Dear Sir, all your videos are really helpful. I have one doubt…..1). If we file direct PCT application and then enter India as designating state during national phase….Do we still have to file Form 25… FFL? 2) If we file provisional patent application in India and within 12 months file pct…and later file pct national phase…What is priority date of such?…Is it from International filing or from provisional filing?
Hello - You can't file PCT directly without obtaining FFL from Patent Office (even when India is the receiving office). 2: Priority date is always your first filing date - in your case the provisional application.
Thanks sir…Means date of filing for PCT national phase application will be International filing date ( section 45) only if priority is not claimed? And term will be calculated from international application otherwise term will be from application claiming priority ?
@@ranjanabhandari3227 very good query, because this is where the term of international application is treated differently from conventional application. The term of patent is always calculated from international filing date irrespective of the priority date. I have emphasized this fact in one of the videos where I talk about Dates.
@@AbhayPorwal Sir, from which date the term of conventional application is considered? I have doubt in the following question (2016 paper 1): an application residing in UK, files a patent application in India claiming priority from the first application in UK. What will be the term of patent granted in India? To my suprise, answer given in the official answer key is: 20 years from the date of filing the application in India. Shouldn't it be 20 years from the date of filing of the priority application?
@@travel_tales99 Hello, term of the patent is 20 years from Indian filing date for conventional application and 20 yeats for the international application date (pct filing date) for national phase application. I have categorically described this in one of my videos that deals with "Date of applications'
Sir, your explantion is the best. You r presentation is crisp and insightful. I am going to attend patent agent exam 2022 and your all videos helped me a lot. I hope I can be able to qualify. A big thanks to you for the effort that you have put in for making such an excellent insightful video's . Thanks a lot once again.
Sir.. just wanted to know whether following are true in respect of international applications: 1. Any branch shall be the appropriate office for dealing with IB, ISA and IPEA instead of the earlier mentioned Delhi branch. 2. Only duplicate copies need to be submitted now instead of the earlier mentioned triplicate copy. If yes, which two needs to be submitted in that case ?
For first, I Delhi Branch is the appropriate branch. 2. Since the filing happens online these days, you are not required to worry about these copies any more.
Please explain sir" pct application can be filed with or without claiming priority" what is claiming priority ? and " in case A PRIORITY IS CLAIMED the pct application needs to be filed within 12 months from the earliest priority date". Also explain a little.
A PCT application (an International application) can be the "first application" for the invention - in this case, we don't have any prior filed application by the applicant - hence no priority is claimed (earlier filed dates) - how to file PCT application - you can directly file with PCT (IB) or with any receiving office such India, US. Another case, when you have already filed a first application in any of the countries such as India, US, EP OR Japan for example, now if you wish to file a PCT application - you have to file PCT application within 12 months from the filing date of the first application that was filed on the invention - because we are claiming priority of the first filed date. Understood?
@@vijaysingh-qn9hj Filing date of PCT application will be always be the date on which it is filed with PCT. Priority date will be that of the first filed application.
Hi Sir, If set of applications with varying dates filed in one country, can we file PCT application in another country taking multiple priorities from that country? Like convention application
Shilpi, in case of PCT, it is form 18 and express prosecution - where we have chosen India as ISA or IPEA. For expedited examination, it is form 18A. I hope this is clear.
One questions which is eating me on term of patent. 1) filed direct cs on 1.1.2020, filed pct on 1.1.2021 then entered pct countries on 1.1.2022. what will be my term of patent application entered pct countries (which year to which year) Do i get 20 years from international filing date (i.e pct date) which means i get additional one year from indian filing date ... Kindly advise
Oh my god!! If one that I have answered like a million time is this one!! We are talking about Indian national phase application here, because our parents act can't talk about other countries. In case you are talking about Indian national phase application, than, the term of patent is calculated from PCT filing date. Is that clear? Will you get jt wrong ever again? In case of a convention application entered in India, the term of patent is calculated from Indian filing date.
Hello Sir, As per rule 18, Receiving office, designated office and elected office shall be the appropriate office as per rule 4. I have understood as a Receiving office i have to file my application whether i resides or domicile or invention origin. Suppose I belong to mumbai and I opted mumbai as RO but i can't choose mumbai as an elected office (IPEA) bcoz only delhi office perform that action. Then how can i justify rule 18??? Why they mentioning designated and elected office along with RO as per rule 4??
