Chapter 07

Convention Application, International Application and

National Phase Application

 

07.01

Convention Application

 

07.01.01

Paris Convention and WTO Agreement

  1. This part is directed to applications for patents that enter India through Paris Convention as well as PCT route.
  2. Paris Convention of 1883 provides reciprocity in filing with right of priority. India became member of Paris Convention in 1998.
  3. India is also a member of WTO Agreement (1995).
  4. India is also a member of Budapest Treaty on the International recognition of the deposit of micro-organism for the purpose of patent procedure (1977) and provides a mechanism for depositing biological material in the internationally recognized depository authorities for the purposes of supplementing the description of a Specification.
  5. India is also a member of Patent Co-operation Treaty.

Section 133

07.01.02

Convention Country

Any country, which is a signatory or party or a group of countries, union of countries or inter-governmental organizations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicants for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries for the purposes of this Act.

At present, India is a member of WTO and a member country in the Paris Convention and a contracting state to the PCT. Any country, union of countries or inter-governmental organizations which are members/contracting states to the above convention/treaty/agreement are convention countries for the purposes of the Act.

Section 2(1)(d), 133, 134

 

 

 

 

07.01.03

Convention Application

a)      Where a person has made an Application for a Patent in respect of an invention in a Convention country (basic application), and that person or the legal representative or assignee of that person makes an application under this Act for a patent within twelve months after the date on which the basic application was made, the priority date of a claim of the complete specification, being a claim based on matter disclosed in the basic application, is the date of making of the basic application. Where applications have been made for similar protection in respect of an invention in two or more convention countries, the period of twelve months referred to in this sub-section shall be reckoned from the date on which the earlier or earliest of the said applications was made.

b)      Where applications for protection have been made in one or more convention countries in respect of two or more inventions which are cognate or of which one is a modification of another, a single convention application may be made in respect of those inventions at any time within twelve months from the date of the earliest of the said applications for protection. However, the fee payable in respect of such application shall be the same as if separate applications have been made in respect of each of the said inventions.

Section 135

07.01.04

Documents to be submitted

Every convention application shall -

a)      be accompanied by a complete specification;

b)      an abstract;

c)      specify the date on which and the convention country in which, the application for protection, or as the case may be, the first of such applications was made; and

d)     state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.

e)      a complete specification filed with a convention application may include claims in respect of developments or, additions to, the invention in respect of which the application for protection was made in a Convention country.

f)       If the Controller requires, a certified copy of the priority document has to be filed within 3 months from the date of communication by the Controller, of such requirement. If the priority document is in a language other than English, a verified English translation shall be submitted.

Section 136, 138.

Rule 121

07.01.05

Multiple priorities

a)      When two or more applications for patents constituting one invention have been made in one or more convention countries, one application may be made within twelve months from the date on which the earlier or earliest of those applications was made.

b)      The priority date of a claim is the date on which the matter was first disclosed in a patent application.

Section 135(2), 137

07.01.06

Other conditions

a)      The term of patent of a convention application shall be twenty years from the date of filing of the Application in India.

b)      A Convention Application can be divided, and the divided Application shall have the same priority date.

c)      A Convention Application shall not be post-dated under sub-section (1) of section 17 to a date later than the date on which under the provisions of this Act the application could have been made.

Section 136, 139

07.02

International Application under PCT

 

07.02.01

PCT International application by Indian applicant

An Indian applicant can file a PCT International application in the following manner:

a)      Filing in the Indian Patent Office acting as Receiving Office. In such cases, it is advisable that the application be accompanied by permission for foreign filing granted u/s 39 by the Controller. If such permission is sought along with the application, there is a probability that the permission may be deferred and the application may be referred to DRDO / Department of Atomic Energy for their directions.

b)      Filing directly in the International Bureau of WIPO after taking permission u/s 39 from the Indian Patent Office.

c)      After filing a patent application in India, anytime before the expiry of 12 months from the date of filing, file an international in IB of WIPO or in Indian Patent Office as Receiving Office. However, if the international filing is within 6 weeks from the date of filing in India, such filing shall be made after taking permission u/s 39 from the Indian Patent Office.

