The Patent Cooperation Treaty in Indian Practice

1The Patent Cooperation Treaty (PCT), administered by the WIPO was signed in Washington on 19 June 1970. It had as its objects, inter alia, ‘simplifying and rendering more economical the obtaining of protection for inventions where protection is sought for in several countries’. (Patents Act 1970, s 2(1)(oa).) Like the Paris Convention, the PCT enables the applicant to claim priority from the date of filing the application. The provisions of the PCT are not in derogation of the Paris Convention and as such shall not be interpreted to diminish any rights under the Paris Convention. (Patent Co-operation Treaty, art 1(2).) An application preferred as a single international application in one of the receiving offices will have the right of priority from the date of filing. (Ibid, arts 8 and 10.) As a signatory to the PCT, India aligned its laws to the obligations under the PCT through the Patents (Amendment) Act 2002. The said amendment provided that every international application filed under the PCT designating India shall be deemed to be an application made under the Act. (Patents Act 1970, s 7(1A).) Chapter III of the Patents Rules 2003 enumerates the details of international applications under the PCT. (Patents Rules 2003, rr 17 to 23.)

Post-filing Amendments

2The PCT application is usually amended to take care of the requirements in the local patent law. In Allergan v Controller of Patents (2023) (para 12) the Delhi High Court noted that since different countries have different patent regimes, it will be impossible to expect that the claims in the original PCT application will be patentable in every designated country.

3But sometimes the amendments made at the national office may not help to get over the objections in the local law. In Geron v Assistant Controller of Patents and Designs (2026) the Delhi High Court held that “It is also pertinent to note that the Controller in the impugned order has taken note of the original PCT Claims to understand the nature and scope of the claims of the Subject Patent Application”, and that the Controller, having compared the amended claims “with corresponding claims of the PCT application”, concluded “that the change in the language of the amended claims does not affect the substance of the subject matter covered in the claims”, an analysis which “is correct and merits no interference” (para 31).