PCT National Phase Patent in India

Every complete specification for a PCT National Phase Patent in India shall:

1. fully and particularly describe the invention and its operation or use and the method by which it is performed.
2. disclose the best method of performing the invention which is known to the applicant for which he is entitled to claim protection.
3. end with a claim or set of claims defining the scope of the invention for which the protection is claimed.
4. refer to the deposit of the biological material in the international depository authority, if applicable; and
5. be accompanied by an abstract.

A POA from the inventor/applicant accompanies the application.

One can enter National Phase in India within 31 months in case of a PCT application.

These documents need to be in ENGLISH.

To file an application for PCT National Phase Patent in India we would require:

1. Name, address and nationality of each inventor and applicants
2. A copy of the Complete Specification which must include claims, abstract and drawings
3. Verified English translation of the priority documents
4. A Power of Attorney signed by an applicant or an authorized person of each applicant
5. Proof of Right: a document transferring the rights from inventor to the applicants
6. Information about the status of the patent applications filed in other jurisdictions for the same invention.

Do note that:
A request for examination must be filed within 31 months of the earliest priority date, failure to do so would result in the application deemed to be withdrawn.

Every complete specification shall:

1. fully and particularly describe the invention and its operation or use and the method by which it is performed.
2. disclose the best method of performing the invention which is known to the applicant for which he is entitled to claim protection.
3. end with a claim or set of claims defining the scope of the invention for which the protection is claimed.
4. refer to the deposit of the biological material in the international depository authority, if applicable; and
5. be accompanied by an abstract.

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.

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.

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.

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.

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:

1. 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.
2. 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.
3. Based on the international search report and the written opinion, you can evaluate with reasonable probability the chances of your invention being patented.
4. 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.
5. 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.
6. 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
7. 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:

1. brings the world within reach,
2. postpones the major costs associated with international patent protection,
   provides a strong basis for patenting decisions; and
3. is used by the world’s major corporations, research institutions, and universities when they seek international patent protection.

What happens to my application after filing the PCT National Phase Patent in India?

Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent.

Any examination these Offices may undertake should be made easier by the PCT international search report and the written opinion, which enable you to make necessary amendments to the claims in the application even before the national procedure starts. It is facilitated even more by the international preliminary examination procedure during which further amendments (and their patentability evaluation) are possible.

You also achieve other savings in communications, postage and translations because the work done during the international processing is generally not repeated before each Office (for example, you submit only one copy of the priority document instead of having to submit several copies).