Section 39

07.02.02

Indian Patent Office as Receiving Office

a)      An international patent application can be filed in Indian Patent Office as a Receiving Office, in request form (PCT / RO / 101) in triplicate, which can be obtained free of charge from the Receiving Office or from the International Bureau of WIPO or can be downloaded from WIPO website.

b)      In this case, the applicant shall make request for permission under Section 39. After the grant of such permission, the Indian Patent Office shall transmit the patent application to the IB. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.

International Bureau as Receiving Office

An international patent application can be directly filed in IB along with the prescribed fee, in request form (PCT / RO / 101), in duplicate. Permission u/s 39 is required for filing directly in IB. Such an application may also be filed electronically.

After filing a patent application in India

a)      An international patent application can be filed within twelve months from the filing of patent application in India, in the Indian Patent Office, as a Receiving Office. However, if such an application is filed before the expiry of 6 weeks from the date of filing in India, permission u/s 39 is required. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.

b)      An applicant has another option to file an International Application within twelve months from the filing of patent application in India, directly in IB, claiming the priority of the previously filed Indian Patent Application along with the prescribed application fee. A certified copy of the Indian Patent Application may be filed with the International application within sixteen months from the date of priority.

Section 2(1)(ia), 7(1A), 39

PCT/RO/101

07.02.03

Requirements of PCT International Application

a)      The International Application should contain a request, a description, one or more claims, one or more drawings (where required) and an abstract. It should comply with the prescribed physical requirements, should be in one of the prescribed languages, and the required fee should be paid.

b)      The request may also be presented as a computer printout as prescribed by Section 102(h) of the Administrative Instructions under PCT or, alternatively, as a computer printout prepared using the PCT-EASY software, in which case it must be accompanied by a computer disk containing a copy of the data as contained in the request in electronic form and copy of the abstract.

c)      The request should contain a petition, i.e., a request that the International Application be processed according to the PCT.

d)     It should further contain the title of the invention with necessary data concerning the applicant, the inventor and the agent representing the applicant. It must be signed by the applicant or his agent. Declaration of inventorship should be signed by the inventor(s) / the applicants in convention country, as applicable, and not by the agent. Where there are two or more applicants, each applicant should sign at his choice either the request or, if the request is signed by an agent, a separate power of attorney. The request should also contain details of priority (where applicable) and an indication of competent International Searching Authority. Following are the competent International Searching Authorities for an Indian Applicant:

    1. Austrian Patent Office (AT)
    2. Australian Patent Office (AU)
    3. European Patent Office (EP)
    4. China Intellectual Property Office (CN)
    5. United States Patent & Trademark Office (US)
    6. Swedish Patent Office (SE)

e)      The request may contain some optional indications, in particular, a priority claim according to the Paris Convention for the Protection of Industrial Property.

f)       A certified copy of the priority document is required for each priority claimed in the application and the same is to be furnished within 16 months from the priority date. The copies for the designated offices are prepared by the International Bureau at no additional cost to the applicant.

g)      It is important to note that International Application filed under new Section 801 (administrative section of PCT) may only be filed with Receiving Offices, which are prepared to accept them, and on such electronic media specified by the Receiving Offices (for further details please see PCT Applicant’s Guide).

h)      Language of International Application must be one, which the Receiving Office accepts for that purpose (Rule 12.1(a) of Regulations under the PCT). If Application is filed in any Receiving Office in India it has to be either in English or Hindi. However, an application in Hindi shall be accompanied by a duly verified English translation.

i)        Neither the Treaty nor the Regulations enumerate the languages in which International Applications may be filed. Whether a given language can be used depends on the readiness of the Receiving Office to accept International Applications in that language. Each Receiving Office must, however, accept at least one language for the filing of International Applications, which is both a language accepted by at least one International Searching Authority, competent for the International searching of International Applications filed with that Receiving Office and one of the language of Publication (i.e. Chinese, English, French, German, Japanese, Spanish, Russian or Arabic). In other words, either the International Application in its original language or the translation will be sufficient for the processing by the Receiving Office, for International search and for International publication.

j)        The request must always be filed in a language that is accepted by the Receiving Office and which is also one of the eight languages of publication.

k)      Claims: The Claims must define the subject matter of the invention for which protection is sought. They must be clear and concise and fully supported by the description.

