Module 8 - Part 3 of 7

PCT & Madrid System

Master the international filing systems for patents (PCT) and trademarks (Madrid Protocol) - essential tools for protecting intellectual property across multiple jurisdictions efficiently and cost-effectively.

Duration: 75-90 minutes
8 Key Topics
10 Quiz Questions
Topic 1

PCT Filing Strategy Overview

The Patent Cooperation Treaty (PCT) is an international treaty administered by WIPO that provides a unified procedure for filing patent applications in multiple countries. Concluded in 1970 and operational since 1978, the PCT has become an indispensable tool for international patent protection.

What is the PCT?

The PCT is NOT an international patent - no such thing exists. Instead, it provides:

  • Centralized filing: One application, one language, one office
  • Deferred costs: Up to 30/31 months to decide where to seek national protection
  • International search: Prior art search by an International Searching Authority (ISA)
  • Preliminary examination: Optional preliminary patentability opinion
  • Standardized procedures: Same formality requirements for all designations
Key Concept: PCT Contracting States

As of 2024, the PCT has 157 contracting states, covering most commercially significant markets. India became a PCT member on December 7, 1998. Notable non-members include Taiwan (which uses a separate filing strategy) and some smaller jurisdictions.

Strategic Advantages of PCT

Extended Decision Time
Up to 30/31 months from priority date to enter national phase, compared to 12 months under Paris Convention alone. This provides time to assess commercial potential, secure funding, and refine claims.
Cost Deferral
National phase fees, translation costs, and local attorney fees are deferred until 30/31 months, allowing better cash flow planning.
Prior Art Assessment
International Search Report (ISR) and Written Opinion provide early indication of patentability before committing to national phase expenses.
Flexibility
Can add or remove designated countries during international phase; can abandon if ISR is unfavorable.

When NOT to Use PCT

  • Protection needed in only one or two countries - direct national filing may be more cost-effective
  • Urgent protection needed - PCT adds time before grant
  • Target countries are not PCT members
  • Budget constraints when international phase fees exceed benefit
PCT Article 3 - The International Application

"Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty."

Topic 2

PCT Chapter I and Chapter II

The PCT procedure is divided into two main phases: Chapter I (mandatory international phase) and Chapter II (optional international preliminary examination).

Chapter I - International Phase (Mandatory)

Step 1: Filing (Month 0)
File international application with Receiving Office (typically the applicant's national patent office, e.g., Indian Patent Office for Indian applicants). Claims priority from earlier filing if applicable.
Step 2: International Search (Months 0-16)
International Searching Authority (ISA) conducts prior art search and issues International Search Report (ISR) and Written Opinion (WO-ISA). Indian applicants can choose EPO, Austrian, Australian, or Indian Patent Office as ISA.
Step 3: International Publication (Month 18)
Application published by WIPO in PATENTSCOPE database with ISR. Provides provisional protection in some jurisdictions.
Step 4: National Phase Entry (Month 30/31)
Enter national phase in chosen countries before deadline. Most countries have 30-month deadline; some have 31 months.

Chapter II - International Preliminary Examination (Optional)

Chapter II provides an opportunity to obtain a preliminary examination before entering national phase:

  • Demand filing: Must be filed within 22 months from priority date (or 3 months from ISR, whichever is later)
  • Amendments: Opportunity to amend claims and respond to Written Opinion
  • IPER: International Preliminary Report on Patentability issued by IPEA
  • Strategic value: Additional time to strengthen application before national phase
Key Concept: Chapter II Decline

Chapter II usage has declined significantly in recent years. With the Written Opinion (WO-ISA) now effectively providing the same preliminary examination as Chapter II for most purposes, many applicants proceed directly to national phase after Chapter I. However, Chapter II remains valuable when significant claim amendments are needed or when facing complex prior art situations.

Key PCT Timelines

  • Month 0: Filing international application (claims priority if applicable)
  • Month 16: ISR and WO-ISA typically issued
  • Month 18: International publication
  • Month 22: Deadline to file Chapter II Demand
  • Month 28: IPER typically issued (if Chapter II elected)
  • Month 30/31: National phase entry deadline
Practical Tip: ISA Selection

Indian applicants can choose from multiple ISAs. The choice affects cost, quality, and speed of search. EPO is often preferred for its thorough search and credibility with other offices but is more expensive. The Indian Patent Office as ISA is cost-effective and has improved significantly in quality. The choice should consider the target markets and whether the ISA's opinion will influence national phase examination.

Topic 3

National Phase Considerations

The national phase is where the real patent prosecution begins. The international application becomes a bundle of national applications, each examined independently according to national law.

