Convention Route vs PCT Route: Filing Abroad From India
An Indian applicant who wants protection outside India has two established ways to get there. The convention route uses the Paris Convention priority right: you file directly in each country you want, within twelve months of your first application. The PCT route uses the Patent Cooperation Treaty: you file one international application, and the decisions about individual countries come much later.
Both routes start from the same place, an Indian filing, and both preserve the same priority date. What differs is when you have to name countries, when you have to pay for them, and how much information you have before you commit. That is why the choice is usually described as a cash flow and information question rather than a legal one.
There is also a step that applies whichever route you take. Section 39 of the Patents Act, 1970 restricts residents of India from applying abroad without first dealing with the Indian position, and section 8 requires information about foreign applications to be given to the Indian Controller. Ignoring either creates a ground on which an Indian patent can later be revoked. This page compares the two routes and flags the Indian obligations that sit behind both.
Side by side
| Question | Convention route | PCT route |
|---|---|---|
| What you file | A separate national application in each country you want, each claiming priority from your Indian application. | One international application, filed once, which has effect in the contracting states you may later enter. |
| Legal basis in India | Sections 133 to 139 of the Patents Act deal with convention countries and convention applications. | The Patents Rules deal with international applications, the Indian receiving office and entry into the national phase in India. |
| Deadline to act | Twelve months from the first application to file in each convention country. | Twelve months to file the international application, then thirty-one months from priority to enter the national phase in India and comparable periods elsewhere. |
| When you must name countries | At the twelve-month mark, when each national filing is made. | Much later, when national phase entry falls due, so the decision is deferred. |
| When the main cost lands | Early. Translation, local agents and national fees for every country arrive together at twelve months. | Later. A single set of international fees at the start, with the country-by-country spend deferred to national phase entry. |
| Information available before you commit | Whatever search you have arranged privately, plus anything from the Indian file. | An international search report and a written opinion on novelty, inventive step and industrial applicability, before national phase spending begins. |
| Publication | Each national office publishes according to its own law; in India publication is at eighteen months. | The international application is published internationally at eighteen months from priority, in addition to any later national publication. |
| Ability to refine claims | Amendment happens separately in each national office under that country's rules. | The international phase allows amendment before the national phase, so one set of changes can be carried into several countries. |
| Country coverage | Any convention country, but each one has to be filed in individually. | Only PCT contracting states, though that covers most commercially significant jurisdictions. |
| Countries outside the system | The only route where a target country is not a PCT contracting state. | Not available for a country that has not joined the treaty; a direct filing is needed there. |
| Number of local agents needed at the start | One in every country, from the twelve-month mark. | None beyond the receiving office, until national phase entry. |
| Speed to grant | Faster, because national examination can begin sooner. | Slower overall, because the international phase adds time before national examination starts. |
How the convention route works
The Paris Convention gives an applicant who has filed in one member country a right of priority in the others. India recognises this through the convention application provisions of the Act. If you file in India in January, you have twelve months to file in each convention country you want, and those later filings are treated as if they were made on your Indian date for the purposes of novelty and inventive step.
The mechanics are straightforward. Each national application is a real application in that country from day one. It gets a number, it is subject to that country's formalities, and it will be examined under that country's law. Translations, local representation and national fees all become due at the point of filing.
The Act also allows priority to be claimed from more than one earlier application where different parts of the invention were disclosed at different times, and there are supplementary provisions dealing with how convention applications are treated for other purposes under the Act.
How the PCT route works
The Patent Cooperation Treaty does not grant an international patent. There is no such thing. What it provides is a single filing that counts as a filing in every contracting state, followed by a long window in which to decide which of those states you actually want.
An Indian applicant can file the international application with the Indian Patent Office acting as receiving office. An International Searching Authority then produces a search report and a written opinion on whether the claims look new, inventive and industrially applicable. India has designated authorities for both search and preliminary examination, so this work can be done domestically.
The application is published internationally at eighteen months from priority. The applicant can amend the claims during the international phase. Entry into the national phase in India falls due at thirty-one months from the priority date, and other countries operate on comparable periods that must be checked individually.
The written opinion is the quiet advantage of this route. An applicant who receives a negative opinion at eighteen months can abandon or narrow before spending on translations for eight countries.
Section 39: the step that comes before either route
Residents of India cannot simply file abroad. Section 39 requires either written permission from the Controller for making an application outside India, or that an application for the same invention has already been filed in India and the period the section specifies has passed without any secrecy direction being issued.
The request for permission is made in the manner set out in the Rules. It matters most for applicants who want to file first in another country, for example because a foreign parent company or a foreign co-inventor is driving the programme.
The consequence of ignoring it is serious. Contravention of the foreign filing restriction is one of the grounds on which an Indian patent can be revoked under section 64, and the Act also contains penal provisions in this area. Where inventors sit in more than one country, this question should be settled before anything is filed anywhere.
Section 8: the obligation that continues afterwards
Once you have filed abroad, section 8 requires you to keep the Indian Controller informed. There are two limbs. One is a statement of the foreign applications for the same or substantially the same invention, together with an undertaking to keep it updated. The other is an obligation to furnish details about the processing of those foreign applications if the Controller asks for them.
