vision
Our policy is to achieve and maintain the best standards of quality
in all our products and services.
Mission
We, at the Indian Patent Office, identify the following yardsticks
determining the quality of our products and services-
Reliability of our search reports,
Consistency in our examination reports,
Timeliness in delivering services,
Correctness of data while providing patent information
Real time dissemination of information
Stakeholder satisfaction encouraging feedbacks and being
responsive and
Continuous improvement.
7/22/2023 Dr.Rajesh Dixit
 Kind of Fee or Charges Amount (INR)

1 Search fee (Rule 16.1(a)) 10000 (2500)"

2 Additional fee (Rule 40.2(a)) 10000 (2500)"

3 Protest fee (Rule 40.2(e) and 68.3(e)) 4000 (1000)"

4 Late furnishing fee (Rule 13ter.1(c) and 13ter.2) 4000 (1000)"

5 Preliminary examination fee (Rule 58.1(b)):

- where the international search report was issued by the Authority 10000 (2500)"

-in other cases 12000 (3000)"

6 Additional fee (Rule 68.3(a)):

–where the international search report was issued by the Authority 10000 (2500)"

–in other cases 12000 (3000)"

7 Cost of copies (Rules 44.3(b), 71.2(b) and 94.2), per page 10

" The amount in parentheses is applicable in case of filing by an individual.

7/22/2023 Dr.Rajesh Dixit

 ISA applications filed, examined and pendency in Calendar years

1800

1600

1400

1200

filed
1000
Examined
Pending
800

600

400

200

0
2013 2014 2015 2016 2017 2018
ISA APPLICATIONS FILING,EXAMINED AND
PENDENCY
1800

1600

1400

1200

1000
Filed

800 Examined

Pending
600

400

200

0
2013-14 2014-15 2015-16 2016-17 2017-18 2018-19
IPEA APPLICATIONS FILED, EXAMINED IN CALENDAR YEAR

60

50

40

Applications filed
30
Applications Examined

20

10

0
2013 2014 2015 2016 2017 2018
IPEA APPLICATIONS FILED ,EXAMINED IN FINANCIAL YEAR

70

60

50

40
Applications filed
Applications Examined
30

20

10

0
2013-14 2014-15 2015-16 2016-17 2017-18 2018-19
7/22/2023 Dr.Rajesh Dixit