National Phase Entry Requirements

  • Timing: Within 30 or 31 months from priority date (varies by country)
  • Translation: Full application in national language where required
  • Fees: National filing fees, search fees (if required), examination fees
  • Appointment: Local patent agent/attorney in most jurisdictions
  • Declaration: Inventor declaration, assignment documents as required

India National Phase Specifics

Section 7(1A) - National Phase Entry in India

"Every international application under the Patent Cooperation Treaty for a patent, designating India shall be deemed to be an application under this Act, if a corresponding application has been filed before the patent office on its entry into the national phase under subsection (1B)."

Key considerations for India national phase:

  • Deadline: 31 months from priority date (or international filing date if no priority)
  • Language: English or Hindi acceptable
  • Examination request: Within 48 months from priority date
  • Section 8 compliance: Furnish details of corresponding foreign applications
  • Working requirements: Section 146 statement of working

Strategic National Phase Decisions

Country Selection
Consider markets, manufacturing locations, competitor activity, enforcement capability, and cost. Not all designated countries need to be entered.
Claim Strategy
Claims can be amended during national phase. Different claim strategies may be appropriate for different jurisdictions based on local law requirements.
Divisional Applications
Consider filing divisionals in key markets to protect different aspects of the invention or as a continuation strategy.
Patent Prosecution Highway (PPH)
Use PPH programs to accelerate examination based on positive results from other offices. India participates in PPH with Japan, USPTO, and others.
Key Concept: PCT-PPH in India

India participates in the PCT-PPH pilot program with Japan and the Global PPH with USPTO. Applicants with a positive Written Opinion or IPER can request accelerated examination in India. This can significantly reduce pendency and is particularly valuable for time-sensitive technologies.

Topic 4

Madrid Protocol for Trademarks

The Madrid System (comprising the Madrid Agreement and Madrid Protocol) provides a centralized system for international trademark registration. The Protocol, adopted in 1989 and operational since 1996, is the more widely used instrument.

Overview of Madrid System

The Madrid Protocol allows trademark owners to:

  • File one application in one language with one set of fees
  • Designate multiple contracting parties for protection
  • Manage registrations centrally through the International Bureau
  • Add designations to existing international registrations
Key Concept: India's Accession

India joined the Madrid Protocol on July 8, 2013, enabling Indian trademark owners to seek international protection through the Madrid System and allowing foreign trademark owners to designate India. This was a significant step in India's integration into the global trademark system.

How the Madrid System Works

Step 1: Basic Application/Registration
Must have a pending application or registration in the "Office of Origin" (home country trademark office).
Step 2: International Application
File through Office of Origin to WIPO International Bureau. Same mark, same owner, identical or narrower goods/services.
Step 3: WIPO Examination
International Bureau examines formalities and records in International Register.
Step 4: Designation Examination
Each designated office examines according to its national law. Can refuse within 12 or 18 months.
Step 5: Protection
If not refused, protection granted with same effect as national registration.

Advantages of Madrid System

  • Cost-effective: One application instead of multiple national filings
  • Simplified management: Central renewal, assignments, changes of name/address
  • Flexibility: Add countries at any time through subsequent designation
  • Uniform procedure: Same requirements across all designations
Madrid Protocol Article 3ter - Territorial Effect

"The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration."

Topic 5

International Registration Process

Understanding the detailed process of international trademark registration through the Madrid System is essential for effective trademark practice.

Filing Requirements

  • Basic mark: Must be identical to basic application/registration
  • Goods/services: Same or narrower than basic mark
  • Entitlement: Applicant must have real and effective establishment, domicile, or nationality in a Madrid member
  • Language: English, French, or Spanish
  • Fees: Basic fee + supplementary fee per class + individual designation fees

Examination by Designated Offices

Each designated office examines the international registration according to its national law:

Time Limit for Refusal
12 months from notification (18 months if office has made a declaration). India has made the 18-month declaration.
Grounds for Refusal
Same as for national applications - absolute and relative grounds (distinctiveness, prior rights, deceptiveness, etc.).
Provisional Refusal
Office notifies holder of refusal; holder can respond through local agent.
Statement of Grant
Some offices issue positive confirmation; others grant by default if no refusal issued.

India-Specific Procedures

  • Filing: Indian Trade Marks Registry acts as Office of Origin for outgoing applications
  • Examination: Standard examination for designated marks; same grounds as national applications
  • 18-month declaration: India has 18 months to issue provisional refusal
  • Opposition: Published for opposition; third-party opposition possible
  • Individual fees: India charges individual designation fees instead of complementary fee
Practical Consideration: Local Representation

While international applications can be filed without local agents in designated countries initially, responding to provisional refusals typically requires local representation. In India, a foreign holder must appoint an Indian trademark agent to respond to examination objections or opposition proceedings. This should be factored into the overall cost-benefit analysis.

