The post is in the form of a e-mail conversation between a client, Mr. X, who wishes to obtain a patent for his invention in India, and Mr. L&P, an Indian patent attorney. Mr. X, a U.S. citizen, has already filed a patent application at the USPTO (Patent application number: 2017/12345, Filing date: 21/06/2017) and has thus approached Mr. L&P to advise him on how to protect his invention in India as well.
This is the first post in a series of posts about how to file a national phase PCT patent application in India.
Client ‘s mail:
Dear Mr. L&P,
I got to know about your practice from a friend of mine for whom you had successfully prosecuted a patent few years back. I have already filed a patent application here in U.S. and wish to protect my invention in India also. Kindly advise me about the procedure and timeline followed in your jurisdiction. The details of my patent application are as follows:
- Patent application number: 2017/12345,
- Filing date: 21/06/2017
Dear Mr. X,
We note that you have filed an application for a patent with the United States Patent Office (Patent application number: US2017/12345, Filing date: 21/06/2017). As per our discussion, we understand that this is your first patent application and therefore, it does not claim priority from any other earlier application. Please note that the filing date will be taken up as the priority date for all the corresponding applications outside the U.S.
Please be advised that there are two ways in which one can file a corresponding patent application in India. Firstly, you may choose to file the patent application in India via the Paris route. An advantage of utilizing this procedure is that you will have the liberty to file the corresponding application in India within 12 months from the filing date of the US patent application, thereby giving you the benefit in India of claiming the priority date of the US application. Secondly, you may choose to file the patent application in India via the PCT route. An added advantage of this is that you will have the liberty to file the corresponding patent application in India within 31 months from the date of filing the US application.
Please note that both these routes are mutually exclusive of each other, and one can only opt for any one of these two routes.
We would suggest you to go by the PCT route, it being the de facto route as per our practice. Furthermore, it has an additional advantage of being simpler, easier and cost effective than the other two routes.
*This post shall not in anyway constitute a legal advise.*
Picture from here.