l)        With respect to the structure and drafting of Claims, the PCT requirements are largely similar to what is accepted in most Patent Offices.

m)    Drawings: The drawings are only required where they are necessary for the understanding of the invention. This will be the case for example for an engineering type of invention. It will not be the case when an invention cannot be drawn, as is the case for a chemical product. Here again, the requirements are similar to those of most Patent Offices.

n)      Abstract: The abstract is intended to serve the purpose of technical information. The Treaty says clearly that it cannot be taken into account for any other purpose. This means in particular that it cannot be used for the purpose of interpreting the scope of the protection sought.

o)      The abstract consists of a concise summary of the disclosure of the invention as contained in the description, Claims and drawings in preferably within 50 to 150 words. It must be drafted in a way, which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use of the invention.

p)      Sequence Listing: PCT allows a Designated Office to require that a copy of a sequence listing be filed only on an electronic medium.

q)      For the applicants who do not wish to file the sequence listing part of their International Applications under new Section 801 (administrative section of PCT), the current provisions will continue to apply, including the filing in written form only (under Rule 5.2) and the concurrent or subsequent furnishing, as provided under PCT Rule 13 and Section 208, of the sequence listing parts in computer readable form but only for the purposes of International search and / or International preliminary examination. In such cases the current system for calculating the basis fee, on the basis for the total number of sheets of the International Application including the sequence listing part, will continue to apply.

r)       Guidelines for preparing/drafting an International patent application are provided in PCT Applicant’s Guide.

Section 102(h), 208, 801 of Administrative Instructions under the PCT.

Rule 5.2, 12.1(a), 13 of Regulations under the PCT.

PCT Applicant’s Guide (International Phase, National Phase).

07.02.04

Functions of Indian Patent Office as Receiving Office

 

 
  1. Patent Office receives the PCT International Application from the applicant or from his authorized Agent.
  2. The Office accords the date of receipt of international application as the international filing date, provided that the Office has found that, at the time of receipt:

                                i.            The applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the Office.

                              ii.            The international application is in the prescribed language.

                            iii.            The international application contains at least the following elements:

-          an indication that it is intended as an international application,

-          the designation of at least one contracting state,

-          the name of applicant, as prescribed,

-          a part which on the face of it appears to be a description, a part which on the face of it appears to be claim(s).

  1. (a) If the Office finds that the international application did not, at the time of receipt, fulfill the requirement listed in para 2 above, the Office, as provided in the regulations, invites the applicant to file the required correction.

(b) If the applicant complies with the invitation, as provided in the regulations, the Office accords the date of receipt of the required correction as the international filing date.

  1. (a) Then the Office checks whether the International Application contains any of the following defects:

                                i.            it is not signed as provided in the regulations,

                              ii.            it does not contain the prescribed indications concerning the applicant,

                            iii.            it does not contain a title,

                            iv.            it does not contain an abstract,

                              v.            it does not comply to the extent provided in the regulations with the prescribed physical requirements.

(b) If the Office finds any of the above defects, it invites the applicant to correct the international application as soon as possible, ordinarily within one month from the date of filing, giving a time limit of two months for correction. If the applicant fails to make correction within the prescribed time limit of two months or the time limit as extended by the Office, the application shall be considered withdrawn and the Office declares so.

(c) If the international application refers to drawings which, in fact, are not included in that application, the Office notifies the applicant accordingly and if the applicant furnishes the same within two months or within the time limit as may be extended by the Office, the international filing date shall be the date on which the drawings are received by the Office. Otherwise, any reference to the said drawings shall be considered non-existent.

(d) If the Office finds that within the prescribed time limits the fee prescribed under Art.3(4)(iv) has not been paid, or no fee prescribed under Art.4(2) has been paid in respect of any of the designated states, the international application shall be considered to be withdrawn and the Office declares so.

(e) If the Office finds that fee prescribed under Art.4(2) has been paid in respect of one or more (but less than all) designated states within the prescribed time limit, the designation of those states in respect of which it has not been paid within the prescribed time limit shall be considered and the Office declares so.

(f) If, after having accorded an international filing date to the international application, the Office finds, within the prescribed time limit, that any of the requirement listed in 2(i to iii) above, was not complied with at that date, the application shall be considered as withdrawn and the Office declares so.

