Mar 3, 2026 | PCT National Phase in India
For foreign patent attorneys entering India through the PCT route, Section 8 of the Patents Act, 1970 is often underestimated. It is frequently viewed as a procedural filing requirement to be completed at the time of national phase entry. In practice, it is a continuing statutory obligation that can influence examination, opposition, and even post-grant validity. Non-compliance is routinely raised in First Examination Reports and is regularly invoked in contentious proceedings.
Section 8(1) requires an applicant to furnish details of corresponding foreign applications relating to the same or substantially the same invention. This disclosure is typically made through Form 3 at the time of filing or within the prescribed period. However, the obligation does not end there. Section 8(2) empowers the Controller to require submission of additional details concerning the processing of such foreign applications, including examination reports and the status of claims. The statutory language makes it clear that this is a continuing responsibility throughout prosecution.
In the context of PCT national phase applications, a common misconception is that the international search report and written opinion available in the public domain sufficiently address disclosure concerns. That assumption is misplaced. Once the application enters India, the applicant must independently comply with Section 8 requirements. If there are parallel national phase entries, continuation filings, divisionals, or significant claim amendments in other jurisdictions, these developments may fall within the scope of disclosure. Failure to update the record when required can trigger objections and, in adversarial settings, become a strategic ground of challenge.
The phrase “same or substantially the same invention” is interpreted broadly. It can extend to parent applications, divisionals, continuations, and related family members depending on the degree of claim overlap. From a risk management perspective, incomplete disclosure presents greater exposure than comprehensive disclosure. At the same time, indiscriminate reporting without monitoring consistency across jurisdictions can create complications if positions taken abroad differ from those advanced in India. The disclosure must therefore be accurate, timely, and coordinated with global prosecution strategy.
Section 8 has been used as a ground in both pre-grant and post-grant opposition proceedings, as well as in revocation actions. Although judicial interpretation has evolved and courts have emphasized materiality rather than automatic invalidation, Section 8 remains a litigation-sensitive provision. Opponents routinely review foreign prosecution histories and compare them with Indian disclosures. In high-value sectors such as pharmaceuticals, chemicals, and technology-driven portfolios, allegations of incomplete or inconsistent disclosure are frequently raised alongside novelty and inventive step challenges.
In practical terms, exposure often arises not from deliberate omission but from portfolio complexity. Large patent families with multiple continuations, divisionals, and jurisdiction-specific claim amendments increase the likelihood of gaps in disclosure. Office actions from major jurisdictions that are not furnished when requested, or inconsistencies in claim scope that are not reconciled in the Indian record, can become focal points during opposition. Coordination failures between global prosecution teams and Indian counsel are a common source of difficulty.
During examination, Controllers may raise objections where Form 3 appears outdated or inconsistent with publicly available information. Requests under Section 8(2) must be handled with care and within the stipulated timelines. Delayed or incomplete responses can weaken the applicant’s position and extend prosecution unnecessarily. India should not be treated as a passive jurisdiction within a large global portfolio. Disclosure management requires active monitoring throughout the lifecycle of the application.
At the national phase entry stage, it is prudent to conduct a structured review of the global filing landscape for the invention. This includes identifying related family members, understanding the status of foreign prosecution, and anticipating potential future filings such as divisionals. Establishing an internal mechanism to track developments in key jurisdictions and update Indian disclosures accordingly reduces procedural vulnerability. In commercially significant matters, disciplined Section 8 compliance is as important as substantive patentability arguments.
Section 8 is not a clerical requirement. It is a statutory obligation with procedural and strategic consequences. For PCT national phase applications entering India, particularly those forming part of complex international portfolios, proactive disclosure management is essential to reduce examination delays and opposition risk.
For coordinated Section 8 compliance strategy and prosecution support in India PCT national phase matters, please contact us at https://origiin.com/contact-us/. To understand the India national phase procedure and compliance framework in detail, please visit https://origiin.com/pct-national-phase-entry-india/.
Feb 27, 2026 | PCT National Phase in India
For foreign patent attorneys managing PCT portfolios, India introduces a procedural element that requires deliberate risk assessment: the pre-grant opposition mechanism. Unlike many jurisdictions where third-party challenges arise only after grant, Indian patent law permits opposition at any time after publication and before the patent is granted. For commercially relevant technologies, this creates a real and measurable exposure during prosecution.
Pre-grant opposition is governed by Section 25(1) of the Patents Act, 1970. Any person may file a representation opposing the grant of a patent after the application is published and before it is granted. The breadth of this provision is significant. The opponent does not need to demonstrate commercial harm or standing in the traditional sense. Competitors, industry participants, or even public interest groups may initiate proceedings.
