Under the Patent Cooperation Treaty, that is administered by the WIPO (World Intellectual Property Organisation), provides for formation of an Indian International Searching Authority to file for grant of international application of Patent to the applicant from a member country.
This Indian International Searching Authority helps in conducting a research for filing an international application for the grant of Patent in any member country by filing a single application for grant of Patent. This Searching Authority also provides an International Search Report for the applicants of the Patent registration application. In this article, we will discuss the Indian International Searching Authority in detail.
What is an Indian International Searching Authority?
- As per Rule 19-A of the Patent Rules, 2003[1], India as International Searching Authority (ISA) under the Patent Cooperation Treaty, is an international patent filing system, managed by the WIPO (World Intellectual Property Organization). The Indian International Searching Authority provides the applicants from different member countries, a facility for filing single international application for granting of Patent in member countries all over the world.
- This Indian International Searching Authority also has some additional benefits like, obtaining International Search Report (ISR) before entering the national phase in every individual country which is a member. The International Search Report (ISR) is established in accordance with high internationally regulated standards, by one of the Patent Offices of the world.
- These Patent Offices are highly experienced in doing examination of the Patent applications and specifically those Patent applications that have been appointed by World Intellectual Property Organization (WIPO) to carry out international examination and search. The Patent Office of India was recognized as an International Searching Authority (ISA) under the Patent Cooperation Treaty (PCT). The Indian Patent Office started functioning from 15th October, 2013 as International Searching Authority.
- As per requirement for International Searching Authority, the Indian Patent Office has access to the complete and comprehensive collection of Patent and Non-Patent literature to accomplish Patent Cooperation Treaty minimum documentation requirement, integrated Search platform IPATS.
- It is to enable one-click search through the wide assembly of information and professionally experienced, qualified, and skilled Examiners. Indian Patent Office also has established a Quality Management System for monitoring the Indian International Searching Authority. A fully electronic processing system ensures speedy dissemination and disposal and of information on a real-time basis.
- The Patent Office, Delhi performs the functions of the Indian International Searching Authority under the Patent Cooperation Treaty (PCT) in accordance with an agreement between the International Bureau (IB) and the Indian Patent Office (IPO). The fees payable to the Indian International Searching Authority includes the fees as prescribed in the Fifth Schedule, along with the fees prescribed in the regulations made under the Patent Cooperation Treaty (PCT).
- The International Searching Authority (ISA) establishes the International Search Report relating to the international applications for the grant of Patents, or, as the case may be. It declares in compliance with Rule 19-B of the Patent Rules, 2003, that an expressive search cannot be established, in the cases where India has been designated as a competent International Searching Authority (ISA).
Who are the Applicants in Indian International Searching Authority?
The applicants of PCT International applications are nationals or residents of India and Iran. These nationals can choose the Indian Patent Office (IPO) as International Searching Authority. The different type of Indian applicants choosing IPO as International Searching Authority includes individual inventors, premier research institutions, start-ups, universities, Indian multinational conglomerates, foreign firms with Indian inventors or Indian companies as co-applicants and Indian units of foreign multinational firms.
Read our article:Different Types of Patent Applications in India
What is an International Search Report of an Indian International Searching Authority?
The process of obtaining an International Search Report of an International Searching Authority is as follows:
- Under Rule 19-B of the Patent Rules, 2003, on receipt of the search copy, the Indian International Searching Authority, is required to notify the International Bureau (IB) and the applicant of the application about the receipt of search copy with an identification mark ‘ISA/IN’ together with the international application number and date of receipt and serial number of the search copy.
- Notwithstanding anything contained in the proviso to item (i) of Rule 24-B of the Patent Rules, 2003, the International Searching Authority is required to, upon the receipt of the search copy, refer the international application for the grant of Patent, in the manner in which the search copy was received, to an examiner or any other officer appointed under Section 73(2) of the Patent Act, 1970.
- The examiner is required to prepare an International Search Report (ISR), consistent with the provisions prescribed in the Patent Cooperation Treaty (PCT) and the regulations and rules prescribed under the Treaty. The ISR should be prepared by the examiner within a time period of one month but should not exceed 2 months from the date on which such reference was made by the Indian International Searching Authority.
- In accordance with Rule 19(3) of the Patent Rules, 2003, if the International Searching Authority contemplates that, the international application for the grant of Patent is related to a subject matter which the International Searching Authority is not required to search. Therefore, accordingly, the Searching Authority decides not to search; or the claims, description, or drawings fail to fulfill the requirements prescribed under the rules and regulations prescribed under the Patent Cooperation Treaty.
- It is to such an extent that an expressive and meaningful search will not be carried out, and then the International Searching Authority states and informs the applicant of the application for the grant of Patent and the International Bureau (IB) that there will be no establishment of an International Search Report.
