PCT National Phase Application in India

Filing a patent application under the Patent Cooperation Treaty (PCT) provides a unified procedure for seeking patent protection in multiple countries. Once the international phase under the PCT is completed, the application enters the national phase, where it must be pursued in each designated country. In India, the national phase filing is governed by the Indian Patent Act, 1970, and the Patents Rules, 2003. This article provides a comprehensive guide to filing a PCT national phase patent application in India.

Overview of PCT and National Phase

The PCT, administered by the World Intellectual Property Organization (WIPO), simplifies the process of filing patent applications internationally. An applicant can file a single international application to seek protection in multiple member states. The procedure includes:

1. International Phase: The initial phase where the patent application is filed through the PCT, covering all 157 member countries. Filing the PCT application, international search, and preliminary examination.
2. National Phase: The subsequent phase where the applicant decides to pursue patent protection in specific countries, including India, within 31 months from the earliest priority date.

Documents Required for National Phase in India

To enter the national phase in India, the following documents and information are essential:

• Name, Address, and Nationality: Details of applicants and inventors.
• PCT Application Number: The unique identifier of the international application.
• Priority Application Number, Date, and Country: Information about the original application on which priority is claimed.
• Assignment Deed: Required if the applicant is not the original inventor.
• English Translation of the Application: Two copies if the original application is in a language other than English.
• Copy of the International Application: If not already received by the Indian Patent Office.
• Declaration of Inventorship: A statement confirming the inventors.

Cost of National Phase PCT Application in India

Note: steps highlighted in Orange color are either optional step or depends on case to case and are not mandatory to happen

Official Fees for Filing, Early Publication, and Examination of Patents in India

In India, the process of patenting an invention involves several official fees that must be paid at different stages. These fees depend on the type of applicant, categorized by the Indian Patent Office into three main groups:

1. Individual (Natural Person): This category includes individual inventors who apply for patents in their own names.
2. Small Entity: This category generally includes startups and small businesses as defined by the Indian government.
3. Other than Small Entity: This includes large businesses, legal entities, organizations, and institutions.

Table of Official Government Fees for PCT National Phase Patent Filing in India

The following table provides the official government fees for various patent-related services for different categories of applicants. The fees are listed in both Indian Rupees (INR) and United States Dollars (USD):

PCT National Phase Patent Application in India

The Patent Cooperation Treaty (PCT) is an international treaty that allows inventors to seek patent protection for their inventions simultaneously in multiple countries through a single application. When a PCT application reaches its national phase, the inventor must file separate applications in each desired country. This article provides a detailed overview of the PCT national phase patent application process in India.

1. Introduction to PCT National Phase Entry in India

Entering the national phase in India is a crucial step for inventors who wish to protect their inventions in one of the world’s largest markets. The Indian Patent Office (IPO) is responsible for processing these applications under the Indian Patents Act, 1970, and the Patent Rules, 2003.

2. Timeline for National Phase Entry

The timeline for entering the national phase in India is 31 months from the priority date of the PCT application. The priority date is the filing date of the earliest patent application in a member country of the Paris Convention, which serves as the basis for the PCT application.

3. Required Documents and Formalities

To enter the national phase in India, the following documents and information are required:

• Request for Examination (Form 18): This must be filed along with the national phase application or within 48 months from the priority date.
• Specification: The complete specification, including claims, abstract, and drawings, must be submitted. If the specification is in a language other than English, a verified English translation is required.
• Proof of Right to File: If the applicant is not the original inventor, a proof of right to file (assignment deed or employment agreement) must be submitted.
• Power of Attorney (Form 26): If the application is filed through a patent agent, a duly executed Power of Attorney is required.
• Priority Documents: If the priority document is not in English, an English translation must be submitted within three months from the date of entry into the national phase.
• Fees: The prescribed filing and examination fees must be paid.

4. Examination Process

Upon entering the national phase, the application undergoes a formal examination by the Indian Patent Office. The examination process includes:

• Preliminary Examination: The IPO checks for formal requirements and ensures that all necessary documents are submitted.
• Substantive Examination: The IPO conducts a detailed examination of the application to assess its novelty, inventive step, and industrial applicability. During this phase, the examiner may issue an Examination Report (ER), also known as the First Examination Report (FER), highlighting any objections or requirements.

5. Responding to Examination Reports

The applicant must respond to the FER within six months from the date of issuance. The response should address all objections raised by the examiner, and the applicant may amend the claims or provide arguments to overcome the objections.

6. Grant of Patent

If the examiner is satisfied with the response, the application proceeds to grant. The IPO then publishes the grant of the patent in the Official Journal, and the patentee receives a certificate of grant. The patent is valid for 20 years from the international filing date.

7. Post-Grant Requirements

After the grant of the patent, the patentee must comply with certain post-grant requirements, such as:

• Payment of Renewal Fees: To maintain the patent, renewal fees must be paid annually.
• Working of Patent: The patentee must submit a statement of working (Form 27) every year, indicating whether the patented invention is being worked in India.

8. Conclusion

The PCT national phase entry in India is a well-defined process that involves several steps, from filing the application to responding to examination reports and maintaining the granted patent. By understanding and complying with the requirements of the Indian Patent Office, inventors can effectively protect their innovations in India.

9. Tips for Applicants

• Early Preparation: Start preparing the required documents well before the 31-month deadline to avoid last-minute rushes.
• Professional Assistance: Consider hiring a qualified patent agent or attorney to navigate the complex procedures and ensure compliance with all formalities.
• Timely Responses: Promptly respond to examination reports and maintain good communication with the IPO to facilitate a smooth examination process.

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Prasad Karhad

Founder & Director at Patent Attorney Worldwide Private Limited

- Registered Patent Agent (IN/PA 2352),
- Indian Patent Office, Govt. of India
- Patent Facilitator for Start-ups, Startup India Govt. of India
- Bachelor’s degree in Electronics and Telecommunication engineering.
- Author of multiple books on Patents and IPR including a best-selling book on “How to patent an idea in India” which has been selected as the “Memorable Business Book of 2018” by Amazon
- Books are included in the syllabus of Educational Institutions as textbook and reference book on subject of IPR and Patents
- For over 15 years, Prasad has helped protect the intellectual property rights (IPR) of more than 1800 clients, including individuals, entrepreneurs, and educational institutes. This includes patents, trademarks, designs, and copyrights.

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