National Phase Patent in India
PCT National Phase Patent in India is filed by submitting a copy of the Complete Specification along with details of the applicants, inventors & of the priority. The due date to file is 31 months from the earliest priority.
The filing requirements are:
- PCT application number
- 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 if the original priority application is not in English (this can be filed at a later stage)
- A Power of Attorney form signed by an applicant or an authorized person for 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 (this must be filed every six months till the final disposal of the case in India)
Every complete specification for a National Phase 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
- 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.
Important Due dates for National Phase in India
- An application for PCT National Phase 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be filed within 48 months of the earliest priority date, failure to do so would result in the application deemed to be withdrawn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.
Attorney fee for entering National Phase in India
Action based fee
- Attorney fee for preparing and filing a National Phase application 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 National Phase application 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
| Click here: Fee for INDIAN applicants in Rupees. |
The official fee for filing a 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 |
Do note that the above table shows the actual official fee payable to the Patent Office, attorney fee would be additional.
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.
Request for Examination
The applicant has to expressly demand for the examination of his application by filing up and submitting the required forms and making the corresponding payment for it.
A request for examination has to be made within forty- eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier.
The Patent Office shall wait up to the end of thirty one months from the earliest priority date and then process the application.
However, the applicant may demand an expedited prosecution of the application at any time before the end of thirty one months period.
Examination report
The patent examiners shall search for similar earlier inventions in the same field as your patent application. Such similar earlier inventions are known as “prior art”.
Next, they will examine and compare the prior art to your patent application and determine if the prior art anticipates the novelty of your patent application. The patent examiner will also determine if the other patentability criteria (such as inventive step and industrial application) are met.
An examination report (FER) is prepared after conducting a prior art search to ascertain the novelty, and examining as to whether the invention disclosed in the specification is inventive and industrially applicable.
The Examiner also examines whether the invention belongs to one of the categories of non-patentable inventions coming under Section 3 and 4, and whether the application is in conformity with all the provisions of the Act.
The applicant is required to comply with all the requirements imposed upon him by the Act as communicated through FER.
Responding to the examination report
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.
If applicant fails to respond to the FER within six months from the date of issuance of FER or within an extended period of 3 months, the application is deemed to have been abandoned under Section 21(1) of the Act.
A communication to that effect is sent to the applicant for record.
If the response filed by the applicant does not overcome the objections of the examination report then the Controller shall offer an opportunity of a hearing to the applicant and decide the case on merits.
Subsequent to this hearing the Controller may either refuse the application or Grant the patent on the merits of the case.
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.
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.
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.
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This article has been written by
Patent 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 licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
- I am licensed to practice as a 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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