India simplifies Process of filing PCT National Phase Applications

In a promising move by the Indian Patent Office (IPO), the Controller General of Patents, Designs, and Trademarks (CGPDT) has issued new instructions for filing PCT National Phase Applications in India. The public notice was issued on July 02, 2012, and is in force since July 06, 2012.

There are two major points highlighted in the notice. One is the elimination of the need to file the PCT Application and related documents which are already notified/ published with the WIPO. The other is the clarification provided that no amendment of the PCT Application is allowed while entering the Indian National Phase. These instructions are applicable to both physical and e-filing.

One of the very positive outcomes of this notice is the elimination of the redundant processes of submitting PCT international application and related documents such as IB 304, 306, ISR’s among others, which are available with the International Bureau (IB) of the WIPO. The Applicant is no longer required to file the documents which are already available with WIPO. This was a long-felt need which finally paves its way to an efficient and simplified filing of a PCT National Phase Application. This will also reduce errors in data entry to obviate the need for corrections in PCT national phase applications.

These new instructions only apply to PCT National Phase Applications entering India, which do not claim priority of any PCT National Phase Application filed previously in India. The documents filed by the applicant should exactly correspond with the latest information available on the record of IB on the date of filing of the PCT National Phase Application in India. The information must have been notified/ published by the IB, in accordance with the PCT and the Regulations made thereunder. Any request pending with the IB will be of no significance and will not be reflected in the documents. If any such request is reflected in the documents, the information notified/published by IB will prevail. Thus all those documents, say for example the IPRP (International Preliminary Report on Patentability), which are not yet published at the IB but are available with the Applicant, should be filed with the IPO.

However, in slight contrast to the above-mentioned requirement, non-submission of unpublished (or even published) PCT Application related documents may have unfavorable consequences at the IPO. This is recently being reflected in a patent revocation decision by the IPAB (Intellectual Property Appellate Board) wherein one of the grounds of the patent revocation is the non-submission of the IPER with the IPO (on the basis of statement and undertaking under section 8 of the Indian Patent Act). Although in the present case, non-submission of IPER was held as a ground because the IPER was not published until the Indian patent was granted and therefore was expected by the Applicant to submit the same, the point to consider is that the decision also stated that “IPER related to processing an application in a country outside India” and that “the word ‘processing’ is an all-encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end.” The suggestion, therefore, at this stage, would be that even if only minimal documents are now required for filing during the national phase entry; upon submission of Form 3, all search and examination reports including ISR and IPER should be submitted.

Coming back to the notice, the IPO also eliminates the need to add the complete specification and abstract in Form 2. Only the last page of the published PCT (latest version) claims along with date and signature is what is needed. However, for the PCT Applications filed/published in a language other than English, the Application is required to file the translated complete specification and abstract in English along with the Translation Verification Certificate.

Another point clarified (re-confirmed) in the said notice is that the Applicant is not allowed to amend any part of the Application while entering the Indian National Phase. Any amendment in the claims or specification can only be made subsequent to a filing by filing Form 13 (Application for amendment). The fees, during the national phase entry, would also be calculated in accordance with the number of claims and sheets as available in the PCT Publication. Article 19 and Article 34 Amendments notified/published at the IB are to be taken into consideration. However, this stance of IPO (and inconsistency thereof from other global patent offices) has been debated for quite some time now, as certain claims, such as the method of treatment or CRM claims, which are not allowable in India, would unnecessarily have to be paid for. A strong clarification on this argument has not yet been given for far by the IPO and Applicants would, therefore, for the time being, have to shell out significantly more fees for additional claims.

However, fortunately, the IPO’s current fee structure is relatively economical with respect to other major Patent Offices and hopefully, this may not cause any bigger impact on the International Applicants.

On an ending note, the simplified process of National Phase Filing without the need of filing the PCT published/notified documents is a welcoming move by the IPO saving unnecessary documentation and valuable resources of both the IPO and the Applicants.

About the Author: Meenakshi Khurana, Patent Attorney, available at meenakshi@khuranaandkhurana.com

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