In the context of PCT national phase applications, timing becomes important. Once the international application enters India and is published in the Indian Patent Office database, the window for pre-grant opposition opens and remains active until grant. This means that even after a favorable response to a First Examination Report, and even when the application appears close to allowance, a third-party intervention may alter the prosecution trajectory.
The statutory grounds for pre-grant opposition broadly reflect invalidity grounds familiar in other jurisdictions. These include lack of novelty, lack of inventive step, non-patentable subject matter, insufficient disclosure, wrongful obtaining, and failure to comply with disclosure requirements such as those under Section 8. In practice, certain grounds are more frequently invoked in national phase matters. Inventive step challenges supported by multiple prior art combinations are common. In pharmaceutical and chemical cases, objections under Section 3(d) are routinely raised. In software and AI-related applications, subject matter exclusions under Section 3(k) often form part of the opposition strategy. Procedural lapses, particularly incomplete disclosure of foreign filings, are also used tactically.
The practical impact of a pre-grant opposition can be substantial. The proceedings introduce an adversarial dimension into what would otherwise be routine examination. Written submissions become more detailed. Hearings are frequently required. Technical arguments must be supported with clarity and consistency across the specification and claims. The timeline to grant may extend, and prosecution costs inevitably increase.
Not all applications carry the same exposure. The likelihood of opposition tends to correlate with commercial visibility and competitive sensitivity. Applications covering pharmaceutical compounds, medical devices, telecom standards, or high-value platform technologies are more likely to attract scrutiny. A crowded prior art landscape or unusually broad claim scope relative to the disclosure may further increase vulnerability. Where a product is already launched or publicly discussed in the Indian market, the risk profile rises.
For foreign associates considering India at the national phase stage, pre-grant opposition should be part of the initial evaluation. It is prudent to assess whether the specification contains sufficient technical depth to withstand inventive step attacks, whether subject matter exclusions have been adequately addressed in the drafting, and whether procedural compliance has been meticulously maintained. If the original PCT disclosure is thin or heavily functional, strategic claim calibration at the time of entry may reduce exposure.
Pre-grant opposition does not automatically suspend examination. The Controller considers the representation alongside the examination record. In practice, this often results in consolidated hearings where both the applicant and the opponent present arguments. The quality of written advocacy becomes critical. Arguments must address not only statutory objections raised in the First Examination Report but also the technical and legal positions advanced by the opponent.
From a portfolio management perspective, opposition exposure should be weighed against commercial objectives. In some cases, a narrower but defensible claim set may offer greater long-term value than pursuing maximal scope at the risk of prolonged challenge. In others, the commercial importance of the invention may justify a more assertive prosecution strategy despite anticipated opposition.
Pre-grant opposition in India is neither exceptional nor unpredictable. It is an established component of the patent system. For PCT national phase applications of strategic significance, it should be treated as a foreseeable procedural risk. Early technical evaluation, careful claim structuring, and strict procedural compliance materially strengthen defensibility before the Indian Patent Office.
Origiin IP Solutions LLP regularly advises foreign patent attorneys and law firms on opposition risk assessment for India PCT national phase applications and represents applicants in pre-grant opposition proceedings. A structured review at the entry stage can significantly influence prosecution strategy and overall portfolio strength in India.
For strategic assessment of pre-grant opposition exposure and prosecution support for India PCT national phase applications:
https://origiin.com/contact-us/
To understand the India PCT national phase procedure, timelines, and compliance framework in detail:
https://origiin.com/pct-national-phase-entry-india/
Feb 20, 2026 | PCT National Phase in India
Foreign patent attorneys entering the Indian national phase often assume that prosecution will broadly follow USPTO or EPO patterns. In practice, it does not. Indian examination is structured differently, procedurally compressed, and driven closely by statutory language. Many otherwise strong applications encounter difficulty not because of the underlying invention, but because they are prosecuted using assumptions drawn from other jurisdictions.
The First Examination Report is not a preliminary exchange. In most cases, it is the decisive stage of prosecution. How the application is positioned before the report is issued often determines how much room remains for amendment later.
Examination begins only after a Request for Examination is filed. In PCT national phase cases, this is typically done at entry. The First Examination Report is generally issued within six to eighteen months from that request, depending on the technical field and examination group. Software and biotechnology cases tend to attract closer scrutiny, particularly where eligibility or inventive step concerns are apparent on the face of the claims.
