Use

of the PCT -National Perspective

Dr. K.S.Kardam
Senior Joint Controller of Patents & Designs
Indian Patent Office
New Delhi
Email: kardam.ks@nic.in

 Patent Cooperation Treaty

q  PCT was signed on 19th June 1970

q  It came into force on 25th January 1978 with Chapter I of the
PCT in respect of 13 States
q  Chapter II of the PCT entered into force on 29 March 1978
q  It commenced operations with PCT Receiving office on
1 June 1978
q  India Joined PCT on 7th December 1998 as 98th Member
q  At present 152 countries are member to PCT
 Patent Cooperation Treaty

q  PCT is an international system to facilitate and streamline filing of

Patent applications for obtaining patents internationally
q  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
q  Simplifies the procedure for obtaining patent protection in many
countries, making it more efficient and economical for:
q  (1) users of the patent system (applicants and inventors); and
q  (2) patent Offices
q  However it is not at a system of patent grant globally
q  Under PCT, each member country has flexibility to grant or refuse
the patent on PCT application as per national Law
Impact of PCT- Filing in India
Trend of filing of applications
46904
45444
43674 42951 42763

There was a sudden dip

in the patent filings
when India joined PCT

17466

12613
11466
10592
8954 8503

4824

1998-99 1999-00 2000-01 2001-02 2002-03 2003-04 2004-05 2012-13 2013-14 2014-15 2015-16 2016-17
Patent Cooperation Treaty (PCT) System
r International Phase
m Filing of international application

m International search

m International publication in PCT gazette

m International preliminary examination

r National Phase

m Filing of application before designated office/elected office

m Decision on granting patent

Trend in PCT filings
2.33 mn applications were filed in 2016, and more than 3.23 mn applications since
1978
240000 Applications

220000

200000

180000

160000

140000

120000

100000
2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016
PCT applications from top 15 countries
India ranks 15 in the PCT filings out of 151 countries
No of applications

56595

45239
43168

18315
15560

8208
5496 4679 4365 3720 3358 2333 1838 1835 1529
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 Applications

India (+8.3%)

13066 13219
12071
10941
9911

1412 1529
1321 1429
1310

2012 2013 2014 2015 2016

Major contributors for the PCT from India
 Top PCT applicants from India
Applicant applications
COUNCIL OF SCIENTIFIC AND INDUSTRIAL
109
RESEARCH
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
Sl. No. Name of applicants Applications filed

1 400
INDIAN INSTITUTE OF TECHNOLOGY
(COLLECTIVE)
2 WIPRO LIMITED 226

3 COUNCIL OF SCIENTIFIC AND 225

INDUSTRIAL RESEARCH

4 MAHINDRA & MAHINDRA LIMITED 205

5 BHARAT HEAVY ELECTRICALS LTD. 174

6 TATA CONSULTANCY SERVICES 159

7 AMITY UNIVERSITY 106
PCT Applicants: Top 15 Universities
Sl.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

KOREA ADVANCED INSTITUTE OF SCIENCE AND
15 Republic of Korea 87
TECHNOLOGY
 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
COUNCIL OF SCIENTIFIC AND INDUSTRIAL
8 India 109
RESEARCH
9 Republic of
KOREA INSTITUTE OF INDUSTRIAL TECHNOLOGY 83
Korea

10 United States of
SLOAN-KETTERING INSTITUTE FOR CANCER RESEARCH 73
America
Share of PCT applications with women inventors
for the top 20 origins, 2016

60
Share_2016

46.61 Growth over last 50

43.83 year

40
35.44
32.79 32.36 32.35
29.70 29.02
28.48 30
26.46 25.69
24.78 24.38 24.01
23.9 22.17 22.07
19.42 18.79
17.48 20
15.12

12.6 12.5
10
7.8
4.6 4.2 4.1
1.4 1.9
0.6 0
-0.6 -0.7 -0.9 -1.5
-1.9
-3.6 -4.6
-5.2
-4.9
-5.9
-10
PCT International Applications filed at RO/IN
Individual Legal Entity
1042

816
801
744
693

790

568 566 472

459

252 248 235 234 272

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

e-PCT

q  Indian Patent office participated in the development and testing

of e-PCT
q  Filing and processing of International applications through e PCT
was centralized in April 2017
q  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
PAPER FILING PCT EASY ePCT

614
585

525
496

442 454
441
418
399
364 360
330 332
317 313
285

223

145
128 127

7 18

2009 2010 2011 2012 2013 2014 2015 2016 2017 2018
National phase in India
q  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.
q  This time limit is not extendable
q  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
26057

2011-12 2012-13 2013-14 2014-15 2015-16

Patent applications at the top 10 offices , 2016
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

!
 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
 Trend of Filing and disposal of
3500 applications in ISA, India
3150

3000 2904

2500

2000
Filed

1500 Examined

1106 1065
1000 871 895
636 584
533
500 369

4 0
0
2013 2014 2015 2016 2017 Total
Measures to improve International
applications under PCT
q  Considering the difficulties faced by the applicants for
payments in USD, a new INR A/C was opened in Central Bank
of India
q  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
q  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.
q  No unnecessary burden on applicant towards bank charges
and commission for Demand Draft and Bank charges
Measures to improve International applications
under PCT- WIPO-DAS
q  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)

q  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

q  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.

q  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;

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