FAQs for PCT National Phase Patent in India

FAQs about PCT National Phase Patent in India

  1. What does it cost to file a PCT National Phase Patent in India?
  2. What is the official fee for filing a PCT National Phase Patent in India?
  3. What are the contents of a Complete Specification for filing a PCT National Phase Patent in India?
  4. What is a disclosure of the status under Section 8(1) of The Patents Act, 1970?
  5. What is the time period for responding to the First Examination Report?
  6. Additional information about PCT National Phase Patent in India
  7. How do I file the PCT National Phase Patent in India?
  8. What happens to my application after filing the PCT National Phase Patent in India?

What does it cost to file a PCT National Phase Patent in India?

  1. Option 1: We charge an Attorney filing fee of US$400 + Actual Patent Office fee + ACTION based fee for prosecuting the case till grant/final disposal of the matter.
  2. Option 2: We offer to handle a case for a One-time FLAT Attorney fee of US$1125 + Actual Patent Office fee + NO further fee for prosecuting the case till grant/final disposal of the matter.

What is the official fee for filing a PCT National Phase Patent in India?

India Patent Office Filing fee:

Action Particulars – in US$IndividualSmall FirmLarge Firm
Filing application for Patent3075150
For each additional priority3075150
Each additional page over 30030714
Each additional claim over 10061428
Filing request for examination75185375

Do note that the above table shows the actual official fee payable to the Patent Office, attorney fee would be additional.

What are the contents of a Complete Specification for filing a PCT National Phase Patent in India?

Every complete specification shall:

  1. fully and particularly describe the invention and its operation or use and the method by which it is performed.
  2. disclose the best method of performing the invention which is known to the applicant for which he is entitled to claim protection.
  3. end with a claim or set of claims defining the scope of the invention for which the protection is claimed.
  4. refer to the deposit of the biological material in the international depository authority, if applicable; and
  5. be accompanied by an abstract.

The Complete Specification is a technical as well as a legal document that fully and particularly describes the invention and discloses the best method of performing the invention.

As the Complete Specification is an extremely important document in the patent proceedings it is advised that it should be drafted with utmost care without any ambiguity.

The disclosure of the invention in a complete specification must be such that a person skilled in the art should be able to perform the invention.

The Patents Act, 1970 specifically requires that the complete specification must describe the best method of performing the invention known to the applicant, including that, which he may have acquired during the period of provisional protection before the date of filing the complete specification.

What is a disclosure of the status under Section 8(1) of The Patents Act, 1970?

During prosecution, the applicant needs to inform the Indian Patent Office regularly about the status of patent applications corresponding to the same invention filed in other countries/jurisdictions.

Applicants must provide details of corresponding applications within six months of filing in India and failure to do so can result in the application being refused or lead to invalidation/revocation of any granted patent as set out in Section 8(1) of The Patents Act, 1970.

When biological material is described in the specification and when such material is not available to the public and cannot be described as per the provisions of the Act, such material shall be deposited to make the application complete. The deposit shall be made with the International Depository Authorities under the Budapest Treaty.

What is the time period for responding to the First Examination Report?

Applicant must respond to First Examination Report (FER) within SIX months, and the application must be put for a grant within TWELVE months of the FER.

First Examination Report also requires applicants to provide Indian Patent Office with copies of granted patents and the respective claims as well as the latest office actions of corresponding applications pending at other jurisdictions, as set out in Section 8(2).

Non-compliance with this requirement is a ground for revocation.

After the grant of a patent in India, in addition to payment of the annual renewal fee, the applicant must file an annual STATEMENT of WORKING of PATENT in India.

Additional information about PCT National Phase Patent in India

PCT stands for the Patent Co-operation Treaty. The PCT system facilitates the filing of one patent application to be effective for all countries and provides for a simplified procedure for the search and examination of such applications. This allows a resident or national of a PCT member state to obtain the effect of patent filings in all the PCT countries and to defer the bulk of filing costs usually due on filing.

Since December 7, 1998, it is possible to designate India in PCT applications and to elect India in the demand for a preliminary examination.

If India is a designated country in the PCT application, then the deadline for entry into the National Phase in India is 31 months from the earliest priority date. If the applicant does not so elect India in the demand for preliminary examination, then the deadline for entry into the National Phase in India is 21 months from the Priority Date.

Therefore, all applicants who have designated India in their PCT application filed on or after December 7, 1998, will be able to file PCT National Phase applications in India.

The procedure under the PCT has great advantages for you as an applicant, for the patent Offices, and the public:

  1. You have up to 18 months more than if you had not used the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations, and to pay the national fees.
  2. You can rest assured that, if your international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT contracting state patent Office during the national phase of the processing of the application.
  3. Based on the international search report and the written opinion, you can evaluate with reasonable probability the chances of your invention being patented.
  4. You have the possibility during the optional international preliminary examination to amend the international application and thus put it in order before processing by the various patent offices.
  5. The search and examination work of patent Offices can be reduced or eliminated thanks to the international search report, the written opinion, and, where applicable, the international preliminary report on patentability that accompanies the international application.
  6. Since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and
  7. For you as an applicant, international publication puts the world on notice of your application, which can be an effective means of advertising and looking for potential licensees.

Ultimately, the PCT:

  1. brings the world within reach,
  2. postpones the major costs associated with international patent protection,
    provides a strong basis for patenting decisions; and
  3. is used by the world’s major corporations, research institutions, and universities when they seek international patent protection.

How do I file the PCT National Phase Patent in India?

It is only after you have decided whether, and in respect of which States, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase.

These requirements include paying national fees and, in some cases, filing translations of the application.

These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date.

There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents.

More information on national phase entry in general can be found in Volume II of the PCT Applicant’s Guide, and specific information concerning fees and national requirements can be found in the national chapters for each PCT Contracting State in the same Guide.

What happens to my application after filing the PCT National Phase Patent in India?

Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent.

Any examination these Offices may undertake should be made easier by the PCT international search report and the written opinion, which enable you to make necessary amendments to the claims in the application even before the national procedure starts. It is facilitated even more by the international preliminary examination procedure during which further amendments (and their patentability evaluation) are possible.

You also achieve other savings in communications, postage and translations because the work done during the international processing is generally not repeated before each Office (for example, you submit only one copy of the priority document instead of having to submit several copies).

You may directly call on +91.9860588440 or write a mail to info@bhagnari.com for further information and discussions.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.

 

Call Now Button
Back to top