In India, Delhi Patent Office functions as the receiving office. Destination is not with regards to who will perform search or examination, designation is an indication of where all do you wish to file the national phase application - in that case you will choose India (and not one of the branches) - also you select ISA for conducting the searching - if you select India, than, Delhi picks up your application - similarly, IPEA is Delhi In india. Elected countries are the ones who would receive your Examination report from IPEA. Please don't confuse with Indian branch offices.
Sir I am not getting the point from point 4:39.... What is full form of IPAS What is this national phase .. Pls explain me Sir From yesterday I watched many times
So let's start with basics, you need to file applications in multiple countries in case you require protection in other countries. So one way to do is to file applications in all these countries individually (without PCT route) in that cas, you would be knowing that we need to file these applications within 12 months from our first filing date. But 12 months may not be enough time for arranging funds or deciding whether you want all these countries. So, how do you get more time? By opting for PCT route - you file the PCT application (international application) within 12 months from your first filing date - now once you do it - you get additional time.. instead of earlier 12 months, you have 30/31 months of over-all time to file applications in other countries without losing priority date ( first filing date - original invention date) - when you start filing application in these other countries - this is called "National Phase" application. Now please see the slide from 04:39 onwards again.
Now I clearly understood about PCT, but after entering into national phase , what is the procedure, i think again v have to file F1,2,3,5,26,18 and have to pay fee. Is it correct? Plz
One more doubt sir plz clarify U/R 20(4)(i). Examination request filed in 18 months, before 31 month of filing date,but after entering into national phase only ,v must follow Indian patent Act 1970, i mean that how the First schedule can be followed at the period of the international application ?
@@AbhayPorwal sorry sir , small correction in my question that examination request filed by form 18 as per rule 20(4)(i), before 31 months for PCT, but while national phase only v have to follow first schedule that is form 18 ryt sir
What is the difference between isa and ipea??As both r providing the details about the patentability of the invention,what's the need for two authorities although one is optional??
The ISA is responsible for an initial examination, while the IPEA performs a more comprehensive evaluation of the patent application. ISR (ISA-issued report) includes a citation of any documents considered relevant to the claims, among other things. There is no provision for the applicant to respond to the ISR, the applicant may amend the claims of the international application. ISA, on the basis of ISR, establishes a written opinion - a non‑binding opinion as to the patentability of the invention. If no demand is filed for IPER, then the above opinion from ISA is considered as the International Preliminary Report on Patentability by IB (Chapter 1) If a demand is filed (Chapter 2) for IPER, a report is prepared containing a non‑binding opinion on the patentability of the invention whether it satisfies the criteria of novelty, inventive step, and industrial applicability, with citation of the relevant documents. In short, IPER is a more extensive report as compared to the Written opinion issued by ISA. One may want to evaluate their invention before deciding on the national phase countries so as to save time/effort/money.
From the first filing date - could be a provisional application or a regular application or a conventional application - you need to file the PCT application within 12 months.
Dear Sir, all your videos are really helpful. I have one doubt…..1). If we file direct PCT application and then enter India as designating state during national phase….Do we still have to file Form 25… FFL? 2) If we file provisional patent application in India and within 12 months file pct…and later file pct national phase…What is priority date of such?…Is it from International filing or from provisional filing?
Thank you sir for giving such a detailed video about PCT
So nice of you
Thankyou very much, i got my one answer correct because of your explanation about partially disclosed inventions in two applications
Amazing Rachna! All the best.
I googled it i found united republic of Tanzania is providing 20 month time frame
Countries which provide 20 month time limit for entering national phase are Luxembourg and Tanzania.Pls correct me if I m wrong?
I cross checked that with WIPO and your information is accurate.
Dear Sir, all your videos are really helpful. I have one doubt…..1). If we file direct PCT application and then enter India as designating state during national phase….Do we still have to file Form 25… FFL? 2) If we file provisional patent application in India and within 12 months file pct…and later file pct national phase…What is priority date of such?…Is it from International filing or from provisional filing?
Hello - You can't file PCT directly without obtaining FFL from Patent Office (even when India is the receiving office). 2: Priority date is always your first filing date - in your case the provisional application.
Thanks sir…Means date of filing for PCT national phase application will be International filing date ( section 45) only if priority is not claimed? And term will be calculated from international application otherwise term will be from application claiming priority ?