Topic 6

Subsequent Designations

One of the Madrid System's key advantages is the ability to extend protection to additional countries after the initial international registration - this is called "subsequent designation."

How Subsequent Designation Works

  • Timing: Can be filed at any time during the life of the international registration
  • Scope: Same mark; goods/services can be same or narrower
  • Filing: Directly with WIPO International Bureau (not through Office of Origin)
  • Effect: Same as if designated from the start, but protection date is subsequent designation date
Key Concept: Strategic Use of Subsequent Designation

Subsequent designation is strategically valuable for:

  • Expanding into new markets as business grows
  • Adding countries that newly join the Madrid System
  • Avoiding upfront costs in countries where immediate protection is not essential
  • Responding to competitor activity in new territories

Limitations and Considerations

  • Priority: Cannot claim convention priority for subsequent designations (missed the 6-month window)
  • Backdating: Protection date is the subsequent designation date, not the original filing date
  • Prior rights: Third parties may have acquired rights in the interim
  • Dependency: Subsequent designations remain dependent on basic mark during dependency period

New Member Countries

When a country newly joins the Madrid Protocol, existing international registration holders can designate that country through subsequent designation. This occurred when India joined in 2013 - existing international registrations could designate India from that date forward.

Topic 7

Central Attack Vulnerability

The "central attack" or "dependency" concept is the primary disadvantage of the Madrid System. Understanding this vulnerability is crucial for trademark strategy.

What is Central Attack?

For the first five years, the international registration is dependent on the basic application/registration in the Office of Origin. If the basic mark is:

  • Refused
  • Withdrawn
  • Cancelled
  • Not renewed
  • Subject to final court decision invalidating it

...then the international registration (and all its extensions) is cancelled or restricted to the same extent.

Madrid Protocol Article 6 - Dependency

"(3) The protection resulting from the international registration may no longer be invoked... if, within five years from the date of the international registration, the basic application or the registration resulting therefrom... has been withdrawn, has lapsed, has been renounced or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration."

Key Concept: Transformation Right

Article 9quinquies provides a safety net: if the international registration is cancelled due to central attack, the holder has three months to transform the cancelled designations into national applications, retaining the original filing date. However, this requires filing and paying for separate national applications in each country - negating much of the Madrid System's cost advantage.

Mitigating Central Attack Risk

  • Strong basic mark: Ensure the basic application/registration is solid before filing internationally
  • Clear title: Resolve any ownership issues before international filing
  • Proper use: Maintain use of the basic mark to prevent cancellation for non-use
  • Renewal vigilance: Do not let the basic mark lapse inadvertently
  • Consider timing: Wait for basic mark to mature or register before international filing
  • Hybrid strategy: File nationally in critical markets alongside Madrid registration
Strategic Consideration: When to Avoid Madrid

In certain situations, direct national filing may be preferable to Madrid despite higher costs: (1) when the basic mark faces opposition or uncertainty; (2) when only one or two countries are needed; (3) when local filing provides strategic advantages (e.g., different owner, broader goods/services); or (4) when avoiding the five-year dependency is critical for business certainty.

Topic 8

India's Membership Status

India's participation in international IP filing systems has evolved significantly, reflecting its increasing integration into the global economy.

PCT Membership

Accession Date
December 7, 1998
Role as Receiving Office
Indian Patent Office accepts PCT applications from Indian nationals and residents.
Role as ISA/IPEA
Indian Patent Office became International Searching Authority and International Preliminary Examining Authority in 2013.
National Phase Deadline
31 months from priority date.

Madrid Protocol Membership

Accession Date
July 8, 2013
Individual Fees
India charges individual designation fees rather than complementary fees.
18-Month Declaration
India has declared an 18-month time limit for provisional refusal.
Opposition Declaration
India has made a declaration allowing refusal based on opposition after the 18-month period.

Other International Systems

  • Hague Agreement: India is NOT a member of the Hague System for industrial designs (as of 2024)
  • Lisbon Agreement: India is NOT a member of the Lisbon System for appellations of origin/GIs
  • Singapore Treaty: India is NOT a member of the Singapore Treaty on the Law of Trademarks
Key Concept: Impact on Indian Businesses

India's membership in PCT and Madrid Protocol has significantly benefited Indian businesses seeking international protection. PCT filings from India have grown substantially since accession. Indian IT, pharmaceutical, and manufacturing companies regularly use these systems to protect innovations globally. The availability of Indian Patent Office as ISA provides a cost-effective option for Indian applicants, while Madrid membership has simplified international trademark protection for Indian brands.