Unlike US Office Actions or EPO communications, the Indian First Examination Report consolidates all objections into a single document. Formal and substantive issues are raised together. Drafting deficiencies are treated seriously. Objections may relate to lack of antecedent basis, unclear terminology, insufficient support in the description, improper Markush structuring, or sequence listing inconsistencies. These are not merely clerical concerns. They can influence claim interpretation and indirectly affect amendment flexibility.
Eligibility objections under Section 3 of the Patents Act frequently form the core of the report. India applies statutory exclusions directly. The analysis does not mirror the US approach under section 101, nor does it follow the EPO’s technical effect framework. Claims directed to computer-related inventions, medical treatment methods, discoveries of natural substances, certain pharmaceutical inventions, or plant and animal subject matter are examined within the statutory exclusions. It is not uncommon for claims allowed elsewhere to face rejection in India on this basis. Arguments must therefore be framed within the statutory structure rather than by reference to foreign allowances.
Inventive step analysis in India is often closer in style to European reasoning, but examiners commonly combine multiple prior art documents. The approach can be assertive. Where the specification does not clearly articulate the technical problem and the advancement achieved, inventive step objections can be difficult to overcome, particularly once amendment limits are considered.
The response period to the First Examination Report is six months from issuance, extendable by three months. There is no further extension, no RCE practice, and no continuation mechanism in the US sense. If objections are not resolved within this window, the application is deemed abandoned. From a portfolio management perspective, this compressed timeline requires coordinated review and instructions early in the process.
Amendment practice under Section 59 is applied strictly. Amendments must be clearly supported by the specification as originally filed. Attempts to introduce intermediate generalisations, reassemble claim combinations not originally presented, or rely on technical effects not expressly described are often refused. Narrowing to specific disclosed embodiments, combining dependent claims as drafted, or restricting numerical ranges is generally acceptable. The key constraint is that the amendment must be traceable to the original disclosure without reconstruction. Applications drafted primarily for US flexibility can encounter difficulty at this stage if fallback positions were not expressly included.
Hearings are available but should not be viewed as equivalent to examiner interviews in the United States. They do not function as exploratory discussions. They address issues already on record. A hearing rarely compensates for an inadequately structured written response.
In practice, the First Examination Report should be approached as the principal opportunity to resolve eligibility, novelty, and inventive step issues in a structured manner. A considered response addresses statutory eligibility directly, refines the claim set within supported boundaries, and articulates technical advancement over cited art in clear terms. Partial or minimal responses often result in further reports and additional pressure on the statutory timeline.
The most significant strategic advantage in Indian prosecution arises before national phase entry. At that stage, foreign counsel can evaluate whether the specification contains explicit fallback embodiments, whether computer-related claims include sufficient technical structure, and whether pharmaceutical disclosures provide adequate support for narrower claim positions. Once the First Examination Report is issued, the room for structural correction is materially reduced.
Indian examination is disclosure-driven and statute-based. It offers limited procedural flexibility and a narrow amendment corridor. Applications prepared with these constraints in mind tend to proceed efficiently. Those adjusted only after objections are raised frequently lose scope or face abandonment.
Understanding this framework is essential for effective patent protection in India.
For foreign patent attorneys managing international portfolios, working with a registered Indian patent agent early helps address translation accuracy, amendment support requirements, and examination strategy before issues arise during prosecution.
Origiin IP Solutions LLP supports overseas law firms with Indian PCT national phase entry, FER responses, hearings, and coordinated portfolio handling across jurisdictions.
For assistance with India national phase filings and prosecution support:
https://origiin.com/contact-us/
To understand the Indian national phase procedure in detail:
https://origiin.com/pct-national-phase-entry-india/
Feb 17, 2026 | PCT National Phase in India
Foreign patent attorneys often expect the Indian national phase to follow the prosecution path seen in Europe or the US. In practice, India behaves differently. Most delays are not caused by backlog. They are caused by structural issues in the application at the time of entry.
The First Examination Report in India is usually predictable. The same patterns repeat across technology areas. When those patterns are addressed early, prosecution moves smoothly. When they are ignored, the file remains stuck for years.
This article explains where objections typically arise and how foreign counsel can prevent them before they appear.
The Problem Starts at National Phase Entry
Many PCT applications enter India unchanged from the international phase. That approach works in some jurisdictions but often fails in India because the examiner reads the specification strictly against statutory provisions.
The application that enters India effectively defines the amendment boundary for the rest of prosecution. Later corrections are limited by Section 59. If the disclosure does not clearly support the intended claim structure, flexibility is lost immediately.
