By Gaurav Choubey, Choubey & Co.
Filing a patent application in India through the Patent Cooperation Treaty (PCT) is a strategic move for global inventors and businesses seeking patent protection. The PCT allows applicants to simultaneously seek protection for an invention in multiple countries by filing one international application. However, to benefit from a patent in India, an applicant must enter the “national phase” within a specific time frame and comply with local filing formalities. This article outlines the key aspects of PCT national phase entry in India, including filing requirements, fees, common mistakes to avoid, and strategic considerations.
Conents
1. Understanding PCT National Phase Entry in India
2. Key Filing Requirements in India
1. Understanding PCT National Phase Entry in India
The national phase entry is the stage where an international PCT application transitions to become a national patent application in individual countries. In India, the PCT application must enter the national phase within 31 months from the earliest priority date of the international application. Failure to adhere to this deadline may result in the application being considered abandoned.
India’s intellectual property system has specific rules and requirements, and applicants must navigate these efficiently to ensure their applications proceed smoothly.
2. Key Filing Requirements in India
When entering the national phase in India, certain formalities must be fulfilled to ensure the application is accepted and processed:
- Translation: If the PCT application was filed in a language other than English, the applicant must provide an English translation of the international application (including the description, claims, drawings, and abstract).
- Application Form: The application must be filed using Form 1 (for filing a patent application in India) and Form 3 (related to undertaking regarding foreign applications).
- Power of Attorney: If the application is filed through a patent agent, a Power of Attorney document (Form 26) must be submitted.
- Priority Documents: If claiming priority from earlier applications, certified copies of those documents must be submitted, unless they were already provided during the international phase. Also, in case priority documents are not in English language, Indian Patent Office may ask the Applicant to provide for certified English translations of the priority document.
- Request for Examination: A request for examination (RFE) must be filed within 31 months from the priority date. If not submitted, the application will not be examined and may lapse.
3. Filing Process
Online vs. Offline Filing
India allows both online and offline methods for filing PCT national phase applications.
- Online Filing: The online filing system is the preferred method due to its convenience. It allows applicants to submit documents digitally, track application progress, and receive communications electronically. This process minimizes errors and speeds up document submission.
- Offline Filing: Offline filing is still an option, where applicants submit physical copies of documents at designated Patent Offices. However, this method is slower and more prone to errors or delays due to postal services or manual handling.
Given the efficiency of online filing, most applicants, especially international ones, choose this route.
Fees and Payment
Filing Fees
The filing fees for a PCT national phase entry in India vary depending on the applicant’s category. Applicants in the category of individual, small entity, start-ups and educational institutions are eligible for about 80% rebate in the fee as compared to other applicants. Additional fees apply if the specification exceeds 30 pages or if the claims exceed 10 in number. The fee structure is periodically updated, so applicants should consult the latest fee schedule on the Indian Patent Office website.
Methods of Payment
Acceptable methods for fee payment include:
- Electronic Payment: Payments can be made through the online portal using net banking, credit cards, debit cards, or other online payment systems.
- Offline Payment: For offline submissions, payments can be made via demand drafts, cheques, or bank transfers.
It is crucial to ensure that the correct fee is paid, as incorrect payments can delay the processing of the application.
Acknowledgment and Receipt
Once the filing is completed, an acknowledgment receipt is issued by the Indian Patent Office. This receipt serves as proof that the application has been filed and marks the official entry date into the national phase. It also includes the application number, which is essential for tracking the status of the application. This receipt is critical for future reference and in any legal proceedings related to the application.
4. Common Mistakes to Avoid
Missing Deadlines
The 31-month deadline for national phase entry is one of the most crucial timelines to meet. Missing this deadline without an extension may result in the abandonment of the application, leading to loss of rights in India. Therefore, applicants must closely monitor timelines and submit documents promptly.
Incomplete Documentation
Submission of incomplete or incorrect documents is a common pitfall. Missing priority documents, incomplete translations, or improperly filled forms can lead to delays, objections, or rejection of the application. To avoid such issues, applicants should cross-check all documents before submission and seek professional assistance if needed.
Incorrect or Delayed Fee Payment
Incorrect fee payment—whether underpayment, overpayment, or missing payment—can disrupt the filing process. Additionally, delayed payment of examination or renewal fees can result in the application being deemed withdrawn. Ensuring the correct fees are paid on time is vital for maintaining the application’s progress.
5. Post-Filing Procedures
Publication and Examination
Once the application is filed, it will be published in the Official Patent Journal after 18 months from the priority date (unless an early publication request is made). A request for examination may be submitted anytime after filing the patent application and maximum within 31 months from the priority date. After the request for examination if filed the Indian Patent Office (IPO) conducts a substantive examination to assess the patentability of the invention.
Certain category of applicants may also seek expedited examination of the application. A request for expedited examination may be filed in following cases:
- If applicant has indicated India as the competent International Searching Authority or elected India an International Preliminary Examining Authority in the corresponding international application,
- If applicant is a startup or a small entity (as per defined criteria by relevant rules or notifications by Government of India)
- If all the applicants are natural person and at least one of the applicants is a female
Responding to Objections
During examination, the IPO may raise objections related to novelty, inventive step, or formalities. Applicants must respond to these objections within the stipulated time frame (usually 6 months, extendable by three more months). Typically, if there are any outstanding objections, Indian Patent Office grants a hearing for discussions on the outstanding objections and making further submissions or amendments in relation to the application.
Failure to respond effectively to any objections may result in the rejection of the application.
Grant and Post-Grant Requirements
If all the objections are overcome, the patent will be granted. However, the grant is just the beginning of the maintenance process. Patent holders must pay renewal fees annually to keep the patent in force. Failure to pay these fees can lead to the lapse of the patent. Check also patent annuities in India.
Oppositions and Revocations
As per Indian Patent Law, any party willing to oppose the patent application may file a pre-grant opposition anytime before grant of a patent. Opposition may be filed by the Applicant itself of through a patent attorney. If the patent is granted any person aggrieved by the grant of a patent may file a post-grant opposition within one year from the date of grant of patent. The pre-grant or post-grant opposition may be filed o various grounds such as novelty, inventive step, prior use, misrepresentation, non-compliance with certain rules and requirements of patent application, etc.
Moreover, validity of a patent may be challenged before High Courts at anytime during the life of the patent. Therefore, it becomes extremely critical that a patent application is drafted and prosecuted with utmost care to ensure compliance with substantive as well as procedural requirements at each stage of prosecution.
6. Strategic Considerations
Choosing to Enter the National Phase
Before entering the national phase in India, applicants should carefully assess whether it is strategically beneficial. Factors to consider include the market potential of the invention in India, the costs involved in maintaining a patent, and the likelihood of obtaining enforceable rights in the country.
Filing and maintaining a patent in India involves costs, including filing fees, professional fees, and renewal fees. Applicants must weigh these costs against the potential benefits, such as securing exclusive rights to an invention in a growing market like India.
7. Conclusion
Filing a PCT national phase application in India requires careful attention to deadlines, documentation, and fees. By following the correct filing process and avoiding common mistakes, applicants can successfully secure patent protection in one of the world’s most dynamic markets. Whether through online or offline channels, the filing formalities must be handled with precision, and strategic considerations should guide the decision to enter the national phase in India.
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