Understanding the PCT National Phase Patent Process in India

Introduction

The globalization of markets and innovation has made it increasingly important for inventors and businesses to protect their intellectual property rights in multiple countries. The Patent Cooperation Treaty (PCT) offers a streamlined route for seeking patent protection internationally, including in India. The PCT does not grant a global patent, but it simplifies the process of filing for patents in multiple countries by establishing a centralized system. After the international phase under the PCT, applicants must enter the national phase in each country where they seek patent protection. This article focuses on the PCT national phase patent process in India, providing an in-depth guide to its requirements, procedures, and key considerations.

What is the Patent Cooperation Treaty (PCT)?

The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO) that allows inventors to file a single international patent application to seek protection in multiple member countries. As of now, the PCT has 157 contracting states, including India. The PCT process is divided into two phases: the international phase and the national phase.

1. International Phase: In this phase, the applicant files a single patent application, known as the PCT application, which undergoes a formal examination and an international search by a selected International Searching Authority (ISA). The search report provides insight into the patentability of the invention. Additionally, an optional International Preliminary Examination can be conducted to assess the likelihood of obtaining a patent.
2. National Phase: After the completion of the international phase, the applicant must enter the national phase in each country where they wish to pursue patent protection. This involves filing the application in the national patent office of the respective countries and complying with local patent laws and regulations.

PCT National Phase Entry in India

To obtain patent protection in India through the PCT route, an applicant must enter the national phase in India within the prescribed time limits and follow specific procedures.

1. Timeline for National Phase Entry in India

For India, the national phase must be entered within 31 months from the earliest priority date (the date of the first patent application filed, from which the PCT application claims priority). It is important to adhere to this deadline as failure to enter the national phase within this period will result in the application being considered withdrawn in India.

2. Requirements for Filing

When entering the national phase in India, the applicant must submit certain documents and information to the Indian Patent Office (IPO). The key requirements include:

• Application Form (Form 1): This form must be duly filled with the applicant’s details, including name, address, nationality, and the details of the invention.
• Specification: The applicant must submit a complete specification in English. If the PCT application was filed in a language other than English, a verified English translation of the specification must be provided.
• Claims: The claims in the national phase application should align with those filed in the international phase. Amendments may be made, but they should not broaden the scope of the original claims.
• Drawings: If any drawings were part of the international application, they must also be submitted.
• Abstract: A concise summary of the invention, typically provided in the original PCT application, must be included.
• Power of Attorney (Form 26): If the application is being filed by a patent agent or attorney, a Power of Attorney must be submitted.
• Fee Payment: The prescribed official fees for filing the national phase application must be paid. The fee structure may vary depending on the number of claims, pages, and whether the applicant is an individual or a legal entity such as a company.
• Priority Documents: If the priority documents were not submitted during the international phase, they must be submitted at this stage, along with their certified English translations if necessary.

3. Examination Process

Once the national phase application is filed in India, it undergoes formal examination to ensure compliance with procedural requirements. The substantive examination, however, is only conducted upon filing a Request for Examination (RFE) in Form 18. The RFE must be filed within 48 months from the earliest priority date. Failing to file the RFE within this period will result in the application being deemed withdrawn.

During the substantive examination, the Indian Patent Office (IPO) examines the application for compliance with the requirements of the Patents Act, 1970, including novelty, inventive step, and industrial applicability. The examination report, often referred to as the First Examination Report (FER), will be issued by the IPO, typically within 12 months of filing the RFE.

If any objections are raised in the FER, the applicant must respond within six months, which can be extended by three months upon request. The applicant may need to amend the claims, provide clarifications, or address any objections raised by the examiner. If the response satisfies the examiner, the patent will proceed to grant. If not, the application may be refused, and the applicant has the right to appeal the decision.

4. Publication and Opposition

If the application successfully clears the examination process, it will be published in the Official Patent Journal. Any interested party can file a pre-grant opposition within six months of publication, challenging the grant of the patent on various grounds, such as lack of novelty or inventive step. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the patent is granted.

Post-grant opposition can also be filed by any interested party within 12 months of the patent being granted. This is another layer of scrutiny that ensures the validity of patents granted in India.

5. Grant of Patent

Once all requirements are met and any oppositions are resolved, the Indian Patent Office grants the patent, which is then published in the Patent Journal. The patent is valid for 20 years from the international filing date or the earliest priority date, provided that annual maintenance fees are paid.

Advantages of PCT National Phase Entry in India

1. Streamlined Process: The PCT system allows applicants to defer costs and provides more time to assess the commercial potential of their invention in various countries, including India.
2. Cost-Effective: By filing a single international application, the PCT reduces the need for multiple filings in different countries during the initial stages, saving both time and money.
3. Strategic Flexibility: The extended timeline to enter the national phase provides applicants with strategic flexibility in deciding where to pursue patent protection based on market conditions, potential infringement risks, and available resources.
4. Legal Certainty: The PCT system offers legal certainty through the international search and examination process, giving applicants a clearer understanding of the patentability of their invention before entering the national phase in various countries.

Challenges and Considerations

While the PCT system offers several advantages, there are also challenges and important considerations:

1. High Costs: Although the PCT system defers costs, entering the national phase in multiple countries can still be expensive, especially when including attorney fees, translation costs, and official fees.
2. Complexity: Navigating the patent laws of multiple jurisdictions can be complex, and each country has its specific requirements and procedures that must be carefully adhered to.
3. Time Sensitivity: Meeting the various deadlines for entering the national phase, filing RFEs, and responding to examination reports is critical. Missing these deadlines can lead to the loss of patent rights.
4. Enforcement: Obtaining a patent is only the first step; enforcing patent rights against infringers in India can be challenging and costly, particularly in the face of legal complexities and potential delays in the judicial system.

Final thoughts

Entering the PCT national phase in India is a critical step for inventors and businesses seeking to protect their innovations in one of the world’s largest markets. While the process can be complex and requires careful attention to detail, the benefits of securing patent protection in India can be significant. By understanding the PCT national phase process, applicants can better navigate the requirements and maximize their chances of successfully obtaining a patent in India.

Whether you are an individual inventor or a multinational corporation, leveraging the PCT system to obtain patent protection in India can be a strategic advantage in today’s competitive global market. As always, consulting with a qualified patent attorney or agent who is well-versed in Indian patent law is highly recommended to ensure a smooth and successful national phase entry in India.

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