  1. If the language of filing of the International Application is the one acceptable to the Office but not acceptable by the International Searching Authority to carry out International search, the applicant is required to furnish, within one month from the filing date of the Application, the translation into a language among the following:

-          a language accepted by the International Searching Authority to carry out International search;

-          a language of publication by IB (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish)

  1. In cases, where the applicant fails to furnish, within the applicable time limit, a translation for the purpose of International search, the Office invites the applicant to furnish the missing translation. Where the applicant does not furnish the missing translation within the time limit fixed in the invitation, the International Application will be considered withdrawn and the Office declares so.
  2. Not all the requirements of the International Application are required to be examined by the Office. For instance, the Office does not deal with substantive questions such as, whether the disclosure of the invention in the Application is sufficient and whether the requirement of unity of invention is complied with. It also does not check all the many detailed physical requirements of the International Application.
  3. Those requirements are only checked to the extent that compliance with such requirements is necessary for the purpose of reasonably informed International publication.
  4. Typical examples of defects, which may be corrected without affecting the International filing date, are:

-          Non-payment or partial payment of fees;

-          Lack of signature in the request;

-          Lack of a title of the invention;

-          Lack of an abstract;

-          Physical defects.

However, in all such cases, non-correction within the prescribed time limit may lead to the Application being considered withdrawn as mentioned in the foregoing paragraphs.

  1. All the actions as regards to non compliance of the requirements of the International PCT application are subject to strict observance by the Patent Office of the PCT Receiving Office Guidelines.
  2. The Office then transmits the “record copy” of the International Application to the International Bureau and the “search copy” to the International Searching Authority. The Office keeps a third copy, the “home copy”. The transmittals do not take place if, and as long as, national prescriptions concerning national security apply and the provisions of Section 35 follow.
  3. The Office then mails the record copy promptly to the International Bureau and in any case not later than five days prior to the expiration of the 13th month from the priority date.
  4.  The search copy must be transmitted by the Office to the International Searching Authority at the time of transmittal of the record copy to the International Bureau except, where the search fees has not been paid on time, in which case, the transmittal of search copy takes place after that fees has been paid.

Section 35.

Article 3, 4, 11, 14 of PCT.

PCT Receiving Office Guidelines

 

 

 

 

 

07.02.05

PCT Fee (may vary from time to time)

  1. All PCT fees are subject to change periodically. For latest fees, please refer the latest PCT newsletter at URL www.wipo.int.
  2. Transmittal fee: as given in the First Schedule.
  3. Failure to pay fees or underpayment of fees can be corrected under PCT rule 16 bis. An invitation to pay missing fees will be issued by the Receiving Office. Payment can be made within a month from International filing date or later with a late payment fee.
  4. An Indian applicant, for filing an International Application under Patent Cooperation Treaty, is required to remit the consolidated amount towards International filing fee and search fee in US Dollar by Demand Draft, payable to the Controller of Patents at State Bank of India, New York Branch. Transmittal Fee payable to the Indian Patent Office shall be paid in INR to the Controller of Patents, preferably along with the application but not later than one month from the date of receipt of the International Application.

Rule 16bis of Regulations under the PCT.

07.02.06

International Search

  1. International Search report is established by the International Searching Authority designated by the applicant in International Application. The International Searching Authority provides a written opinion on patentability along with the International Search Report.
  2. If the International Application did not claim priority of a previously filed Indian Patent Application, the International search report is normally available within nine months from the International filing date. If priority is claimed, that report is available usually by the 16th month from the priority date. Even where priority is claimed, the International search report is normally available in time before publication of the International Application. This allows time for the applicant to withdraw the Application before publication, if desired.
  3. On receipt of the International Search Report the applicant may amend the Claims (under Article 19) in light of the International Search Report with effect in all designated States. The time limit referred to in Article 19 is two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority, or 16 months from the priority date, whichever time limit expires later. However, any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit is considered to have been received by the Bureau on the last day of the time limit if it reaches before the technical preparations for international publication have been completed.
  4. Such amendments save costs for preparation of different sets of amendments and for local Agents filing such amendments before Designated Offices.
  5. Indian Patent Office has been recognized as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) at the meeting of the General Assemblies of WIPO held in September – October, 2007.
  6. Once the Indian Patent Office commences operation as an ISA and an IPEA, the International search and examination reports of the International Applications filed in the Patent Office will be issued by the Office.

