PCT National Phase Patent in India
PCT National Phase Patent in India is filed with a set of forms along with the complete specification including the description, claims, drawings & abstract. A POA from the inventor accompanies the application. One can enter National Phase in India within 31 months of the earliest priority date. All these documents need to be in ENGLISH.
Requirements to file an application for PCT National Phase Patent in India:
- Name, address and nationality of applicants and inventors
- Complete Specification in ENGLISH
- PCT Application number
- Power of Attorney form
- Proof of Right: a document transferring the rights from inventor to the applicants
- Information about the status of the patent applications filed in other jurisdictions for the same invention.
Every complete specification for a PCT National Phase Patent in India shall:
- fully and particularly describe the invention and its operation or use and the method by which it is performed
- disclose the best method of performing the invention which is known to the applicant
- end with a claim or set of claims defining the scope of the invention
- refer to the deposit of the biological material in the international depository authority, if applicable; and
- be accompanied by an abstract.
Important Due dates for PCT National Phase Patent in India
- An application for PCT National Phase Patent in India must be filed within 31 months of the earliest priority date
- A request for examination must be filed within 48 months of the earliest priority date, failure to do so would result in the application deemed to be withdrawn
- Applicant must respond to First Examination Report (FER) within SIX months, and the application must be put in order for a grant within TWELVE months of the FER.
Procedure of prosecuting PCT National Phase in India
After entering the National Phase in India, examination must be requested within 48 months from the earliest priority date.
After requesting examination, it will typically be 12-18 months before a first examination report is issued. A response to the first examination report must be filed within six months of its date. The applicant must put the patent in order for grant within 12 months from the date of the first examination report.
Following successful examination, the application will proceed to acceptance and third parties are provided with an opportunity to oppose the grant of a patent within 3 months of the advertisement of acceptance. If there is no opposition, a patent will be granted shortly thereafter.
Attorney fee for filing a PCT National Phase Patent in India
Action based fee
- Attorney fee for preparing and filing a PCT National Phase Patent in India
- Additional fee for responding to office actions
- Additional fee for preparing evidences and arguments
- Additional fee for attending hearings with the examiner
Capped Flat fee
- Attorney fee for preparing and filing a PCT National Phase Patent in India
- No further fee for responding to office actions
- No further fee for preparing evidences and arguments
- No further fee for attending hearings with the examiner
| Click here: Fee for INDIAN applicants in Rupees. |
The official fee for filing a PCT National Phase Patent in India
| Action Particulars – in US$ | Individual | Large Firm |
| Filing application for Patent | 30 | 130 |
| For each additional priority | 30 | 130 |
| Each additional page over 30 | 03 | 14 |
| Each additional claim over 10 | 06 | 28 |
| Filing request for examination | 70 | 300 |
Do note that the above table shows the actual official fee payable to the Patent Office, attorney fee would be additional.
What is a PCT Patent application? Why is it important?
PCT patent application is a single international patent application that the applicant needs to file to keep his protection ‘live’ in about 150 member countries which have signed the Patent Cooperation Treaty. This is known as the International Phase.
By filing this single PCT patent application, the applicant gets time of 31 months to commercially exploit the invention, as well as get an international preliminary report on patentability, without losing the priority date, and then ultimately decide in which countries he wants to file the PCT National Phase Patent application in order to get a local patent protection.
The alternate conventional patent protection system necessitates the applicant to decide and file the local patent application in the National offices of the preferred countries within one year of the earlier priority application. This shorter period does not provide the applicant with sufficient time to commercially exploit the invention and requires making a large financial commitment before getting any feedback on the potential value of the invention.
International PCT Patent application provides an extended time to assess the potential value of the patent, as well as get an opinion on patentability, before deciding on making further financial commitments for filing the local patent application in the preferred countries.
At the end of 31 months the applicant needs to file PCT National Phase Patent applications in the local patent offices of the countries where he wants to hold a patent. This is known as the National Phase.
The patent granted at the end of this National Phase will be effective from the date of the earliest priority date giving protection to the invention from the date of the first application filed in the home country. For a patent rights, the date of disclosure is of primary importance in order to initiate legal proceedings against an infringement. PCT system is very convenient to get the protection from the earliest date while keeping the costs down in the meantime.
What is a PCT International Search?
