Getting a Patent in India: The PCT National Phase Entry

Timing is Key

You need to file for the National Phase within 31 months from the earliest priority date—there’s no extension on this. So, it’s crucial to be on time. To do this, you’ll need to work with a local attorney in India.

What You’ll Need to File

Here’s a list of the main things you’ll need:

• The name, address, and nationality of each inventor and applicant.
• A copy of the Complete Specification, which must include claims, an abstract, and any necessary drawings.
• A verified English translation of the priority documents.
• A Power of Attorney signed by the applicant or an authorized person.
• Proof of Right: A document transferring the rights from the inventor to the applicants.
• Information about the status of any patent applications filed in other countries for the same invention.

The Complete Specification

The Complete Specification is a crucial document in the patent process. It should:

• Describe the invention in detail, including how it works and how it’s used.
• Disclose the best method for performing the invention known to the applicant.
• End with claims that define the scope of the invention.
• Refer to the deposit of biological material if applicable.
• Include an abstract.

Because the Complete Specification is both a technical and legal document, it’s important that it’s drafted very carefully to avoid any confusion. It should be detailed enough that someone skilled in the field could replicate the invention.

Deadlines to Remember

• You must file your National Phase application within 31 months of the earliest priority date.
• A request for examination must be filed within 48 months of the earliest priority date. If you miss this, your application will be considered withdrawn.
• After receiving the First Examination Report (FER), you must respond within six months. The application must be in order for a grant within twelve months of the FER.

The Examination Process

To move forward, you need to request an examination of your application by submitting the required forms and making the necessary payment. This request must be made within 48 months of the priority date or the filing date, whichever is earlier.

The Patent Office waits until the 31-month deadline before processing your application, but you can request an expedited review before that if you wish.

Patent examiners will search for similar inventions (known as “prior art”) in the same field. They’ll then compare this prior art with your application to determine if your invention is new and meets other criteria like inventiveness and industrial applicability.

Responding to the FER

After the examination, you’ll receive a First Examination Report (FER), which will detail any issues or objections. You must respond to the FER within six months, and your application must be in order within twelve months of the FER.

If you don’t respond within six months (or an extended period of up to three months), your application will be considered abandoned. The Controller will review your response, and if there are still issues, you may be invited to a hearing. Based on the hearing, the Controller will either grant the patent or refuse the application.

Keeping the Indian Patent Office in the Loop

When you’re going through the patent process in India, it’s important to keep the Indian Patent Office updated on the status of any patent applications you’ve filed for the same invention in other countries. You’ll need to provide these details within six months of filing in India. If you don’t, your application could be refused, or if the patent is granted, it might be invalidated later on, as per Section 8(1) of The Patents Act, 1970.

Handling Biological Materials in Your Patent Application

If your patent involves biological material that’s not already available to the public and can’t be adequately described in your application, you’ll need to deposit this material to complete your application. This deposit should be made with one of the International Depository Authorities under the Budapest Treaty.

Why the PCT System is a Good Option

The Patent Cooperation Treaty (PCT) system has some great benefits:

• Simple Process: Instead of filing separate patent applications in multiple countries, you can file just one international patent application. This makes the process a lot easier and reduces the initial paperwork.
• Extended Timeline: The PCT gives you up to 30 or 31 months (depending on the country) from your priority date to decide where you want to pursue patent protection. This gives you more time to plan and make strategic decisions.
• Cost-Effective: By consolidating the initial patent filing process, the PCT helps manage costs. You don’t have to pay fees upfront for every country where you want patent protection, making it more affordable to seek international patents.
• International Search and Examination: The PCT process includes an international search and an optional preliminary examination. These provide valuable insights into whether your invention is likely to be patentable before you enter the national phase. This helps you decide if it’s worth the time, effort, and money to move forward with your application in different countries.
• Grant Certainty: The PCT sets up a standardized procedure, which means there’s more uniformity and predictability in the patent process across member countries. National offices in different countries are more likely to grant a patent if it has received a positive examination report and has been granted in other countries.

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