@@ranjanabhandari3227 very good query, because this is where the term of international application is treated differently from conventional application. The term of patent is always calculated from international filing date irrespective of the priority date. I have emphasized this fact in one of the videos where I talk about Dates.
@@AbhayPorwal Sir, from which date the term of conventional application is considered?
I have doubt in the following question (2016 paper 1):
an application residing in UK, files a patent application in India claiming priority from the first application in UK. What will be the term of patent granted in India?
To my suprise, answer given in the official answer key is: 20 years from the date of filing the application in India.
Shouldn't it be 20 years from the date of filing of the priority application?
@@travel_tales99 Hello, term of the patent is 20 years from Indian filing date for conventional application and 20 yeats for the international application date (pct filing date) for national phase application. I have categorically described this in one of my videos that deals with "Date of applications'
Thank you sir for making this video...
Welcome!
Sir, your explantion is the best. You r presentation is crisp and insightful. I am going to attend patent agent exam 2022 and your all videos helped me a lot. I hope I can be able to qualify. A big thanks to you for the effort that you have put in for making such an excellent insightful video's . Thanks a lot once again.
Sir, if you don't mind, may I know where do you work.
@@dasp311279 I work for IPpro.
Thank you for the insightful video..
Glad it was helpful!
Sir, throughout the video u didn't mention any rule no 19,19A etc.Remembring rule no for this topic is not important from exam point of view?
If you can remember and recall, it's fine. But, for me, if you can write the entire PCT filing process, that's more important.
Sir.. just wanted to know whether following are true in respect of international applications:
1. Any branch shall be the appropriate office for dealing with IB, ISA and IPEA instead of the earlier mentioned Delhi branch.
2. Only duplicate copies need to be submitted now instead of the earlier mentioned triplicate copy.
If yes, which two needs to be submitted in that case ?
For first, I Delhi Branch is the appropriate branch.
2. Since the filing happens online these days, you are not required to worry about these copies any more.
Please explain sir" pct application can be filed with or without claiming priority" what is claiming priority ? and " in case A PRIORITY IS CLAIMED the pct application needs to be filed within 12 months from the earliest priority date". Also explain a little.
A PCT application (an International application) can be the "first application" for the invention - in this case, we don't have any prior filed application by the applicant - hence no priority is claimed (earlier filed dates) - how to file PCT application - you can directly file with PCT (IB) or with any receiving office such India, US.
Another case, when you have already filed a first application in any of the countries such as India, US, EP OR Japan for example, now if you wish to file a PCT application - you have to file PCT application within 12 months from the filing date of the first application that was filed on the invention - because we are claiming priority of the first filed date.
Understood?
@@AbhayPorwal ok sir got it, sir what will be filing date of pct application for 2nd case. First filed ordinary then filed pct within 12 months.
@@vijaysingh-qn9hj Filing date of PCT application will be always be the date on which it is filed with PCT. Priority date will be that of the first filed application.
@@AbhayPorwal ok sir, now it is clear. Thank you very much. Pct filing date is first filied application in pct. Not depend upon ordinary filing date.
Sir, this means that IPEA and ISA can be the same receiving office?
Welcome back:-)
Yes, definitely
@@AbhayPorwal 😅 just revising. Thank you.
Helpful
All the best.
Hi Sir,
If set of applications with varying dates filed in one country, can we file PCT application in another country taking multiple priorities from that country? Like convention application
There is no concept of varying priority date in PCT - you take one priority.
@@AbhayPorwalso we can not file pct application taking priority from the earliest filing date?
sir,which form you said for express prosecution =form 18 or 18A?
18A, Shilpi.
@@AbhayPorwal sir that is for expedited i guess
Shilpi, in case of PCT, it is form 18 and express prosecution - where we have chosen India as ISA or IPEA. For expedited examination, it is form 18A.
I hope this is clear.
@@AbhayPorwal yes sir,thanks🙏
Very helpful
Thank you for the appreciation.
One questions which is eating me on term of patent.
1) filed direct cs on 1.1.2020, filed pct on 1.1.2021 then entered pct countries on 1.1.2022. what will be my term of patent application entered pct countries (which year to which year)
Do i get 20 years from international filing date (i.e pct date) which means i get additional one year from indian filing date ...
Kindly advise
Oh my god!! If one that I have answered like a million time is this one!!
We are talking about Indian national phase application here, because our parents act can't talk about other countries.