A careful review at entry stage avoids most downstream issues.
Subject Matter Objections Under Section 3(k)
Computer related inventions face the most frequent objections. Claims drafted around results, processing steps, or business logic are commonly treated as non patentable subject matter.
Examiners look for technical contribution in the claim language. Simply stating that the system improves efficiency or performance is rarely enough. The claim must demonstrate how a technical effect is achieved through specific technical features.
In many cases, minor restructuring at entry stage resolves the problem. Adding technical linkage, defining data handling at system level, or clarifying hardware interaction significantly changes the examination outcome.
When this is postponed until after the First Examination Report, amendment options become limited.
Inventive Step Objections
Indian inventive step analysis often combines multiple prior art references. Examiners frequently interpret combinations broadly, especially when claims are drafted functionally.
If the specification does not clearly explain the technical problem and the advantage achieved, the invention appears as a routine modification. This is one of the most common reasons for prolonged prosecution.
Including fallback positions supported by the original disclosure allows structured argument later. Without those positions, responses become restricted to explanation rather than amendment.
Unity of Invention Issues
Applications with many independent claims frequently receive unity objections. This is common in electronics, communication, and software portfolios where global claim sets are reused.
The Indian Patent Office expects claims to share a single inventive concept. Where that linkage is unclear, examination slows because the applicant must elect or amend.
Adjusting claim structure before examination usually avoids this procedural delay and preserves broader protection.
Added Matter Restrictions
Section 59 is applied strictly. Amendments must be clearly and unambiguously supported by the original disclosure. Introducing features that were only implied or broadly described often triggers objections.
Many applicants attempt to introduce technical limitations after receiving the examination report. By that stage the specification may not support the new wording.
This is why early coordination with local counsel matters. The goal is not to narrow protection, but to position claims so they can evolve during prosecution.
Translation Related Issues
When the PCT specification is translated into English, the translation becomes the working document for examination. Any ambiguity introduced at this stage affects claim interpretation.
In mechanical and life science cases, terminology inconsistencies later restrict amendment options. The issue appears procedural but becomes substantive during examination.
Reviewing translations before filing prevents unnecessary objections later.
How Foreign Counsel Can Avoid Delays
Most delays in India are preventable. They arise when the application is treated as a routine jurisdiction entry rather than a strategy decision point.
Before filing the national phase in India, it is useful to evaluate:
- Whether the claims show a technical contribution
- Whether fallback positions exist in the description
- Whether unity issues are likely
- Whether translation affects claim scope
- Whether early amendments would improve examination
Small adjustments at entry often reduce years of prosecution time.
Working With Local Counsel
India rewards preparation more than reaction. When strategy is aligned before examination begins, responses become straightforward and predictable.
Foreign firms that coordinate early usually see faster grants and fewer hearing stages. Those that wait until objections appear often lose amendment flexibility.
Origiin IP Solutions LLP supports foreign law firms with India national phase entry, claim strategy, and prosecution management so that examination proceeds efficiently.
For India national phase filings and prosecution support, contact Origiin IP Solutions LLP: https://origiin.com/contact-us/
To know more about PCT National Phase entry in India, visit https://origiin.com/pct-national-phase-entry-india/
Feb 12, 2026 | PCT National Phase in India
Foreign patent attorneys entering the Indian national phase under the PCT often focus primarily on the 31-month deadline. However, translation accuracy and early claim amendment decisions can materially influence prosecution outcomes in India.
India applies strict standards on added matter, claim amendments, and subject matter eligibility. Decisions taken at the time of national phase entry frequently determine the trajectory of examination and the flexibility available later in prosecution.
This article outlines the practical considerations foreign counsel should evaluate when handling translation and claim strategy for India PCT national phase filings.
Translation Requirements in India PCT National Phase Entry
If the international application was not filed in English, a complete and verified English translation must be filed at the time of national phase entry in India.
Key considerations include:
- The translation must accurately reflect the PCT specification, claims, abstract, and any amendments filed during international phase.
- Errors in translation can later create added matter concerns.
- Ambiguities introduced during translation may restrict amendment flexibility under Indian law.
- Technical terminology must be carefully reviewed to ensure consistency with claim scope.
In practice, translation is not merely a formal requirement. It becomes the operative specification for examination in India. Any narrowing or structural ambiguity introduced at this stage may limit later claim development.
For foreign counsel, it is advisable to review translations in coordination with the Indian patent agent before filing, especially in mechanical, chemical, or life sciences cases where terminology precision is critical.