The obligation is continuing, not a single form filed once. It runs while the Indian application is pending, and applicants running a PCT family across several countries have the most to keep track of.
Failure to comply is a stated ground of revocation and has been the point on which real patents have been lost. Whichever foreign filing route you choose, this is administrative work that has to be maintained.
Using both routes together
The routes are not mutually exclusive, and mixed strategies are common. An applicant may file directly in one or two markets that matter most, using the convention route to get examination moving there, while filing a PCT application to keep the rest of the world open.
That approach costs more at twelve months than a pure PCT filing but less than filing everywhere directly, and it gets early rights where they are commercially needed. It also gives an early examination report from one office, which is useful intelligence for the rest of the family.
The one thing that does not change is the twelve-month priority date. Whatever combination you choose, the decision to use it has to be made inside that year.
Which one applies to you
Convention route
- You already know the small set of countries you want, and the list will not change.
- You need rights and examination to start early in a key market, for example because of an imminent product launch or a licensing negotiation.
- A target country is not a PCT contracting state, so a direct filing is the only way in.
- Budget is available now and deferring spend brings no advantage.
PCT route
- The country list is still open and depends on funding, partners or market response.
- You want an international search report and written opinion before committing to translations and local agents.
- Cash flow favours a single payment now and country-by-country spending later.
- The invention is still developing commercially and an extra eighteen months of thinking time has real value.
Where people go wrong
- Believing the PCT gives you an international patent. It gives you a single application and a deferred decision; every patent is still granted country by country.
- Treating the twelve-month priority period as extendable. Whichever route you choose, the decision to use the priority right has to be made inside that year.
- Filing abroad first without dealing with section 39. Contravening the foreign filing restriction is a stated ground of revocation of the Indian patent.
- Filing the section 8 statement once and forgetting it. The obligation to keep the Controller informed continues while the Indian application is pending.
- Assuming national phase deadlines are the same everywhere. India is at thirty-one months from priority, but other countries operate their own periods and each has to be checked.
Two founders, two different answers
The scenario below is a simplified illustration and describes nobody in particular. Both file in India in March. Rohan Deshpande runs a diagnostics startup in Bengaluru with a signed distribution agreement in Germany and an order pipeline in the United States. He knows his two markets, he needs examination underway before the launch, and he has funding. He uses the convention route and files directly in both countries the following February, inside the twelve months. Anjali Bhatt makes industrial coatings in Surat and has interest from buyers in six countries, none of it committed. She files an international application under the PCT instead. At eighteen months the written opinion tells her two of her broad claims will not survive, so she narrows them, drops three countries that no longer look worth it, and enters the national phase in the remaining three at thirty-one months. Same priority date, same law, two different commercial situations.
Simplified illustration only. Actual outcomes depend on the facts.
Questions people ask
Is there such a thing as an international or worldwide patent?
No. The PCT gives you a single international application and a single search, but there is no international patent. Every patent is granted by a national or regional office under its own law, and each one can be granted, refused, opposed or revoked independently. What the PCT actually buys you is time and information: one filing that holds your place in the contracting states, an international search report and written opinion, and the ability to defer the country-by-country decision and spend until national phase entry.
Does the PCT route cost more than the convention route?
It usually costs more in total if you only ever want two or three countries, because you pay international fees on top of national fees. It usually costs less if you want many countries or if some of them fall away, because the international phase lets you drop them before spending on translations and local agents. Fees payable in India are those set out in the First Schedule and international fees are set separately, so both should be checked against the current instruments before any comparison is made.
Can I enter the national phase in India from my own PCT application?
Yes. An Indian applicant who files an international application designating India can enter the Indian national phase at thirty-one months from the priority date. From that point the application is processed under the Patents Act like any other, with publication, a request for examination and an examination report. Applicants sometimes use this deliberately to defer Indian examination cost. The trade-off is that the Indian patent, once granted, still runs for twenty years from the international filing date, so deferral shortens the commercially useful life.
Do I need permission before filing abroad if I have already filed in India?
Section 39 allows an Indian resident to file abroad without separate permission where an application for the same invention has already been made in India, the period specified in the section has passed, and no secrecy direction has been issued in relation to it. If you want to file abroad first, or sooner than that, written permission from the Controller is needed. The exact period and the manner of applying are set out in the Act and Rules and should be checked, because the consequence of getting it wrong is a ground of revocation.
What has to be told to the Indian Controller about foreign filings?
Section 8 has two parts. The first is a statement setting out applications for the same or substantially the same invention filed outside India, with an undertaking to keep the Controller informed of later filings. The second is an obligation to furnish details of the processing of those applications if the Controller requires it. The obligation continues while the Indian application is pending, so it needs a system rather than a one-time filing. Failure to comply is a stated ground of revocation under section 64.
Planning foreign filings from India this year?
MYCrave Consultancy works through your country list, your priority deadline and the section 39 position before you commit.