Entering the National Phase of Patent Applications in India under the Patent Cooperation Treaty (PCT)

Dr. Mohaan Dewan

Abstract

The Patent Cooperation Treaty (PCT), administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), assists applicants in seeking patent protection for an invention simultaneously in a large number of countries by filing a single “international” (or “PCT”) patent application, and complying with the PCT formality requirements and procedures. This phase is termed the “international” phase. The granting of patents remains under the control of the national or regional patent Offices in what is termed the “national phase.” For obtaining patent protection in India, applicants need to enter the PCT national phase in India by complying with the specific provisions of the Indian Patents Act. Unlike most jurisdictions, the Indian Patent Office (IPO) does not allow any amendments at the time of national phase entry. Although amendments may be made after the national phase entry, there are limitations on the types of amendments that are allowed.

Indian Requirements:

Under the Indian patent law, national phase (NP) patent applications are required to be filed within 31 months from the earliest priority date. No extension of time is available beyond the 31 months time limit. The earliest priority date is the date on which the earliest patent application disclosing the invention was filed in any country/jurisdiction or in the international phase. Complete details of the applicant(s) and inventor(s) are required to be submitted at the time of NP entry, i.e., full name, nationality and address. Initials in names are generally not accepted.

The NP application should correspond exactly with the up-to-date information publicly available on the record of WIPO on the date of filing the application. No amendments in the name and address of the applicant/inventor, or any amendments in the claims/text of the specification are allowed at the time of NP entry. The Indian NP application can reflect only those changes/amendments that are publicly available on the WIPO website. In other words, changes made during the international phase, such as to the name/address of the applicant/inventor, assignments, or amendments under PCT Art.19/Art.34, etc., cannot be filed at the time of NP entry if they are not publicly available on the WIPO website. Such changes/amendments can be filed subsequently by way of voluntary amendment. However, particularly if there is a change in the name of the applicant/inventor or in the address of the applicant/inventor, it will be illogical to file the application with the old name. The new bibliographic details should be used for filing the application along with a request for amendments under Form 13.

The only change that is allowed at the time of NP entry without the requirement for petition for amendment is deletion of claims, in order to reduce the official fee. Although the basic official fee for filing of the application is modest (approximately USD 140), the excess claim fee for each claim above 10 (approximately USD 12 per claim), which is required to be paid at the time of national phase entry, can make the entry fairly expensive.  Therefore, to reduce the filing cost, it is possible for applicants to delete claims that are either not important, or that are directed to subject matter that is not patentable in India. It must be noted, however, that once any claim is deleted, it cannot be reinstated subsequently at any stage, even by way of filing an amendment or a divisional application.

Specification Requirements:

As per the Indian patent law, the title should not exceed 15 words, and the abstract should not exceed 150 words. It is recommended that at entry or immediately thereafter, the title and the abstract be placed in order. Not doing this gives an impression to the Controller that the applicant or the agent representing the applicant is not meticulous and does not follow rules. Further, the drawings should not contain any descriptive matter. Only flow charts/diagrams can contain descriptive matter. In cases where the specification does not meet these requirements, voluntary amendments should be filed during or after the NP entry. All voluntary amendments need to be furnished to the patent office in track change and in clean mode. If either of them is missing, the amendment will not be taken on record.

Power of Attorney:

A power of attorney (POA) must be filed either with the application or prior to submitting any subsequent documents. A scanned copy of the duly signed POA is required to be submitted within three months from the date of filing the application in India, while the physical copy of the signed POA can be submitted when requested by the Controller. If a copy of the executed POA is not filed in time, this will be treated as an irregularity, and during examination, the Controller will direct the applicant to file a petition for condonation of delay. Also, no action will be taken on the application unless a copy of the executed POA is filed on the record of the Indian Patent Office (IPO). It must be noted that the requisite stamp duty (approximately USD 7) is required to be paid for each POA submitted for each application.

Proof of Right:

A “proof of right” is proof evidencing that an applicant (other than the inventor) has the right to file an application for an invention. The Indian patent law has simplified the process for complying with this requirement, whereby inventors have to sign on Form 1, which is the basic form under which a patent application is filed. The proof of right to file an application is required to be submitted under section 7 of the Indian Patents Act, either by way of inventors’ signatures in Form 1 or by way of a separate assignment deed. This is a mandatory requirement. A scanned copy of the duly signed Form 1, or a duly signed & stamped assignment deed is required to be submitted either at the time of filing the application or within six months from the date of filing the application in India. The physical copy of the original signed Form 1 or the original assignment deed or its certified true copy can be retained with the local agent, for ready submission to the Controller when requested.