Amendments at the Time of National Phase Entry
India permits claim amendments at the time of national phase entry. However, amendments must comply with Section 59 of the Indian Patents Act.
Section 59 restricts amendments to those that:
- Do not introduce new matter.
- Fall within the scope of the specification as originally filed.
- Do not broaden the scope of the claims.
This means that strategic claim adjustment at entry can be beneficial, but only if carefully evaluated against the original disclosure.
Foreign counsel commonly consider:
- Aligning claims with the International Search Report or Written Opinion.
- Narrowing claims to pre-empt obviousness objections.
- Addressing potential subject matter concerns before examination begins.
Because India applies strict added matter standards, any amendment must be clearly supported by the original description. Broad structural rewrites or introduction of new combinations may not be permitted.
Claim Strategy Before the First Examination Report
Examination in India often involves objections relating to:
- Inventive step.
- Clarity.
- Unity of invention.
- Subject matter exclusions, particularly under Section 3(k) for computer-related inventions.
Early claim strategy can influence how these objections unfold.
Practical considerations include:
- Whether to maintain broader independent claims at entry or introduce fallback positions.
- Whether to reduce claim count to avoid unity objections.
- Whether to restructure system or method claims to address subject matter concerns.
- Whether to include hardware linkage where relevant for computer-implemented inventions.
In some cases, voluntary amendments at entry stage can reduce procedural friction during prosecution. In other cases, maintaining broader claims initially may preserve negotiation space. The decision should be case-specific and aligned with global portfolio strategy.
Added Matter and Section 59 Risks
Indian amendment practice is generally conservative compared to some other jurisdictions.
Foreign attorneys should note:
- Claims cannot be broadened beyond what is disclosed in the original specification.
- Amendments must be clearly and unambiguously supported.
- Functional language unsupported by structural disclosure may attract objections.
- Introduction of new technical effects during prosecution is restricted.
For this reason, translation accuracy and early claim framing directly affect amendment flexibility later.
Common Issues Observed in India National Phase Filings
In cross-border portfolios, we often observe:
- Translations filed without substantive review.
- Claims copied from international phase without India-specific adjustment.
- Missed opportunities to refine claims at entry stage.
- Late attempts to introduce unsupported fallback positions.
Most of these issues are procedural rather than substantive, but they can increase prosecution time and complexity.
Coordinating Effectively with an Indian Patent Agent
For foreign patent attorneys managing global filings, coordination with a local Indian patent agent is essential at three stages:
- Prior to national phase entry, to review translation and amendment options.
- Before examination request deadlines, to align prosecution strategy.
- Upon receipt of the First Examination Report, to plan responses within statutory timelines.
Early communication reduces risk and preserves strategic flexibility.
Translation and claim amendment strategy at the time of India PCT national phase entry are not merely formal steps. They shape the prosecution pathway and amendment scope available under Indian law.
Foreign counsel who evaluate translation quality, amendment compliance under Section 59, and subject matter positioning at entry stage are better positioned to manage examination efficiently.
Local Support for India PCT National Phase Filings
For foreign patent attorneys handling international portfolios, coordinated support from a registered Indian patent agent can help manage translation review, amendment compliance, and prosecution strategy from the outset.
Origiin IP Solutions LLP assists overseas law firms with India PCT national phase entry, examination responses, hearings, and portfolio coordination across jurisdictions.
For India national phase filings and prosecution support, contact Origiin IP Solutions LLP:
https://origiin.com/contact-us/
To know more about PCT National Phase entry in India, visit https://origiin.com/pct-national-phase-entry-india/
Feb 10, 2026 | PCT National Phase in India
Foreign patent attorneys handling international portfolios routinely face tight national phase deadlines. India is now a key jurisdiction for technology protection, manufacturing strategy, and market expansion. However, entering the Indian national phase requires local procedural compliance and coordination with a registered Indian patent agent.
This guide explains what foreign counsel should know before entering the PCT national phase in India, including deadlines, requirements, and how to work effectively with a local patent attorney.
Why India Matters in PCT National Phase Strategy
India has become a priority jurisdiction for many international applicants because:
- It is one of the world’s fastest-growing technology markets
- Manufacturing and R&D activity continues to increase
- Patent enforcement and licensing activity is rising
- Local competitors frequently file in similar technology areas
As a result, many PCT applicants now include India as a core jurisdiction alongside the US, Europe, China, and Japan.
Is a Local Patent Agent Required in India?