PCT International search is conducted by International Search Authority (ISA) which provides the applicant with a search report containing details of earlier filed patent applications for the same or similar invention which might make the invention un-patentable. This gives an opportunity to the applicant to amend his specification to remove the part which is disclosed in these prior applications. This would make his application not being anticipated by any prior art.
What is a PCT International Examination?
The applicant can demand the case to be thoroughly examined by the International Preliminary Examining Authority to get “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, involves an inventive step (is non-obvious), and is industrially applicable”. The examination report so generated is known as the international preliminary report on patentability and it gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase.
Moreover demanding an international examination gives an option of delaying the entry in to the national phase in preferred countries till 30/31 months from the priority date.
Advantage of filing a PCT application
The procedure under the PCT has great advantages for you as an applicant, for the patent Offices, and the 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
- Based on 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 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
- 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.
FAQs about PCT National Phase Patent in India
- What does it cost to file a PCT National Phase Patent in India?
- What are the requirements for filing a PCT National Phase Patent in India?
- What are the due dates for PCT National Phase Patent in India that I should be aware of?
- What is the official fee for filing a PCT National Phase Patent in India?
- What are the contents of a Complete Specification for filing a PCT National Phase Patent in India?
- What is a disclosure of the status under Section 8(1) of The Patents Act, 1970?
- What is the time period for responding to the First Examination Report?
- How to file a PCT National Phase Patent in India?
- What is the process of prosecuting a patent application in India?
- Additional information about PCT National Phase Patent in India
- Advantage of filing a PCT National Phase Patent in India?
What are the contents of a Complete Specification for filing a PCT National Phase Patent in India?
Every complete specification shall:
- fully and particularly describe the invention and its operation or use, and the method by which it is performed
- disclose the best method of performing the invention which is known to the applicant
- end with a claim or set of claims defining the scope of the invention
- refer to the deposit of the biological material in the international depository authority, if applicable; and
- 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.
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.
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.
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 fin order or 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.
How to file a PCT National Phase Patent application in India?
- Application for PCT National Phase Patent in India is made out in Form 01.
- If the inventor is not making the application for grant of Patent, then applicant must obtain a proof of right from the inventor to file the application. The Proof of Right is either an endorsement at the end of Form 01 or a separate document in the form of an assignment.
- Provisional/Complete specification in filed made out in Form 02. A Complete specification must indicate the technical field; it must include the background and a description of the invention, in plain language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Complete specification is usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. Complete specification must contain at least one claim that is, information which determines the extent of protection sought by the applicant. See a sample of Complete Specification here.
- Statement and undertaking under Section 8 is made on Form 03, if applicable. This statement is a document providing information to the Indian Patent Office about applications for grant of Patents made in other jurisdictions for the same invention and the status of these cases. Under Section 08 for Indian Patents Act, 1970, an applicant must file Form 3 either along with the application or within six months of the date of application.
- Declaration as to inventorship shall be filed in Form 05 for applications accompanying a Complete Specification or a Convention Application or a PCT application designating India.
- A Power of authority (POA) made out on Form 26, shall be filed within three months of filing the case in India if the applicant is filing the application for grant of patent through a patent attorney or a Patent agent. If a general power of authority has already been filed for another application, a self-attested copy of it may be filed by the patent agent. In case the original general power of authority has been filed in another jurisdiction, that fact may also be mentioned in the self-attested copy.
- Priority documents, certified by the Patent office of the jurisdiction where the application for same invention was first filed, are required in the cases of A) Convention Application, and B) PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made under the PCT have not been fulfilled.
- The specification is published after eighteen months of the priority date. In case of a request for early publication, the priority document shall be filed before/along with such request.
- Every application for a patent in India shall bear the signature of the applicant or authorized person/Patent Agent along with name and date in the appropriate space provided in the forms.
- The Specification shall be signed by the agent/applicant with date on the last page of the Specification. The drawing sheets should bear the signature of the applicant or his agent in the right-hand bottom corner.
- If the application for patent in India pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent.
- The application form shall also clearly indicate the source of geographical origin of any biological material used in the specification, wherever applicable.
- A request for examination of the patent application is filed as given in Form 18.
What is the process of prosecuting a patent application 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 Indian Patent Office shall publish the patent application within the next 10 days. - 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 into 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.
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.
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I, Mahesh Bhagnari, am the Managing Principal of the firm:
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- I have more than eighteen years of professional experience working in the field of Intellectual property.
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