For NP applications, the proof of right requirement may be satisfied if a declaration has been made in accordance with PCT Rule 4.17 during the international phase. However, as a matter of abundant precaution, it is always preferable to submit either signed Form 1 or a copy of the worldwide assignment deed duly stamped & executed by the inventors, as proof of right. Non-submission of these documents within the six-month time period from the date of filing the application in India may entail a late submission fee. If the proof of right is not submitted at all, it may result in a refusal of the patent on the ground that the applicant has not complied with the requirements mandated under section 7 of the Indian Patents Act.

Often, difficulties are faced by applicants when inventors leave the organization and are not available for signatures, either on Form 1 or on the worldwide deed of assignment. In such cases, the NP application can be accepted on the basis of employment records, which clearly state that the inventor was an employee and had conceived the invention in the course of employment.

Priority Documents:

For PCT national phase applications, if the priority documents are in English and the PCT specification filed or published at WIPO is also in English, there is no requirement to submit the priority documents or their verified English translations. However, if the priority documents and the PCT specification filed or published at WIPO are in a language other than English, for instance Chinese, an English translation along with a verification certificate is required to be lodged at the IPO within the time limit of 31 months from the priority date. If the deadline is missed, the Controller will ask for a petition to condone delay.

The English translation can be verified either by the applicant or by the attorney. However, care must be taken that the English translation faithfully reproduces and exactly matches the content of the non-English document.

Information under Section 8:

The applicant is required to submit details of corresponding patent applications filed outside India, for the same or substantially the same invention, to meet the requirements under section 8(1) of the Indian Patents Act.

Under section 8(1), the applicant needs to submit a statement in Form 3 containing bibliographic details of corresponding applications filed outside India (including divisional or continuation applications). For corresponding patent applications that were filed outside India before the filing date of the Indian application, the bibliographic details must be provided either with the application or within six months from the filing date of the Indian application. If the details are not provided within the prescribed period, the applicant is deemed to be in default, and it can be ground for opposition/revocation. For corresponding patent applications that are filed outside India after the filing of the Indian application, the bibliographic details must be provided within six months of the occurrence of the event, i.e., six months after filing of the corresponding application. In case of any inadvertent delay in submitting these details, a petition can be filed under Rule 137 for condonation of delay and the document may be taken on record subject to the Controller’s approval.

The bibliographic details include country name, date of application, application number, status of application, publication date, publication number, grant date, and grant number. The status can be “in process, under examination, granted, abandoned or withdrawn” etc.

Amendments:

Voluntary amendments can be filed immediately after the NP entry; however, the Indian patent law does not allow addition of new claims or new subject matter (which was not claimed earlier), even if it is fully disclosed in the description/drawings. Unlike other jurisdictions, even if there is a disclosure of an embodiment that has not been covered in the original claims as filed, such an embodiment or claims directed to that embodiment cannot be covered subsequently by way of amendment. India strictly follows the principle that what is not claimed is disclaimed. The added matter may be allowed only if it narrows/restricts the scope of the claims. Amendments can be made only by way of a disclaimer, correction or explanation, and for the purpose of incorporation of actual fact, i.e., by narrowing the scope of the claims. The amended claims must strictly fall within the scope of the claims prior to amendment.

What Claims are not Allowable under the Indian Patents Act?

Certain inventions, even if they meet the criteria of patentability, cannot be patented in India. For an invention to be patentable, it must not fall in the category of non-patentable inventions listed under section 3 and 4 of the Indian Patents Act. For example, inventions related to the following subject matter are considered to be non-patentable:

1. Frivolous or contrary to natural laws
2. Contrary to public order or morality. For example, the patent office may consider inventions related to stem cells, placenta, or a device for sexual stimulation as contrary to public order or morality
3. Discovery of a scientific principle or of any living thing or non-living thing occurring in nature. For example, live animals are not patentable
4. Discovery of:
   1. a new form of a known substance, which does not result in the enhancement of the known efficacy of that substance, or
   2. a new property of a known substance, or
   3. a new use of a known substance/process/machine/apparatus, unless such known process results in a new product or employs at least one new reactant. In case of pharmaceutical products, derivatives of a known substance are considered to be the same substance, unless they differ significantly in therapeutic efficacy.