Yes. Foreign applicants must appoint a registered Indian patent agent to enter and prosecute a patent application in India.
Key points:
- Only registered Indian patent agents can represent applicants before the Indian Patent Office.
- An address for service in India is mandatory.
- All official communications are sent to the local agent.
Without a local agent, the national phase entry cannot proceed.
National Phase Deadline in India
India allows 31 months from the priority date to enter the national phase.
Important points for foreign counsel:
- The 31-month deadline is strictly applied.
- It is advisable to initiate the national phase process at least 4-6 weeks before the deadline.
Documents Required for National Phase Entry
For most applications, the following documents are required:
- Basic application details
- PCT publication details
- Power of Attorney (may be filed later in most cases)
- Verified English translation (if the PCT application is not in English)
- Details of corresponding foreign filings
In many cases, national phase entry can be initiated quickly using publicly available PCT data, allowing foreign counsel to meet tight deadlines.
Key Formal Requirements in India
Foreign counsel should be aware of several India-specific requirements:
- Form for Statement of Foreign Applications: Applicants must disclose details of corresponding foreign filings.
- Request for Examination: A request for examination must be filed within the prescribed deadline. Failure to do so leads to abandonment.
- Working Statements: After grant, patentees must periodically submit statements regarding the commercial working of the invention in India.
These formalities are routine for an experienced Indian patent agent but can cause delays if overlooked.
Typical National Phase Timeline in India
A standard prosecution timeline is as follows:
- National phase entry at 31 months
- Examination request filed
- First Examination Report issued
- Response to objections
- Hearing, if required
- Grant of patent
The time to first examination depends on the technology field and examination queue.
Common Mistakes Foreign Counsel Should Avoid
- Waiting Until the Last Week: Delays in translations, formalities, or instructions can risk missing the 31-month deadline.
- Ignoring Indian-Specific Requirements: Certain forms and disclosures are unique to India and must be handled correctly.
- Filing Without Strategic Claim Review: Claims that work in the US or Europe may face different objections in India, especially for software or business-related inventions.
How to Work Efficiently with an Indian Patent Agent
Foreign counsel can streamline national phase entry by:
- Sending instructions at least 4 weeks before the deadline
- Flagging related applications in other jurisdictions
- Communicating expected timelines or commercial priorities
An experienced local agent can handle formalities, filings, and prosecution while coordinating with foreign counsel.
Cost and Process Transparency
Foreign law firms typically look for:
- Clear filing estimates
- Predictable prosecution costs
- Fast communication
- Reliable deadline management
Choosing a responsive local patent agent is critical for smooth national phase handling.
Choosing the Right Local Patent Counsel in India
When selecting a local agent, foreign counsel should consider:
- Experience with international portfolios
- Responsiveness and turnaround time
- Clarity in cost estimates
- Technical expertise in relevant fields
- Familiarity with cross-border prosecution strategy
A strong local partner reduces procedural risk and improves overall portfolio outcomes.
India is now a key jurisdiction in many PCT national phase strategies. However, successful entry and prosecution require compliance with local rules and coordination with a registered Indian patent agent.
Foreign counsel who plan early, understand local requirements, and work with experienced Indian agents can avoid procedural risks and ensure smooth prosecution.
Work with a Trusted Local Patent Agent in India
For smooth PCT national phase entry and reliable prosecution support in India, foreign patent attorneys typically work with a registered local patent agent who understands both Indian practice and international associate expectations.
At Origiin IP Solutions LLP, we regularly assist overseas law firms with national phase filings, examination responses, hearings, and coordinated portfolio management across jurisdictions.
👉 Contact Origiin IP Solutions LLP for India national phase filings and local patent agent support
Feb 3, 2026 | PCT National Phase in India
Many startups and R&D teams assume that if something is innovative, useful, or technically impressive, it should automatically qualify for a patent. In practice, this assumption leads to a large number of patent rejections.
Indian patent law does not protect innovation in a broad or generic sense. It protects a narrow category of technical inventions that meet specific legal requirements. Understanding what actually makes an invention patentable is essential for founders, CTOs, and R&D leaders who want patents that survive examination and create real business value.
This article explains what patentability really means under Indian law, without legal jargon, and how technology teams should evaluate their inventions before filing.
Patentability Is a Legal Test, Not a Technical Compliment
Patent examiners do not assess how impressive, complex, or difficult an invention was to build. They apply a legal test.