- In the case where any of the situations mentioned in Rule 19(3) clause (a) or (b) of the Patent Rules, 2003, is found to be existing in connection with certain specified claims only, the International Searching Authority (ISA) is required to indicate such a fact in the International Search Report (ISR) with regard to such claims, and for any other claims, that are established in the International Search Report (ISR).
- If the International Searching Authority (ISA) contemplates that the international application for the grant of Patent does not fulfill the requirements of unity of an invention or creation, consistent with the provisions prescribed in Rule 13 of the rules and regulations under the Patent Cooperation Treaty (PCT), then the Searching Authority sends a notice with specifying the reasons for which the international application for the grant of Patent is not considered as fulfilling the requirement of the unity of an invention.
- Subsequently, the applicant of the application for grant of Patent is invited to;-
- The International Searching Authority creates the International Search Report (ISR) on those parts of the international application which are related to the invention first mentioned in the claims of the main invention and subject for the payment of additional fees within the prescribed time period specified in Rule 19 (5) of the Patent Rules, 2003. It applies to those parts of the international application for the grant of Patent which is related to inventions in respect of which such an additional fee was paid.
- Any applicant can under protest also pay the additional fees that are to be accompanied by a reasoned statement explaining that the international application fulfills the requirement of unity of invention or that the amount of the additional fees required is excessive.
- The examination of the protest referred to in Rule 19 (7) of the Patent Rules, 2003, is carried out by a Review Committee established by the Controller of the Patent.
- The Review Committee that is established under Rule 19 (8) of the Patent Rules, 2003, will examine the extent to which the protest is justified and, will accordingly, orders for the total or partial repayment of the additional fee to the applicant of the international application for the grant of Patent.
- Where the applicant of the international application for the grant of Patent has not paid the fees for the protest according to Rule 19 (5) clause (b) of the Patent Rules, 2003, the protest will be considered that it has not been made and the same will be declared by the International Searching Authority.
- The protest fee of the applicant will be refunded to the applicant, in the case, where the Review Committee referred to in Rule 19 (8) of the Patent Rules, 2003, finds that the protest was completely justified.
- Where the international application for the grant of Patent includes the disclosure of one or more amino acid or nucleotide sequences and such sequences are not furnished in computer-readable text format, the International Searching Authority sends a notice to the applicant of the international application for the grant of Patent to submit such a sequence listing in computer-readable text format. They have to pay the late fee specified in the Fifth Schedule, within a time period of one month from the date on which such notice was received.
- In a case where the applicant of the international application fails to fulfill the requirements of the notice, the International Searching Authority searches the international application made for the grant of Patent to such an extent that a meaningful or expressive search can be carried out without the sequence listing in computer-readable text format.
What is the time period prescribed for establishing an International Search Report by the Indian International Searching Authority?
As per Rule 19-C of the Patent Rules, 2003, the Indian International Searching Authority is required to establish the International Search Report (ISR) and a written opinion or, as the case may be, within a time period of 3 months from the date on which the search copy by the International Searching Authority is received, or within a time period of 9 months from the date of priority, whichever expires later. The provisions related to the time period for establishing an International Search Report is prescribed in Rule 19-B of the Patent Rules, 2003.
What are the essential requisites to be fulfilled by the Indian International Searching Authority?
The essential requirements to be fulfilled by the Indian International Searching Authority are as follows:
Transmittal of International Search Report and written opinion
As per Rule 19-D of the Patent Rules, 2003, the International Searching Authority is required to transmit one copy of the International Search Report (ISR) or of the declaration mentioned to in Article 17(2)(a) of the Patent Cooperation Treaty (PCT), and one copy of the written opinion provided under Rule 43bis.1 of the rules and regulations under the Patent Cooperation Treaty (PCT), to the International Bureau (IB) and one copy to the applicant of the application of Patent, on the same day.
Confidential Treatment
As per Rule 19-E of the Patent Rules, 2003, all subject matters relating to the international applications for grant of Patent are to be kept confidential in accordance with the Patent Cooperation Treaty (PCT) and the rules and regulations prescribed under the PCT.
Conclusion
The Patent Rules, 2003, provides for the provisions related to the Indian International Searching Authority. The Indian International Searching Authority provides the applicant to file for a single application to get a Patent granted in all the member countries. The Patent Cooperation Treaty also provide certain benefits also in regard to filing an international application for the grant of Patent. The process of filing an international application for the grant of Patent is long-lasting and time-taking. We at Corpbiz have trained professionals to guide you with the process of filing an application for the grant of Patent in India. Our professionals will help and assist you with the process of filing your application for grant of Patent and will ensure the timely and effective completion of your work.
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