PCT national phase patent in India
A PCT national phase entry is the final step you need to undertake to get a patent in India for your international application. This must be completed within 31 months of the earliest priority date and there is no extension available. You will need a local attorney to enter the National Phase in India. The entry is filed with a copy of the complete specification along with the details of the applicant, inventors and priority claims.
The filing requirements are:
- 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
- A Power of Attorney signed by an applicant or an authorized person of 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.
What are the contents of a complete specification for filing a PCT national phase patent in India??
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 for which he is entitled to claim protection
- end with a claim or set of claims defining the scope of the invention for which the protection is claimed
- refer to the deposit of the biological material in the international depository authority, if applicable; and
- be accompanied by an abstract.
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.
Is there a due date for filing a request for examination?
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be filed within 48 months of the earliest priority date, failure to do so would result in the application deemed to be withdrawn.
What are the other due dates I must be aware of?
- 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.
What is the usual attorney fee for filing a PCT national phase patent in India?
Attorney fee for 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
What is the official fee for filing a PCT national phase patent in India?
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|
Does the Patent Act, 1970 require a specific form of complete specification?
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.
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.
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 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 for 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.
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.
What is the effective date of patent for PCT national phase application?
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.
What is a PCT patent system? What are its advantages?
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.
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.
Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.
I, Mahesh Bhagnari, am the Managing Principal of the firm:
- I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
- I am a licensed Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
- I am a licensed Trademark attorney in India with Registration № 10742.
- I have more than eighteen years of professional experience working in the field of Intellectual property.
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