In India, an invention must satisfy four core requirements:
- Patentable subject matter
- Novelty
- Inventive step
- Industrial applicability
If even one of these requirements is not met, the application can be rejected. This is why many technically strong inventions fail. The issue is not lack of innovation, but failure to meet one or more legal thresholds.
Patentable Subject Matter Comes First
Before novelty or inventiveness is even considered, the invention must fall within patent eligible subject matter.
Indian patent law specifically excludes several categories, including:
- Abstract ideas
- Business methods by themselves
- Mathematical methods
- Algorithms without a technical application
- Mental acts
- Mere presentation of information
As a result:
- A business idea is not patentable
- A software concept on its own is not patentable
- A desired outcome is not patentable
What is patentable is a technical solution that produces a technical effect. One of the most common mistakes startups make is describing what a system does instead of explaining how it technically achieves the result.
Novelty Means New Anywhere in the World
For an invention to be novel, it must not have been disclosed anywhere in the world before the filing date.
This includes disclosures such as:
- Published patent documents
- Research papers
- Conference presentations
- Product brochures
- Websites
- GitHub repositories
- Public demonstrations or investor pitches
If even a single prior document discloses the same technical features, novelty fails. It does not matter whether the inventor was aware of the disclosure. What matters is whether it exists in the public domain. This is why prior art searches and careful claim drafting are critical before filing.
Inventive Step Is Where Most Applications Fail
Inventive step is the most common point of failure for startup patent applications.
An invention is considered to lack inventive step if, in the examiner’s view:
- It is an obvious modification of existing technology
- It is a straightforward combination of known elements
- It involves routine optimisation
- It follows logically from prior teachings
The key question asked is whether the invention would have been obvious to a person skilled in the art at the time of filing.
Engineering difficulty does not automatically translate into inventiveness. Something can take months to build and still be legally obvious.
To establish inventive step, the application must clearly explain:
- What technical problem existed earlier
- Why existing solutions were inadequate
- How the invention solves the problem in a non obvious way
- What technical effect is achieved as a result
This problem and solution framing is central to patent success.
Industrial Applicability Requires Practical Use
The invention must be capable of being made or used in industry.
This does not mean commercial success or large scale manufacturing. It simply means the invention must be technically feasible, capable of practical implementation, and consistent with the laws of nature.
Purely theoretical or speculative ideas fail this requirement.
Disclosure and Enablement Are Often Overlooked
Even when an invention is novel and inventive, it can still be rejected if the patent specification does not clearly and fully disclose how the invention works.
Indian patent law requires that the application:
- Enables a skilled person to perform the invention
- Discloses the best method of working the invention
- Avoids vague or purely functional descriptions
Common red flags for examiners include statements such as:
- “The system may be configured to” without explanation
- “An algorithm is used to” without technical detail
- Heavy focus on results instead of structure
A patent application is a teaching document, not a pitch deck.
How Startups and R&D Teams Should Evaluate Patentability
Before filing a patent application, serious teams should ask themselves:
- What exact technical problem are we solving?
- What technical features make our solution different?
- Which aspects are routine engineering and which are genuinely inventive?
- Can we clearly explain how it works without assumptions?
- Would this still appear non obvious several years from now?
If these questions do not have clear answers, filing early often results in weak patents that struggle during examination.
Patentability in India is not about how good an idea sounds or how advanced the technology appears. It is about whether the invention satisfies clearly defined legal standards.
Teams that understand this early build strong and defensible patent portfolios. Those that do not often learn the hard way, through objections, rejections, and lost time.
Innovation creates value. Patentability protects it.
They are not the same, and treating them as interchangeable is one of the most expensive mistakes growing technology companies make.
If you are evaluating the patentability of a technology or planning a patent filing strategy in India, it is advisable to seek early legal and technical assessment.
👉 For strategic patent drafting, filing, and prosecution support, connect with Origiin IP Solutions LLP
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Aug 14, 2024 | PCT National Phase in India
A Patent of addition is a special type of patent allowing the holder to make improvements or modifications to an existing invention without filing a new patent application. It is designed to protect improvements or developments on an original patented invention, providing legal protection to the incremental innovations made by the inventor. The key feature of a Patent of Addition is that it derives its validity from the main patent and typically expires along with the main patent.
The Patents Act of 1970 is primarily based on the recommendations of the Justice N. Rajagopala Ayyangar Committee, as detailed in their report, “Report on the revisions in the patent law.” The Ayyangar Committee proposed the inclusion of a clause allowing for applications for patents of addition, similar to Section 26 of the UK Patent Act of 1949. In the UK, the Lord Swan Committee (1948) recommended provisions in the UK Patent Act 1949 to assist applicants who did not draft their claims comprehensively enough to cover their invention. This provision aimed to offer these applicants a chance to rectify their claims by filing a patent of addition, thus allowing them to address variations of the main application and expand the scope of their invention. The Ayyangar Committee’s recommendations mirrored Section 26 of the UK Patent Act.
