PCT National Phase Patent in India – A complete guide

A PCT National Phase Patent in India is the final step for getting a patent in India and this is filed at the end of the international phase. You need to file a set of forms along with a copy of the Complete Specification including the description, claims, drawings and abstract. 

You need to enter the PCT National Phase in India within 31 months of earliest priority date. 

Requirements for filing a PCT National Phase Patent in India

• Name, address and nationality of each inventor and applicants
• PCT application number
• Details such as number, date, applicant, title of the patent and filing country of the priority application.
• 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
• Amended claims filed under Art. 19 or 34 of PCT.
• Form PCT/IB/304
• Information about the status of the patent applications filed in other jurisdictions for the same invention.

Important Due dates for PCT National Phase Patent in India

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be filed within 48 months of the earliest priority date, failure to do so would result in the application deemed to be withdrawn.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

Need for Patent Cooperation Treaty (PCT)

To understand what is PCT Patent system you must first understand what is conventional patent filing system and what are its limitations.

The national patent system requires the filing of individual patent applications for each country for which patent protection is sought.

Under the traditional Paris Convention route, you must file a patent application in each country within l2 months of the filing date of the earlier application.

This means you need to meet the expenses for translation, patent attorneys in the various countries and payment of fees to the patent offices, all at a time when you generally do not know whether you are likely to obtain a patent or whether the invention is really new compared with the state of the art.

This further means that as an applicant you need to file hundreds of patent applications for your invention before you get to know if your invention is patentable or even commercially viable. And you need to do this within 12 months of filing your initial application in your home country.

Filing of patent applications under the national system means that every single patent office with which an application is filed has to carry out a formal examination of every application filed with it.

Solution to overcome this problem – Patent Cooperation Treaty

In order to overcome some of the problems involved in the national system a treaty called the Patent Cooperation Treaty was adopted in June 1970. The Patent Cooperation Treaty or PCT entered into force on January 24, 1978, and became operational on June 1, l978.

As its name suggests, the Patent Cooperation Treaty is an agreement for international cooperation in the field of patents.

The PCT does not provide for the grant of international patents. The task of and responsibility for granting patents remains exclusively in the hands of the patent offices of the countries where protection is sought. The PCT does not compete with but, in fact, complements the Paris Convention. Indeed, it is a special agreement under the Paris Convention open only to States which are already party to that Convention.

Overview of Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application.

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions.

The PCT is an international treaty with more than 155 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.

Purpose and objective of Patent Cooperation Treaty (PCT)

The principal objective of the PCT is, to improve on the previously established means of applying in several countries for patent protection for inventions. This acts both in the interests of the users of the patent system and the offices which have responsibility for administering it.

To achieve its objective, the PCT:

• establishes an international system which enables the filing, with a single patent office (the receiving office), of a single application (the international application) in one language having effect in each of the countries party to the PCT which the applicant names (designates) in the application;
• provides for the formal examination of the international application by a single patent office, the receiving office;
• subjects each international application to an international search which results in a report citing the relevant prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable;
• provides for centralized international publication of international applications with the related international search reports, as well as their communication to the designated offices;
• provides an option for an international preliminary examination of the international application, which gives the applicant and subsequently the offices that have to decide whether or not to grant a patent, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability.

Functioning of Patent Cooperation Treaty (PCT) System

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.

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.

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.

Contents of a Complete Specification for filing a PCT National Phase Patent in India

Every complete specification 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.
• end with a claim or set of claims defining the scope of the invention.
• refer to the deposit of the biological material in the international depository authority, if applicable; and
• 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.

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.

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.

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.

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.

You may provide information in the form of the table shown below:

Application No.	Date of Application	Name of the Country	Status	Publication date	Grant date

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 fin order or 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).

After the grant of a patent in India, in addition to payment of the annual renewal fee, the applicant must file an annual STATEMENT of WORKING of PATENT in India.

Steps for filing a PCT National Phase Patent application in India

• An Application to the Patent Office of India for grant of patent made out in Form 01.
• If the inventor is not making the application for grant of Patent, then applicant must obtain a proof of right from the inventor to file the application. The Proof of Right is either an endorsement at the end of Form 01 or a separate document in the form of an assignment.
• Provisional/Complete specification in filed made out in Form 02. A Complete specification must indicate the technical field; it must include the background and a description of the invention, in plain language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Complete specification is usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. Complete specification must contain at least one claim that is, information which determines the extent of protection sought by the applicant. See a sample of Complete Specification here.
• Statement and undertaking under Section 8 is made on Form 03, if applicable. This statement is a document providing information to the Indian Patent Office about applications for grant of Patents made in other jurisdictions for the same invention and the status of these cases. Under Section 08 for Indian Patents Act, 1970, an applicant must file Form 3 either along with the application or within six months of the date of application.
• Declaration as to inventorship shall be filed in Form 05 for applications accompanying a Complete Specification or a Convention Application or a PCT application designating India.
• A Power of authority (POA) made out on Form 26, shall be filed within three months of filing the case in India if the applicant is filing the application for grant of patent through a patent attorney or a Patent agent. If a general power of authority has already been filed for another application, a self-attested copy of it may be filed by the patent agent. In case the original general power of authority has been filed in another jurisdiction, that fact may also be mentioned in the self-attested copy.
• Priority documents, certified by the Patent office of the jurisdiction where the application for same invention was first filed, are required in the cases of A) Convention Application, and B) PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made under the PCT have not been fulfilled.
• The priority document may be filed along with the application or before the expiry of eighteen months from the date of priority, to enable publication of the application. In case of a request for early publication, the priority document shall be filed before/along with such request.
• Every application for a patent in India shall bear the signature of the applicant or authorized person/Patent Agent along with name and date in the appropriate space provided in the forms.
• The Specification shall be signed by the agent/applicant with date on the last page of the Specification. The drawing sheets should bear the signature of the applicant or his agent in the right-hand bottom corner.
• If the application for patent in India pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent.
• The application form shall also clearly indicate the source of geographical origin of any biological material used in the specification, wherever applicable.
• A request for examination is filed as given in Form 18.

Process of prosecuting a patent application 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 Indian Patent Office shall publish the patent application within the next 10 days.
• 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 into 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.

Additional information about PCT National Phase Patent in India

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.

Advantage of filing a PCT application

The PCT system offers several significant advantages:

1. Simple Process: Applicants need to file a single international patent application instead of multiple national applications, reducing the initial administrative burden.
2. Extended Timeline: The PCT allows applicants up to 30 and for some countries 31 months from the priority date to decide in which countries to pursue patent protection, allowing more time for strategic planning and decision-making.
3. Less Expensive: The PCT consolidates the initial patent filing process, helping manage costs and making it more affordable for inventors and businesses to seek international patent protection. The applicant does not need to initially pay any fee to patent offices of all other countries where the patent will be ultimately granted at the end of the process.
4. International Search and Examination: The PCT process includes an international search and optional preliminary examination, which provide valuable information on the potential patentability of the invention before entering the national phase. This allows the applicant to become aware of the possibility of getting the patent for that invention, and then decide to go forward with putting in time, effort and expenses of filing the National Phase.
5. Grant Certainty: The PCT establishes a standardized procedure that ensures uniformity and predictability in the patent application process across member countries. The national offices of all contracting states would be more willing to grant a patent which has received a positive examination report and which has been granted at other countries.

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

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

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