What is Better – Filing of Patent in Inventors’ Own Country Or Through PCT Route?
If you have an invention, which is patentable and can be reduced to practice, then what is better? Filing of patent in the inventors’ own country and then filing through PCT route or filing directly through PCT route? This article takes you through some of the cases, which can decide on patentability strategies concerned with market potential.
A patent is a territorial right or monopoly given by a state (authority) to an inventor against the complete disclosure of the invention. Patent grants the right to the inventor to prevent others from use, manufacture, and sale of the invention in that territory for a stipulated time period. It does not however include the right for the inventor themselves to practice the invention as this may be limited by legislation, regulations or the existence of another dominating patent.
Whilst there is no such entity as a ‘World Patent’, it is possible
to file a single international application thanks to the Patent Cooperation Treaty (PCT) which can then be used as the basis for patent applications in over 130 contracting states (including the European regional route). The main benefit of the PCT route is that it defers the more expensive national filing decisions to 2.5 years after the initial filing date, thereby allowing more time to seek a commercial backer.
The answer to this lies on viewing the commercial aspect of the invention.
First, when do you want to start to commercialize or reduce your invention to practice and second where do you want to commercialize. Also, fees for maintenance and national phase entry fees through PCT route play an important part in deciding filing your patent strategy.
Consider following case studies:
Case I: You (as an inventor) want to only commercialize your invention in your own country and not in other countries.
In this case, it is better to go for filing in your own country. If you are ready with your invention then go for Express filing route so that your patent gets granted as early as possible (might be in 6-9 months time). It wont be a good idea to commercialize the idea first and then filing for a patent as it can become a basis of invalidation of your own patent due to early commercialization.
If you need time for commercialization (say around 2 years), then go for normal filing procedure in India, as during the time your patent gets granted, your idea will be reduced to practice and will be ready for commercialization.
This strategy is adopted by many of the small assignees in Asia (specifically China, Korea, Japan). Many assignees in Asia specifically go for their country-based filing and grant procedure, as they just want monopoly in their own country, reason is that they only want monopoly in their own country or other neighboring countries. They donot want to explore other countries as there may be high fees/taxes or hassles during import/export.
Case II: Your product is ready to get commercialized and have high market potential in your own country but you need time to evaluate the potential of other countries.