      This part (which falls under section 3(d) of the Patents Act) is particularly relevant for pharmaceutical inventions. Under section 3(d), salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance are considered to be the same substance, unless they differ significantly in properties with regard to efficacy. In Novartis AG vs. Union of India, the Supreme Court clarified that for pharmaceutical inventions, the term “efficacy” means “therapeutic efficacy”.

5. A mere admixture resulting only in the aggregation of the properties of the components
6. A mere arrangement or re-arrangement or duplication of known devices
7. A method of agriculture or horticulture
8. Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or animals. However, a process for the treatment of plants is a patentable subject matter. Also, a patent may be obtained for the surgical, therapeutic or diagnostic instrument or apparatus.
9. Plants and animals in whole or any part thereof, and any processes for their production or propagation. However, microorganisms not occurring in nature fall under patentable subject matter.
10. A mathematical or business method or a computer program per se or algorithms. However, computer implemented inventions fall under patentable subject matter.
11. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions
12. A mere scheme or rule or method of performing a mental act or method of playing a game
13. A presentation of information
14. Topography of integrated circuits
15. An invention, which in effect is traditional knowledge
16. An invention relating to atomic energy, radioactive material, or which is relevant for defense purposes 
    

Divisional Patent Applications:

Under the Indian patent law, the existence of a plurality of inventions in the parent application is an essential requirement for filing divisional applications. Unlike other jurisdictions such as the US and Europe, the claims of the parent application must be divided between the parent and the divisional. Additional claims for any matter/embodiment that is not claimed in the parent application cannot be filed, even if it is fully supported by the description. Similarly, an entirely new set of claims cannot be filed in the divisional application, even if the subject matter of those new claims is fully disclosed in the specification.

Request for Examination:

There is no automatic examination. A request for examination needs to be filed, at any time within 48 months from the earliest priority date. If a request for examination is not filed within 48 months from the earliest priority date, the application is deemed to be withdrawn. It is recommended that a request for examination be filed at the time of NP entry itself. This will expedite the examination process because applications are examined not on the chronology of the filing the application, but on the chronology of making a request for its examination.

It is possible to fast track patent prosecution in India by filing either:

a) Express examination request (applicable only for national phase applications in India); or

b) Expedited examination request (applicable only for a certain category of applicants); or

c) Patent Prosecution Highway (PPH) request (applicable only for corresponding patent applications filed between the Indian Patent Office and the Japanese Patent Office, based on the application which is determined to be patentable by the Japanese Patent Office).

Request for “Express” Examination: In case of a national phase application corresponding to an international application under Patent Cooperation Treaty (PCT), the patent office does not commence processing of the application before the expiration of 31 months from the earliest priority date. However, if an “express” request for examination is filed in Form 18, the patent office may process or examine the application at any time before 31 months. Therefore, such requests may fast track the prosecution process and result in an early grant.

Request for “Expedited” Examination: The provision for filing a request for expedited examination is available only to a certain category of applicants, including both Indian and foreign applicants. A request for expedited examination can be filed by submitting Form 18A along with the requisite fee and documents evidencing eligibility of the applicant to file a request for expedited examination. In cases where the applicant has already filed a regular (non-expedited) request for examination (by submitting Form 18), such a regular request may be converted into a request for expedited examination by paying the requisite fee and submitting documents evidencing eligibility of the applicant to file a request for expedited examination.

Except where the application has already been published or a request for publication under rule 24A of the Indian Patents Rules, 2003 has already been filed, a request for expedited examination must be accompanied by a request for publication under rule 24A.

When Not to Fast Track Patent Prosecution? As a word of caution, there are certain circumstances when it is not advisable to fast track patent prosecution. For example, in pharma cases, patent applications are generally filed as soon as an active molecule is identified. However, at that time sufficient data may not be available to establish therapeutic efficacy of that new molecule. Even for inventions related to a medical device or any other process/product, or IT related inventions, sufficient data/details may not be available at the time of filing the application. For example, if an invention related to a mobile application is complete but has not yet been extensively tested or the coding has not yet been completely written, new embodiments may be found or new features may be envisaged while testing. The details of the new embodiments/features may be filed either subsequently or as a patent of addition. In such cases, it may be preferable to delay the filing of a request for examination until the 48-month time period, and then wait for the First Examination Report (FER) to be issued. Data can be filed subsequently along with the response to the FER.

Therefore, a thought process must be involved for every invention, to decide on what strategy to employ, particularly when sufficient details/data are not available, even though the invention might be complete.