How to file a PCT National Phase Patent in India

An application for PCT National Phase Patent in India consists of a set of forms along with a copy of Complete Specification including the description, claims, drawings and abstract. A POA from the applicant needs to be filed within three months of entering National Phase in India. One can file PCT National Phase Patent in India within 31 months of earliest priority date. All these documents need to be in ENGLISH.

In order to file an application for PCT National Phase Patent in India we would require:
1. Name, address and nationality of applicants and inventors.
2. Complete Specification in ENGLISH (in text format).
3. The drawings in PDF/JPG format.
4. The certified copy of the priority documents (required for a conventional Patent application in India).
5. PCT application number.

Do note that:
A request for examination must be filed within 48 months of earliest priority date, failure to do so would result in the application deemed to be withdrawn.

During the course of prosecution, the applicant needs to inform the Indian Patent Office regularly about the status of patent applications referring 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 invalidation/revocation of any granted patent as set out in Section 8(1) of The Patents Act, 1970.

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

Also note that:
Applicant must respond to First Examination Report (FER) within SIX months, and the application must be put in order for grant within TWELVE months of the FER. First Examination Report also requires applicant to provide Indian Patent Office with copies of granted patents and the respective claims as well as latest office actions of corresponding applications pending at other jurisdictions, as set out in Section 8(2). Non-compliance of this requirement is a ground for revocation.

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

Fee for filing a National Phase Patent application in India:

India Patent Office Filing fee:

Action ParticularsIndividualSmall FirmLarge Firm
Filing application for PatentUS$ 30US$ 75US$ 150
For each additional priorityUS$ 30US$ 75US$ 150
Each additional page over 30US$ 03US$ 07US$ 14
Each additional claim over 10US$ 06US$ 14US$ 28
Filing request for examinationUS$ 75US$ 185US$ 375

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

Click here: Total fee for PCT National Phase Patent in India.

Contents of a Complete Specification for filing a Patent in India:

The Complete Specification is a technical as well as a legal document which 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.

In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification. The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention. This is possible only when an applicant discloses the invention fully and particularly including the best method of performing the invention.

Every complete specification shall:
a) fully and particularly describe the invention and its operation or use and the method by which it is performed;
b) disclose the best method of performing the invention which is known to the applicant for which he is entitled to claim protection;
c) end with a claim or set of claims defining the scope of the invention for which the protection is claimed;
d) make reference to deposit of the biological material in the international depository authority, if applicable; and
e) be accompanied by an abstract.

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 prior to the date of filing the complete specification.

What is the process of prosecuting an application for patent in India?

Step 01
The process starts after filing an application for Ordinary Patent or PCT National Phase Patent in India.

Step 02
The applicant may request an immediate publication of his application.
Do note that the application would be examined only after it is published, so filing an early publication request helps in expediting the patent examination process.

Step 03
If an early publication is requested, then the patent application will be published by the Indian Patent Office, generally, within about 10 days from the date of receiving the request.

Step 04
If the early publication is not requested, then the Indian Patent Office publishes the patent application after 18 months from the priority date.

Step 05
Filing a request for examination. The request for examination can be filed within 48 months from the priority date. If no request for examination is filed within the 48 months of priority then the application is ABANDONED by the Patent office. Note that the Indian Patent Office will not examine the patent application, unless this request is filed. Hence, if you wish to expedite the patent process, early filing of the examination request is advised. The request for examination can be filed during the entry in to the Indian National Phase.

Step 06
Once the Indian Patent Office receives your request for examination, the application would be examined. During the examination of the application, if the Indian Patent Office is of the opinion that your patent application satisfies all the requirement of patentability, then a patent is granted to your invention.

Step 07
If the Indian Patent Office is of the opinion that the patent application does not satisfies all the requirement of patentability, then a First Examination Report (FER) would be issued.

Step 08
The applicant needs to respond to the FER within 6 months from the date of the FER. This period may be extended by further three months by making a specific request. After the response is filed, the Patent Office may issue further examination report to overcome still outstanding objections if any.

Do note that issuance of subsequent examination reports by the Patent Office and responding to the same by the applicant must occur within 12 months from the date of the FER.

The applicant may request a hearing with the examiner to overcome the objections of the Patent Office.

Step 09
After submitting the arguments for showing patentability, filing amendments as required, arguing the case in a hearing with the examiner, the Patent Office can either grant a patent or reject granting of a patent.

If the Patent Office does not grant a patent, then the applicant may appeal against the decision of the patent Office to the Intellectual Property Appellate Board set up for this purpose.

What is a STATEMENT of WORKING of a PATENT in India?

After the grant of an Indian patent, the patentee must annually inform the Indian Patent Office whether or not the patent is being worked in India. Non-working of the patent in India allows third parties to request for a grant of compulsory licence. Click here: Information about STATEMENTS 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 filing of patent applications under a single application and provides for 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 any or all of 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 preliminary examination.

If India is a designated country in the PCT application and is also elected in the demand for preliminary examination filed within 19 months of the priority date, then the deadline for entry into the National Phase in India is 31 months from the 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 for the general public:
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;
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;
on the basis of the international search report and the written opinion, you can evaluate with reasonable probability the chances of your invention being patented;
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;
the search and examination work of patent Offices can be considerably reduced or eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability that accompany the international application;
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
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:
brings the world within reach;
postpones the major costs associated with international patent protection;
provides a strong basis for patenting decisions; and
is used by the world’s major corporations, research institutions and universities when they seek international patent protection.

How do I enter the PCT National Phase in India? Or any other country?

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 in the national phase?

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).

 

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

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