One question that may come to one’s mind is why should one take the PCT route, when filing can be done individually in each country? Well, firstly, each country has its own jurisdiction and filing separately in each country can be a daunting task in the absence of a framework and professional expertise. Secondly, keeping track of all the multi-lingual information trail that would be generated in this process can also be tedious. Thirdly, it a cost-effective way to entering in the international jurisdiction while biding time to decide as to which Patent Cooperation Treaty (PCT) facilitates an umbrella filing for a patent application in its member states.

A resident of any of the member states is eligible to file a PCT application with their own country designated as receiving office or directly with WIPO.  At this stage, an applicant may designate countries in which he seeks to protect his invention. This initiates an applicant’s PCT journey and the application is considered to have entered its international phase. Post-entry into the international phase, the patent application becomes eligible for subjection to a patent search. However examination is optional and is conducted on request. On completion of search and examination, the application enters its national phase in the 30th or 31st month from date of filing of PCT application. The period of entering the national phase varies from state to state. During the national phase, a PCT application is proceeded in accordance with the rules of the concerned designated state.

Though formulated for convenience, PCT route can be challenging in terms of understanding the jurisdiction of each state. Moreover, adapting the international application to fulfill the requirements of each designated state on the onset of national phase is also crucial. Prometheus neutralizes these challenges by providing guidance and advices that are customized to suit the judicial requirements of the designated states.

Our team of experts helps our clients in international phase filings, national phase filings, interpretation of the international search and examination reports, office actions, fulfilling procedural requirements of designated states etc. Our state of the art expertise provides a hassle-free PCT experience during both national and international phase.

Intellectual property is geographically limited, thereby making widespread protection essential. Applications can be filed under Paris Convention for protecting patents, trademarks, industrial designs, utility models, service marks, trade, geographical indications and the repression of unfair competition. After filing a priority application in the inventor’s or applicant’s country, one has up to 12 months to file directly into one or more foreign countries where one seeks to protect his IP. The procedural requirements differ from state to state and the timeline of 12 months cannot be extended.

The convention route can be taken for filing in countries that are not members of the Patent Cooperation Treaty. It is also economically more viable to take the convention route when protection is sought only in few countries.

Prometheus has streamlined the procedural requirements for both PCT and Convention filing for a hassle free filing experience. Our team has expertise to provide guidance and support at each step of the international filing routes. No matter which route you choose, we have the experience and niche to guide your application effectively throughout.

We also undertake drafting and filing of patent applications, preliminary amendments in US, EP and other jurisdictions commiserating to their respective foreign jurisdiction offices.

If any applicant wishes to file an patent application abroad, without filing in India, it should be made only after obtaining a written permission from the Controller .The request for permission for making patent application outside India shall be made in requisite form and fees accompanied by the gist of the invention concerned.

In case of US patent applications that have been abandoned due to non-filing of the response or action in the specified time limit as ordained in the Office Action, failing to pay required maintenance fees etc. wherein the abandonment was unintentional there is a provision for reviving the application within a stipulated time by following appropriate procedural guidelines i.e., a revival petition accompanied by other documents.

In case of Indian patents that have lapsed due to non-payment of renewal fees, a request for restoration of patent can be filed within 18 months from the date of cessation of patent along with the prescribed fee. After receipt of the request the matter is notified in the official journal for further processing of the request.