PCT National Phase Filing and Prosecution Stages in Indiambo-law.com/news/ipr.pdf · 2. National Phase Entry - India 1. Content of the Application: • International Application as

PCT National Phase

Filing and Prosecution Stages in India

© 2016 IPR CONSULTANTS. All Rights Reserved. Privileged & Confidential Slide 1

Prosecution Stages of an Indian National Phase Application

1. Pre-Filing Requirements

2. National Phase Entry

3. Post Filing Requirements

4. Publication

5. Strategic Preparation for Examination

6. Examination

• Response to Reports

• Hearing7. Patent Grant

8. Post Grant Procedures

• Patent Annuity

• Working Status of Patent


1. Pre-Filing - Requirements

1. National Phase Filing Due Date either in Chapter I or II is 31 Months from the earliest priority date

• Availability of Extension: NO; If applicant fails to file the application within 31 months from the priority

date, applicant will lose protection in India

2. Language of Filing an Application in India: English

3. Translation Requirement: Translation is not required if publication of the International application

is in English;

• Otherwise an English copy of the International application and any amendments thereof under Article

19 or 34 is required.

• When to Submit: at a time of filing the National Phase application

• Extension Available: NO






4. Publication


6. Examination




• Patent Annuity



2. National Phase Entry - India

1. Content of the Application:

• International Application as published in WIPO

• Description, Original Claims, Drawings, Abstract

• Amendments under Article 19 OR 34 (if any)

2. IB/304 – Proof of submission of priority document with International Bureau

3. IB/306 – If there is a change in the applicant during the international phase and National phase entry is

to be made on behalf of new applicant

4. WIPO Search Reports

• ISA Search Report

• ISA opinion


2. National Phase Entry –Official Fee (US Dollars)


Sr.

No.Official Fee

Natural

Person

Small

Entity

Large

EntityDue on Comments

1 Basic Filing Fee 27 67 134 Filing Time Mandatory

1.1Additional Claims Fee – Per

claim greater than 105.5 13.50 27

Filing Time

Mandatory, however,

recent changes in rules

allow deletion of claims to

reduce the surcharge fee.

1.2Additional Pages Fee – Per

page greater than 303 7 13.50

Filing TimeMandatory

1.3Additional Priority Fee – Per

priority greater than 1 27 67 134

Filing TimeMandatory

2 Request for Examination 67 167 334

On or before 48

Months from

Priority Date

Mandatory, but can be

filed later





4. Publication


6. Examination




• Patent Annuity




1. Proof of Right: Mandatory and has to be submitted within 6 Months of national phase filing date

2. Power of Attorney: Mandatory and has to be submitted within 3 months from the national phase

filing date

3. Foreign Filing Details:

• First time, within 6 months from the national phase filing date

• Subsequently, within 6 months from the filing date of a similar or substantially similar application filed

outside India



4. Priority Document:

• If filed with International Bureau, then IB/304 form;

• If not filed with International Bureau, then a certified copy of priority document is to be submitted within 3

months from the date of notification from controller.

5. Translation of the Priority Document:

• If the priority document is in English, then no translation is required.

• If the priority document is in non-English language, then English translation of the priority document is to be

submitted within 3 months from the date of notification from controller.

6. (optional) Change in Assignment:

• If there is a change in the applicant, assignment related information needs to be updated with IPO within six

months of assignment date.






4. Publication


6. Examination




• Patent Annuity



4. Publication

1. Normally, the PCT National Phase application is published within 3-4 months from the National

phase entry date in India. However, the publication may be delayed if the applicant has not complied

with post filing requirements.

2. No patent shall be granted before the expiry of six months from the date of Publication of the

Application.

3. Pre-Grant Opposition:

• After publication, any person may file an opposition by way of representation to the Controller against the

grant of Patent, at the appropriate office.






