Guide to the National Phase filing in India

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After the completion of 30/31 months from the date of filing the local applications, the PCT application is eligible to enter the national or regional phase. Once the applicant has 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 which these Offices may undertake should be made easier by the PCT international search report and the written opinion and even more by an international preliminary examination report.

International

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Advantages of entry through PCT National Phase

The PCT System has many advantages for an applicant who wants to enter through the national phase patent application, for the patent Offices, and the general public:

(a)  One has 18 months more time than if one had not used the PCT to reflect on the desirability of seeking protection in foreign countries. This time can be used by the applicant to see which country can be beneficial to enter into the national phase.

(b) International application in the form prescribed by the PCT cannot be rejected on formal grounds by any PCT Contracting State patent Office during the national phase of the processing of the application.

(c)  International search reports and written opinions contain important information about the potential patentability of your invention, providing a strong basis to make business decisions. The decision with regards to which country to enter can be made effectively.

(d)  Possibility during the optional international preliminary examination to amend the international application, before processing by the various national patent offices.

(e)  Search and examination work of patent offices in the national phase can be considerably reduced thanks to the international search report, the written opinion, and, where applicable, the international preliminary report on patentability that accompany the international application

(f)  Fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements can be advantageous.

(g)  International application is published together with an international search report; third parties are in a better position to evaluate the potential patentability of the claimed invention in multiple jurisdictions.

Indian Position

To file the national phase application in India, the applicant has to provide some documents to the patent office. The complete specification has to be provided which includes description, claims (if amended, both as originally filed and as amended), abstracts and drawings. The English translation is required for the description. The details of applicant and inventor(s) including name nationality and addresses have to be provided along with the priority claim. Where a PCT application claims a priority and the priority document were filed in compliance with Rule 17.1 of PCT with WIPO, a copy of Form of International Bureau 304 (PCT/IB/304) has to be filed with Indian Patent Office.

Other Documents required by the Office will be- In case, the details have not been furnished in the “Request” part, then the name, address, and nationality of the inventor have to be provided. If the applicant is not the inventor, he/she needs to file an instrument of assignment along with the declaration of being an inventor. Moreover, in case of any change in the documents, concerning the name of the applicant, after the international filing date, then it is necessary to fill the Form PCT/IB/306. Power of attorney will be needed in the case, an agent is appointed. As specified, the translation will be required by the applicant if the document is not in English. If the applicant has applied in some other countries, a statement must be made in Form 3 concerning the corresponding application in foreign countries.

Procedure after the filing of National Phase PCT Application

The procedure for filing the National Phase PCT Application is similar to the procedure being adopted for the normal patent applications filed. The patent application is published after 18 months after the first filing date. Nevertheless, the applicant can take the help of Patent Form 9 along with the prescribed fees to get an expedited publication, which is normally done within one month by the patent office.

Similarly, the request for examination has to be filed within 48 months from the date of filing. An Expedited examination request can also be filed in the Patent office under Form 18A as per Rule 24C of the Patent Rules, 2003. The Controller will then move on to providing the application to the examiner. After the examination is over, the controller will then forward the First Examination Report (FER) to the applicant which the applicant needs to submit the reply, within 6 months from the FER date. After satisfying the objections being raised by the controller the application will now move for publication where it will be open for the opposition if any. Finally, the patent moves to be granted for 20 years from the PCT filing date.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.

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