The PCT is one of the chief treaties providing a single method of filing patent applications to shield inventions in various territories. The PCT offers applicants the ability to receive patent protection in over 150 countries as the filing of a single “international” application under PCT secures protection for an invention in all of these countries at the same time making the entire process less complicated and probably less expensive. After it hits the international phase of the process, the PCT then advances to the National phase entry where the application is scrutinized by the patent offices of the country that has been designated, including the PCT National Phase Application in India.
Timeline and Language for PCT National Phase Application in India
The procedure of filing the national phase application is governed by the provisions of the PCT and Indian Patent Act and rules, and must be done within 31 months from the priority date of the PCT application. This is due before the end of this period and there is no provision for the granting of any extension. The application has to be submitted in English and as a rule, if the international application has been filed in another language, an English translation needs to be filed with the application. The main documents, which need to be submitted during the PCT National Phase Application in India, are Power of Attorney; the Assignment Deed, if the applicant is not an inventor; and priority documents, certified by the relevant authorities.
Filing a PCT National Phase Application in India
Foreign applicants and any person interested or doing business in India can directly file their invention to Indian PCT through national phase entry. The application has to be filed with the Controller of Patents in India either in person or through a registered patent agent who shall have his address of business in India. The application is tried in accordance with the Indian Patents Act, of 1970, and the results of the international stage do not affect this attempt.
Steps to File a PCT National Phase Application in India
Preparation of Documents
The first step in filing a PCT national phase application in India involves meticulous preparation of all necessary documents. These documents include the PCT application itself, a Power of Attorney (POA) which authorizes a patent agent to act on behalf of the applicant, an Assignment Deed if the applicant is not the inventor, and certified priority documents that establish the original filing date and priority claim. Ensuring that these documents are complete, accurate, and correctly formatted is critical to prevent delays and ensure a smooth filing process. It is also advisable to prepare verified English translations if the original documents are in another language.
Submission
The final step in this process is the submission of the National phase entry application to the Indian Patent Office after all the necessary documents have been prepared. It may be filed electronically using the Indian Patent Office website or physically at any of the offices that are established for Indian patent offices namely Kolkata, Mumbai, Chennai, or New Delhi. Online submission is preferred to other methods such as posting, hand delivery, or dropping since it is convenient, and fast and usually charges lower fees than other methods. The same applies to the application process as the online system has enabled applicants to monitor the progress of their application in real time.
Payment of Fees
The next step that follows submission is to pay other official fees charged for the approval of the research. These fees vary depending on the standing of the applicant and include the application filing fee, a search if the applicant chooses so, and an examination fee. Regarding the fees charged, the structure is progressive and thus enjoys a comparatively lower fee schedule under the new structure to natural persons and small entities as opposed to large corporations. Furthermore, there may be ad hoc charges where extra claims have to be made, more pages need to be included, or any modifications to the existing application. It is possible to accept electronic payment from customers and this form of payment mostly involves less time in processing than physical payment.
Examination Request
If the applicant fails to petition within 48 months from the priority date, he loses ownership of the invention and it becomes in the domain of those who wish to employ it. This involves sending the response to the Patent Examiner at the Indian Patent Office and thus forms the basis of the review process. In the absence of this request, the applicant will never look into the application, and no patent shall be issued. To ensure the application is not regarded as withdrawn, the request for examination has to be filed with ARIPO within the set timeframe.
Respond to Examination Report
Upon examination, the Indian Patent Office will issue an examination report outlining any objections or issues with the application. The applicant must respond to this report within six months, addressing all objections raised. This response can involve providing detailed clarifications, submitting additional documents, or making permissible amendments to the application. It is essential to carefully address each objection to meet the patentability criteria outlined in the Indian Patents Act.
Grant of Patent
If the applicant is able to overcome all the objections made by the examiners and follow all the provisions that have been set out, the Indian Patent Office will then allow the patent. Thereafter, the grant is formally documented, and information about them is conveyed in the official Indian Patent Office Journal. It is issued after the completion of the formalities for the National phase entry application and is considered the official notification of the invention in India. The granted patent provides the patentee absolute protection in the territorial jurisdiction of ‘India’ so the patented invention cannot be practiced, manufactured, used, or sold in the country by any third party without permission.
PCT National Phase Application in India Cost and Fee Structure
PCT National Phase Application in India implements a tiered fee structure, offering reduced fees for natural persons and small entities compared to large corporations. The fees include an application filing fee, which varies based on the applicant’s status, a search fee applicable if a search is requested, an examination fee required for the substantive examination of the application, and other miscellaneous fees that cover additional pages, claims, and amendments. Moreover, electronic filing of the application attracts fee reductions, making it a cost-effective option.
Technical Aspects of PCT National Phase for Computer Science Innovations
Software applications and solutions, unique algorithms, and computers or networks can be protected under PCT national phase application in India. These inventions are evaluated by the Indian Patent Office by the standards of novelty, inventive step and industrial applicability proclaimed in the Indian Patents Act. However, certain difficulties appear because of excluding computer programs, specifically, from the list of inventions to be patented.
Key Considerations
Technical Contribution
The invention must demonstrate a technical contribution or technical effect beyond mere software execution on hardware.
Non-obviousness
The inventive step should involve an improvement in technology, not just a business method or abstract idea implemented on a computer.
Industrial Applicability
The invention must be capable of industrial application, meaning it can be made or used in any industry.
Divisional Applications and Amendments
PCT international application includes multiple inventions, applicants can file divisional applications during the national phase in India to protect additional inventions. This is particularly useful for computer science innovations, which often encompass various inventive aspects.
Amendments to the National phase entry application are generally limited after entry into the national phase. The Indian Patent Office typically does not allow amendments at the time of national phase entry. However, amendments may be permissible later during the examination process, provided they do not introduce new matters beyond the scope of the original application.
Case Studies and Examples of PCT National Phase Application in India
Software-Based Innovation
A multinational technology company consulted this firm to provide it with an application for PCT in a software-based invention that covered a new encryption method. After the said application entered into the national phase entry in India, the application again had some objection to its patentability as per Section 3(k) of the Indian Patents Act. When the firm showed the technical development of the algorithm and practical utilization in enhancing the security of data in communication systems, the objections were silenced implying that the firm had secured a check.
Hardware-Software Combination
A startup specializing in Internet of Things (IoT) solutions filed a PCT application for a hardware-software combination that enhanced device connectivity. In the national phase examination in India, the startup highlighted the technical effect and industrial applicability of the invention, focusing on the improved efficiency and reliability of the IoT network. The comprehensive technical documentation and data-backed evidence provided by the startup led to the grant of a patent, paving the way for commercialization in the Indian market.
PCT National Phase Application in India
Filing a PCT national phase application in India for computer science innovations involves navigating through specific legal and procedural requirements. Understanding the nuances of protecting computer-implemented inventions, managing costs effectively, and preparing robust technical documentation are crucial for securing patent protection. With meticulous preparation and strategic management, innovators can successfully protect their computer science inventions in the burgeoning Indian market, leveraging the PCT framework to their advantage.
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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.