In case you are talking about Indian national phase application, than, the term of patent is calculated from PCT filing date. Is that clear? Will you get jt wrong ever again?
In case of a convention application entered in India, the term of patent is calculated from Indian filing date.
Hello Sir, As per rule 18, Receiving office, designated office and elected office shall be the appropriate office as per rule 4. I have understood as a Receiving office i have to file my application whether i resides or domicile or invention origin. Suppose I belong to mumbai and I opted mumbai as RO but i can't choose mumbai as an elected office (IPEA) bcoz only delhi office perform that action. Then how can i justify rule 18??? Why they mentioning designated and elected office along with RO as per rule 4??
In India, Delhi Patent Office functions as the receiving office. Destination is not with regards to who will perform search or examination, designation is an indication of where all do you wish to file the national phase application - in that case you will choose India (and not one of the branches) - also you select ISA for conducting the searching - if you select India, than, Delhi picks up your application - similarly, IPEA is Delhi In india.
Elected countries are the ones who would receive your Examination report from IPEA.
Please don't confuse with Indian branch offices.
Sir I am not getting the point from point 4:39....
What is full form of IPAS
What is this national phase ..
Pls explain me Sir
From yesterday I watched many times
So let's start with basics, you need to file applications in multiple countries in case you require protection in other countries. So one way to do is to file applications in all these countries individually (without PCT route) in that cas, you would be knowing that we need to file these applications within 12 months from our first filing date. But 12 months may not be enough time for arranging funds or deciding whether you want all these countries. So, how do you get more time? By opting for PCT route - you file the PCT application (international application) within 12 months from your first filing date - now once you do it - you get additional time.. instead of earlier 12 months, you have 30/31 months of over-all time to file applications in other countries without losing priority date ( first filing date - original invention date) - when you start filing application in these other countries - this is called "National Phase" application. Now please see the slide from 04:39 onwards again.
Now I clearly understood about PCT, but after entering into national phase , what is the procedure, i think again v have to file F1,2,3,5,26,18 and have to pay fee.
Is it correct? Plz
Yes, it is called national phase - but all other formalities remain just the SAME!
Thank u sir
One more doubt sir plz clarify
U/R 20(4)(i). Examination request filed in 18 months, before 31 month of filing date,but after entering into national phase only ,v must follow Indian patent Act 1970, i mean that how the First schedule can be followed at the period of the international application ?
@@shanthalakshmik6884 sorry didn’t
Understand your query. Please break down your question.
@@AbhayPorwal sorry sir , small correction in my question that examination request filed by form 18 as per rule 20(4)(i), before 31 months for PCT, but while national phase only v have to follow first schedule that is form 18 ryt sir
Sir, What is Transmittal fee in PCT application? Please explain sir.
As the name suggests - this is the fee for “transmitting” your application to the international bureau.
What is the difference between isa and ipea??As both r providing the details about the patentability of the invention,what's the need for two authorities although one is optional??
The ISA is responsible for an initial examination, while the IPEA performs a more comprehensive evaluation of the patent application.
ISR (ISA-issued report) includes a citation of any documents considered relevant to the claims, among other things. There is no provision for the applicant to respond to the ISR, the applicant may amend the claims of the international application.
ISA, on the basis of ISR, establishes a written opinion - a non‑binding opinion as to the patentability of the invention.
If no demand is filed for IPER, then the above opinion from ISA is considered as the International Preliminary Report on Patentability by IB (Chapter 1)
If a demand is filed (Chapter 2) for IPER, a report is prepared containing a non‑binding opinion on the patentability of the invention whether it satisfies the criteria of novelty, inventive step, and industrial applicability, with citation of the relevant documents.
In short, IPER is a more extensive report as compared to the Written opinion issued by ISA. One may want to evaluate their invention before deciding on the national phase countries so as to save time/effort/money.
@@AbhayPorwal thanks a lot Sir..
What is the meaning of sentence "priority is claimed then u can file within 12 months"
From the first filing date - could be a provisional application or a regular application or a conventional application - you need to file the PCT application within 12 months.
Dear Sir, all your videos are really helpful. I have one doubt…..1). If we file direct PCT application and then enter India as designating state during national phase….Do we still have to file Form 25… FFL? 2) If we file provisional patent application in India and within 12 months file pct…and later file pct national phase…What is priority date of such?…Is it from International filing or from provisional filing?
This question appeared twice, I have answered it somewhere else - i hope you have got your answer.