Article 15, 16, 17, 18, 19 of PCT.

07.02.07

Withdrawals in International Application

 

 

Withdrawal of Application

  1. The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.
  2. Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the Receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
  3. No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the Receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

Withdrawal of Designations

  1. The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90bis.4.
  2. Where a State has been designated for the purpose of obtaining both, a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
  3. Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90bis.1.
  4. Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the Receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
  5. No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the Receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

Withdrawal of Priority Claims

  1. The applicant may withdraw a priority claim, made in the international application under Article 8(1), at any time prior to the expiration of 30 months from the priority date.
  2. Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) of PCT Rule 90bis3 in respect of one or more of the priority claims.
  3. Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the Receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
  4. Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e) of PCT Rule 90bis3, be computed from the priority date resulting from that change.
  5. In the case of the time limit referred to in Article 21(2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the Receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.

Withdrawal of Supplementary Search Request

  1. The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant and to the International Bureau, under Rule 45bis.8(a), of the Supplementary International Search Report or the declaration that no such report will be established.
  2. Withdrawal shall be effective on receipt, within the time limit under paragraph (a) of PCT Rule 90bis.3bis, of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration referred to in paragraph (a) of PCT Rule 90bis.3bis, the communication of that report or declaration under Article 20(1), as applicable by virtue of Rule 45bis.8(b), shall nevertheless be effected.

Withdrawal of the Demand, or of Elections

  1. The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
  2. Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
  3. If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.

Signature

  1. Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph (b) of PCT Rule 90bis.5, be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall, subject to paragraph (b), not be entitled to sign such a notice on behalf of the other applicants.
  2. Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor could not be found or reached after diligent effort, a notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and

i. a statement is furnished explaining, to the satisfaction of the Receiving Office, the International Bureau, the Authority carrying out the supplementary international search or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant concerned, or

ii. in the case of a notice of withdrawal referred to in Rule 90bis.1(b), 90bis.2(d), 90bis.3(c) or 90bis.3bis(b), the applicant concerned did not sign the request but the requirements of Rule 4.15(b) were complied with, or

iii. in the case of a notice of withdrawal referred to in Rule 90bis.4(b), the applicant concerned did not sign the demand but the requirements of Rule 53.8(b) were complied with.

Effect of Withdrawal

  1. Withdrawal under Rule 90bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23(2) or Article 40(2).
  2. Where the international application is withdrawn under Rule 90bis.1, the international processing of the international application shall be discontinued.
  3. Where a supplementary search request is withdrawn under Rule 90bis.3bis, the supplementary international search by the Authority concerned shall be discontinued.
  4. Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the international application by the International Preliminary Examining Authority shall be discontinued.

Article 8(1), 20(1), 21(2)(a), 23(2), 39(1), 40(2) of PCT.

Rule 4.15(b), 45bis.8, 53.8(b), 90bis, 90.2(b) of Regulations under the PCT.

07.02.08

International Preliminary Examination

 

 

Significance

  1. International Preliminary Examination is useful in many ways. It is optional for the applicant and provides, in addition to the International Search Report, a second opinion on the usual criteria of patentability before expenses are incurred for the national phase (for translation, fees and foreign Agents etc.).
  2. Helps the applicant to adapt the International Application in accordance with the results of the International Search Report;
  3. If the report is negative, the applicant may decide to abandon the Application. However, the opinions from ISA & IPEA are non-binding on the member countries.

International Preliminary Examining Authorities

For an Indian Applicant, the following are competent International Preliminary Examining Authorities (IPEAs):

  1. Austrian Patent Office (AT)
  2. Australian Patent Office (AU)
  3. European Patent Office (EP) (Only if ISA was AT, EP or SE)
  4. China Intellectual Property Office (CN)
  5. United States Patent & Trademark Office (US)
  6. Swedish Patent Office (SE)

Demand for International Preliminary Examination

  1. The demand for international preliminary examination shall be made separately from the international application.
  2. The demand for international preliminary examination may be made to the Indian Patent Office, International Bureau or to any of the six competent International Preliminary Examining Authorities mentioned above.
  3. The demand shall contain the prescribed particulars and shall be in the prescribed language and form.
  4. The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.
  5. The demand for International Preliminary Examination has to be made:
    1. Within 22 months from the date of priority, or
    2. Within 3 months from the date of transmittal of International Search Report and written opinion to the applicant or the declaration under Article 17(2),

whichever is later.