4. Publication


6. Examination




• Patent Annuity




Indian Examination Report includes certain standard procedural objections. Since the time period to respond to the Examination Report and comply with the objections is merely SIX MONTHS, it is imperative to pre-prepare for such standard objections beforehand in order to timely reply to the Examination Reports. The strategic preparation for examination includes:

1. Foreign Filing Details:

• Details including updated status of all the foreign applications filed for same or substantially the same invention.

• Search and Examination Reports including granted claims (along with English Translation thereof ) issued in respect of all the foreign applications filed for same or substantially the same invention.

• Preparation of petition in case details in respect of any of the foreign applications filed for same or substantially the same invention have not been submitted within prescribed time limit.

2. English Translation of priority document (s), if not submitted previously;

3. Copy of Assignment or IB -304; if not submitted previously

4. Updated Power of Attorney (PoA), if earlier PoA has expired.






4. Publication


6. Examination




• Patent Annuity



6. Examination

1. Maximum time period to comply with objections is 9 months from the date of first examination

report

2. Examination Reports includes:

• Technical Objections

• Procedural Objections

3. Response to Examination Reports/ Office Action

• Time period to Reply to Examination Report (s) - 6 months from the date of issuance of first examination

report

• Extension Available: YES, Maximum extension available is 3 months; which can be availed by filing an

official request for extension before the expiry of aforesaid 6 month period.


6. Examination – Hearing

1. A Hearing is issued in case the Controller is not satisfied with the response to the examination

reports by filed by the Applicant;

2. Hearings can be conducted personally or through video-conferencing or audio-visual

communication devices;

3. A date of Hearing is officially communicated by the Patent Office.

4. Extension Available: YES

• Maximum two times extension can be availed;

• Each extension can be availed for maximum 30 days;

• Extension can be availed by filing an official request and payment of official fees.

• Response for filing of written submissions to Hearing: 15 days from the date of hearing.






4. Publication


6. Examination




• Patent Annuity



7. Patent Grant

1. The date of grant of Patent is the date on which the Controller orders the grant of patent in the

file. Simultaneously, the patent number is generated and the fact of granting the patent is available on

the official website.

2. Term of the Patent: The term of the patent is 20 years from the PCT International application filing

date.

3. On grant of patent, application, specification and other related documents are open for public

inspection and patent number is published in official journal.






4. Publication


6. Examination


• Hearing

7. Patent Grant 8. Post Grant Procedures

• Patent Annuity




1. Post Grant Opposition

• Any person interested can file a Notice of Opposition against the grant of Patent within twelve months from

the date of publication of grant of patent at the appropriate Office.

2. Annuity Payment

• Patentee has to pay annuity fee only after grant of patent in India.

• Where a patent is granted later than two years from the date of filing of the application, the fees which have

become due in the meantime may be paid within a period of three months from the patent grant date.

• Subsequently, annual annuity fee shall be payable at the expiration of the second year from the patent grant

date or of any succeeding year.

• Annuity fee can be made beyond the due date in the extended period of six months. This period of six

months is not further extendable.



3. Statement regarding working of the Patented Invention

• The patentee and every licensee shall furnish a statement as to the extent to which the patented invention has

been worked on a commercial scale in India, in respect of every calendar year, within three months of the

end of each year.

4. Post Grant Amendments (optional)

• After the grant of patent, the patentee may apply for an amendment of the application for patent, complete

specification or any document relating thereto to be amended subject to such conditions, if any, as the

controller thinks fit. However, any person interested may file a notice of opposition in within three months

from the date of publication of the application for amendment.


For further details, contact us at:-

IPR CONSULTANTS

Tapasya Corp Heights,

Regus Centre (Ground Floor),

Sector 126, Noida

Delhi-NCR 201303,

India

M: 91 991 022 2350

O: 91 120 421 1595

F: 91 120 612 7703

E: [email protected]


mailto:[email protected]

Documents

PCT National Phase Filing and Prosecution Stages in Indiambo-law.com/news/ipr.pdf · 2. National Phase Entry - India 1. Content of the Application: • International Application as