Statistics and Trends

  • India consistently ranks among the top 15 countries for PCT filings
  • Indian applicants increasingly use Madrid System for brand protection
  • Designations of India through Madrid have grown substantially since 2013
  • Indian Patent Office as ISA is used for both domestic and foreign PCT applications
Test Your Knowledge

Part 3 Quiz: PCT & Madrid System

Answer the following 10 questions to test your understanding of international filing systems.

Question 1 of 10
What is the standard deadline for entering the national phase under the PCT?
  • A) 12 months from priority date
  • B) 18 months from priority date
  • C) 30 or 31 months from priority date
  • D) 36 months from priority date
Explanation:
Under PCT Article 22, the standard deadline for entering the national phase is 30 months from the priority date. Some countries, including India, have extended this to 31 months. This compares favorably to the 12-month priority period under the Paris Convention alone.
Question 2 of 10
When did India become a member of the PCT?
  • A) 1970
  • B) 1998
  • C) 2005
  • D) 2013
Explanation:
India acceded to the PCT on December 7, 1998. This was part of India's broader engagement with international IP systems following TRIPS implementation. India joined the Madrid Protocol later in 2013.
Question 3 of 10
What does the International Search Report (ISR) provide?
  • A) Prior art search results and citation of relevant documents
  • B) Final decision on patentability
  • C) Grant of international patent
  • D) Determination of patent term
Explanation:
The ISR is a search report prepared by the International Searching Authority (ISA) that cites documents (prior art) considered relevant to the claimed invention. It is accompanied by a Written Opinion on patentability. Neither constitutes a final decision - that occurs during national phase examination.
Question 4 of 10
What is the "central attack" vulnerability in the Madrid System?
  • A) Risk of trademark being copied in foreign countries
  • B) Requirement to defend the mark in all designated countries
  • C) High cost of international registration
  • D) Cancellation of international registration if basic mark fails within 5 years
Explanation:
Central attack refers to the dependency of the international registration on the basic mark for the first five years. If the basic application or registration in the Office of Origin is refused, withdrawn, cancelled, or invalidated during this period, the international registration is also cancelled to the same extent.
Question 5 of 10
When did India accede to the Madrid Protocol?
  • A) 1998
  • B) 2005
  • C) 2013
  • D) 2017
Explanation:
India acceded to the Madrid Protocol on July 8, 2013. This enabled Indian trademark owners to file international applications through the Madrid System and allowed foreign trademark owners to designate India in their international registrations.
Question 6 of 10
What is the deadline for filing a Chapter II Demand under PCT?
  • A) 16 months from priority date
  • B) 22 months from priority date (or 3 months from ISR, whichever is later)
  • C) 30 months from priority date
  • D) 12 months from international publication
Explanation:
Under PCT Article 39 and Rule 54bis, the Chapter II Demand must be filed within 22 months from the priority date, or three months from the transmittal of the ISR and Written Opinion to the applicant, whichever expires later.
Question 7 of 10
What is a "subsequent designation" in the Madrid System?
  • A) Adding countries to an existing international registration
  • B) Filing a new international application
  • C) Replacing a basic mark with a new one
  • D) Transferring the registration to a new owner
Explanation:
A subsequent designation allows the holder of an international registration to extend protection to additional contracting parties at any time during the life of the registration. This provides flexibility to expand protection as business needs evolve, without filing a new international application.
Question 8 of 10
What is the transformation right under the Madrid Protocol?
  • A) Right to change the goods/services covered
  • B) Right to assign the registration
  • C) Right to change the mark's appearance
  • D) Right to convert cancelled international registration into national applications
Explanation:
Under Article 9quinquies, if an international registration is cancelled due to central attack, the holder has three months to transform the cancelled designations into national applications in the relevant countries, retaining the original filing date. This provides a safety net against total loss of protection.
Question 9 of 10
How long does India have to issue a provisional refusal for Madrid designations?
  • A) 6 months
  • B) 12 months
  • C) 18 months
  • D) 24 months
Explanation:
India has made a declaration under Madrid Protocol Article 5(2)(b) extending the time limit for issuing a provisional refusal from 12 months to 18 months. This allows adequate time for examination and any opposition proceedings.
Question 10 of 10
When is a PCT international application published?
  • A) Immediately upon filing
  • B) 18 months from priority date
  • C) 30 months from priority date
  • D) Upon national phase entry
Explanation:
Under PCT Article 21, international applications are published by WIPO promptly after the expiration of 18 months from the priority date. Early publication can be requested. Publication is in the PATENTSCOPE database and provides provisional protection in some jurisdictions.