PCT National Phase Patent in India

The filing requirements are:

• PCT application number
• Name, address and nationality of each inventor and applicants
• A copy of the Complete Specification which must include claims, abstract and drawings
• Verified English translation of the priority documents if the original priority application is not in English (this can be filed at a later stage)
• A Power of Attorney form signed by an applicant or an authorized person for each applicant
• 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 (this must be filed every six months till the final disposal of the case in India)

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must be filed within 48 months of earliest priority date, failure to do so would result in the application deemed to be withdrawn.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.

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.

The Complete Specification

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.

Important Due dates for PCT National Phase in India

• An application for PCT National Phase 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.

Attorney fee for national phase patent in India

Official fee for filing a national phase 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

Can I write the complete specification in non technical style?

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.

Request for Examination

The applicant has to expressly demand for the examination of his application by filing up and submitting the required forms and making the corresponding payment for it.

A request for examination has to be made within forty- eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier.

The Patent Office shall wait up to the end of thirty one months from the earliest priority date and then process the application.

However, the applicant may demand an expedited prosecution of the application at any time before the end of thirty one months period.

Examination report

The patent examiners shall search for similar earlier inventions in the same field as your patent application. Such similar earlier inventions are known as “prior art”.

Next, they will examine and compare the prior art to your patent application and determine if the prior art anticipates the novelty of your patent application. The patent examiner will also determine if the other patentability criteria (such as inventive step and industrial application) are met.

An examination report (FER) is prepared after conducting a prior art search to ascertain the novelty, and examining as to whether the invention disclosed in the specification is inventive and industrially applicable.

The Examiner also examines whether the invention belongs to one of the categories of non-patentable inventions coming under Section 3 and 4, and whether the application is in conformity with all the provisions of the Act.

The applicant is required to comply with all the requirements imposed upon him by the Act as communicated through FER.

Responding to the examination report

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.

If applicant fails to respond to the FER within six months from the date of issuance of FER or within an extended period of 3 months, the application is deemed to have been abandoned under Section 21(1) of the Act.

A communication to that effect is sent to the applicant for record.

If the response filed by the applicant does not overcome the objections of the examination report then the Controller shall offer an opportunity of a hearing to the applicant and decide the case on merits.

Subsequent to this hearing the Controller may either refuse the application or Grant the patent on the merits of the case.

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.

Are there any requirements for deposit of biological material?

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 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.

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