PCT national phase application essentially forms the foundation of the protection of polymer technology innovations by inventors in India. It is a method by which applicants can obtain one or more patents in several jurisdictions employing a single origin-based application which after some preliminary steps is then able to enter the PCT application process national phase. The improvement and development of products in various industries, such as automobile, aerospace, electronics, and healthcare, have been greatly influenced by the vast role of polymer technology in material science and innovation.
PCT Application Process
The PCT application process begins with the filing of an international application, after which an International Searching Authority conducts a Prior Art Search. It proceeds to the national phase in select countries where the application is evaluated in accordance with the host country’s patent laws to possibly grant patents.
PCT Patent Countries
The implementation extends to 157 contracting states, including the US, China, Japan, and all European Union nations. This means that inventors can apply for a patent in different countries at once, thus easing the process of acquiring patent guards in multiple countries.
PCT Patent Search
PCT patent search is carried out by the International Searching Authority to determine the presence of any prior art and non-antagonistic examination to the PCT application process to determine the novelty and inventive step of the invention. Inventors can find patent information combined with a database on PATENTSCOPE and search for appropriate patents on their own. They can then probate the application accordingly.
Eligibility and Requirements
Criteria for Filing PCT National Phase Application in India
In general, for entry in the PCT national phase application in India, one needs to fulfill the following conditions. Firstly, there has to be an India designation in the international application. Secondly, the application has to be filed within 31 months counting from the priority date or the international filing date whichever is earlier. Also, where the international application has been filed in a language other than the English language it requires translation into the English language for the application to be purged.
Timelines and Deadlines for Entering National Phase
According to the Indian Patent Act, the patent specification must involve a sufficient description of the invention, at least one mode of the invention’s working, and shall also detail them. There should be a clear identification of the invention as to what it entails and should contain clear and devoid-of-ambiguity claims.
Applicant Categories and Corresponding Fees in India
Applicants fall into different categories, including natural persons, small entities, and large entities, each with corresponding fee structures. Natural persons and small entities benefit from reduced fees compared to large entities. The Indian Patent Office (IPO) provides detailed fee schedules, ensuring transparency and aiding applicants in financial planning.
Filing Procedure
Preparing the Patent Specification for the National Phase
According to the Indian Patent Act, the patent specification must involve a sufficient description of the invention, at least one mode of the invention’s working, and shall also detail them. There should be a clear identification of the invention as to what it entails and should contain clear and devoid-of-ambiguity claims.
Handling Article 19 and 34 Amendments from the PCT Stage
During the international phase corrections can be made under Article 19 and 34. These amendments should be made when preparing a national phase application because it is here that errors may be detected during the International Preliminary Examination.
Filing the National Phase Application with the Indian Patent Office
The national phase application must be filed with the IPO, either electronically or in paper form. Applicants need to submit the complete specification, claims, abstract, drawings, and relevant forms, along with the prescribed fees. The IPO’s online filing system facilitates streamlined submissions and tracking.
Submitting Required Documents and Fees
In addition to the patent specification, a power of attorney if required, and the national phase entry form are needed to be filed. The prescribed fee as determined by the applicant category must be processed so as not be a hindrance in the processing of the application.
Technical Considerations for PCT Application Process
Patentable Subject Matter for Polymer Technology in India
The Indian patent law allows the granting of patents to almost all fields related to technology and industry but specific exclusions are made for items like mere discoveries and theories. Accordingly, to fulfill the requirement of polymer technology inventions, they have to satisfy the criteria of novelty, non-obviousness, and industrial utility. Such areas of innovation are the new polymer types, methods of creating polymers, and polymer uses in different industries.
Drafting Claims to Overcome Indian Patent Law Requirements
In India, claims have to be prepared for strict legal demands of the Indian law relating to patents. It should set down the boundaries of the invention, not contain any vagueness, and be derived from the description. The idea requires showing perfection with language as well as its structures to cope with the scrutinizing line during the examination.
Importance of Prior Art Search and Freedom-to-Operate Analysis
It aims at ascertaining the existing avenues of prior patents and publications that can affect the novelty and non-obviousness of the invention. A freedom-to-operate (FTO) analysis results in the exclusion of threats of a lawsuit once the invention has been commercialized.
Strategies for Accelerated Examination and Early Grant
Some provisions that an applicant can take advantage of include; the fast-track examination under Startup India and the Patent Prosecution Highway (PPH). Proper utilization of these mechanisms can make the process of granting patents to be faster thus enabling an organization, to be more competitive in the market.
Case Studies and Examples of PCT Application Process
Successful PCT National Phase Applications in the Polymer Field
Some successful PCT national phase applications in polymer technology described below are examples of efficient strategic patenting. For example, an MNE obtained a patent for a new biodegradable polymer that has commercial value as it is more environmentally friendly.
Challenges Faced and How They Were Overcome
Common challenges include addressing objections related to a lack of inventive steps or clarity in claims. In one case, an applicant overcame an inventive step objection by providing robust experimental data and expert affidavits demonstrating the technical advantages of the invention over prior art.
Data on Grant Rates and Prosecution Timelines
Data from the IPO indicates that the grant rate for polymer technology patents is relatively high, with an average prosecution timeline of 3-4 years. Proactive engagement with the IPO and timely response to examination reports can significantly influence these outcomes.
PCT Application Process Post-Filing Requirements
Filing Statement of Working (Form 27) Annually
Patent holders must file a statement of working (Form 27) annually, demonstrating how the patented invention is being worked in India. This requirement ensures that the patented technology contributes to the country’s industrial development.
Responding to Examination Reports and Hearings
Depending on the nature and type of application to be provided, examination reports from the IPO are provided to the applicant and the applicant has to reply to the objections within the set period. Attending hearings, if set, allows one to give and explain reasons directly to the examiner where the matter is in dispute.
Maintaining the Patent Through Payment of Renewal Fees
The grant of a patent entails a certain fee that a holder has to pay yearly to retain the patent. These are fees that are to be paid periodically to prevent the ending of the patent, which makes it necessary for one to follow diligently the maintenance of the patents.
PCT application process
The PCT application process national phase application for polymer technology in India can be defined as efficient though rather bureaucratic. Some of the areas that can be regarded as fitting under the key takeaways include eligibility requirements, strict compliance with time deadlines, and skillful preparation of the specifications and claims of the patents. Given the current state of innovation, which is characterized by a growing polymer technology, it becomes necessary that inventors and innovators of such products and technologies update themselves more often with the existing legal and technical jurisprudence in the field so that their products can benefit from strong patent protection regimes. The future of polymer technology patenting in India is also promising due to the continuous developments as well as the opportune patent environment that the country has to offer.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