  1. The fees to be paid by the applicant is given in the PCT Newsletter which is available on the WIPO website, www.wipo.int.

Article 33, 34, 35, 17(2)

07.03

PCT National Phase Application

 

07.03.01

General

  1. The national phase follows the international phase. It is necessary for an applicant to file a national phase application in each designated country, where protection is sought for, within the time prescribed under PCT, i.e., within 30 months from the priority date. However, this time limit may be increased through National Laws by each member Country. Indian Patent Law provides a time limit of 31 months from the priority date. Some countries allow extension of such time limit on payment of additional fee.
  2. For making a national phase application before a Designated Office, the applicant shall:
    1. pay the prescribed national fee; and
    2. file a duly verified translation of the basic application, if necessary.
  3. International filing date is the deemed date of filing in India if the applicant enters the national phase in India by filing a National Phase Application within thirty one months from the date of priority. 
  4. The international filing allows the preservation of priority from the date of filing of first application in the convention country.
  5. This is a simple and economical procedure for the applicants seeking protection for their invention in many countries.
  6. After the International Application is filed, the applicant gets an International Search Report (ISR) and a written opinion on the patentability of the subject matter. The applicant may file a demand for an International Preliminary Examination. The applicant, then, may decide to enter a national phase.

Article 22, 23 of PCT.

07.03.02

Basic Requirements to enter National Phase in India

  1. A PCT National Phase Application is considered as a Convention Application under Section 135 of which the filing date is the date of International Application.
  2. The applicant has to file the National Phase Application within 31 months from the priority date or International Application date, whichever is earlier.
  3. The jurisdiction of filing is the same as that of the ordinary Application. Address for service in India shall be filed.
  4. Where the International Application has not been filed or published in one of the official languages (Hindi or English), a translation of the application, description, claims (if amended, both as originally filed and amended together with any statement), drawings, if any, and abstract should be submitted along with the Application.
  5. For the National Phase Application, the title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification. However, if the applicant has amended the Complete Specification under Chapter-I and/or Chapter-II of the PCT, such amended specification shall be taken as the Complete Specification for the purpose of filing in India. The applicant may make a request to the Controller for amendment of the complete specification which was filed with the National Phase Application, as a separate request in Form-13, along with the application. The fee payable in respect of a National Phase Application is calculated as per the number of pages and claims as they stand in the PCT Application on the date of filing in India. Section 138(4) read with Rule 7(2)(c) mandates that the applicant shall pay the whole fee along with the application, based on such PCT International Application.
  6. If the applicant makes an amendment for an International Application before ISA and/or IPEA, it shall, if the applicant so desires, be taken as an amendment before the Patent Office.
  7. In case of a change in name of an applicant, if the change has occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306), the change may be effected by filing Form 6 and/or Form 13.
  8. If PCT/IB/304 is available on the website of WIPO, the Patent Office shall not require the applicant to submit the priority document. If not available on the website of WIPO, the Office may request for the same from the International Bureau.
  9. However, if the applicant has not complied with the requirements of rule 17.1 paragraph [a or b] of the regulations made under the PCT, he shall submit the priority document to the office before the expiry of thirty one months from the date of priority.
  10. Where the applicant does not comply with the requirements of (9) above, the Controller shall invite the applicant to file the priority document or the translation thereof within three months from the date of such invitation. If the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.
  11. All other formalities that are required for filing and processing an ordinary patent application shall apply to a National Phase Application.
  12. Processing of a national phase Application will not commence before the expiry of 31 months from the date of priority. However, the applicant may file an express request for processing before 31 months, in Form 18.

Section 7, 10(4A),

135, 138(4).

Rule 20, 21.

Form-6, 13, 18.

Rule 17.1 (a or b) of PCT Regulations.

 

 

 

 

 

 

 

 

 

 

 

 

 

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