The provision for a Patent of Addition offers significant benefits to inventors. It fosters continuous innovation by motivating inventors to enhance their inventions through incremental advancements. It also protects these enhancements, promotes cost and efficiency, and ensures clear legal protection for these improvements, empowering inventors to defend their innovations effectively.
- The Indian law for Patent of Addition.
Under the Patents Act of 1970 (Sections 54 to 56), a Patent of Addition is specifically designed to improve or modify an existing invention. This provision allows inventors to protect their incremental advancements without the need to file a new and separate patent application. The key feature of a Patent of Addition in India is that it does not have an independent term; instead, it expires concurrently with the main patent. This ensures that the improvement is protected only as long as the original invention is protected. A Patent of Addition can also be granted even if the main patent is still pending. It provides flexibility and continuous protection for ongoing innovations, reassuring and supporting inventors in their creative journey. The examination process for a Patent of Addition is the same as that for the main patent, ensuring that the improvement meets all patentability requirements, including novelty, inventive step, and industrial applicability.
Section 54 of the Patents Act of 1970 outlines the provisions for patents of addition, which are granted for improvements or modifications to an existing (primary) invention. If an applicant files for a patent covering an improvement or modification of a main invention and has either already applied for it or holds the patent, the Controller may, upon request, grant a patent for the improvement as a patent of addition. In case, the improvement or modification is already patented independently, and the patentee holds the main invention’s patent, the Controller may, upon request, revoke the independent patent and grant an addition patent with the same filing date as the revoked patent. A patent of addition is only be granted if its application date is the same as or later than the filing date of the main invention’s application, and it cannot be granted before the main invention’s patent is granted.
Further, Section 55 states that patent of addition is granted for the same term as the main patent and remains in force until the main patent expires or is revoked. If the main patent is revoked, the addition patent can become an independent patent for the remainder of the original term. No renewal fee is required for an addition patent unless it becomes independent. Lastly, Section 56 states that the grant of an addition patent cannot be refused or invalidated solely because the improvement lacks an inventive step compared to the main invention. The validity of an addition patent cannot be challenged because it should have been an independent patent. Novelty is assessed by considering both the main invention and the patent of addition.
- Can a Patent Cooperation Treaty (PCT) application be filed for an addition patent?
Section 54 of the Patents Act does not limit the type of application for which a modification or improvement can be sought, allowing flexibility in its application. According to Section 7(1A) of the Patents Act of 1970, an international application filed under the Patent Cooperation Treaty (PCT) is considered filed in India if a corresponding application was filed before the Controller in India. Furthermore, under Section 138(4) of the Patents Act, an international PCT application designating India is treated as if it were filed under Sections 7 and 54. Form-1, the standard application form for patents in India, includes a specific section dedicated to patents of addition, confirming that such applications can be filed domestically or through international routes.
This interpretation is consistent with the PCT itself. Article 2 of the PCT broadly defines “application” as various types of applications for the protection of inventions, encompassing patents of addition, among others. Therefore, if an applicant wishes to designate an international PCT application as a patent of addition or seek other forms of protection in the designated state, this can be indicated during the national phase entry process. However, it’s essential to consider whether the special privileges granted to patents of addition under Indian law are recognised and applied similarly in other jurisdictions where the PCT application is pursued.
- Comparative Analysis in the US, the EU, and Japan
In the United States, the concept similar to a Patent of Addition is known as a Continuation-in-Part (CIP) application, as defined in United States Code, Title 35, Section 253. A continuation-in-part (CIP) application is a refiling of the same specification as the parent application but includes additional features of the invention. The claims are directed to the additional features. A CIP application allows inventors to add new subject matter to an existing patent application while retaining the priority date of the original application for the shared content. This means that while the new material is examined as if it were a separate application, it benefits from the earlier filing date of the original application for the common content. This can be advantageous in securing earlier protection for the innovation. The term of the CIP patent can differ from that of the original patent, depending on the filing date of the new content, providing additional flexibility in managing patent lifecycles.
The European Patent Convention (EPC) does not have a direct equivalent to a Patent of Addition. Instead, it provides for divisional applications. A divisional application allows an applicant to split an existing patent application into two or more applications, each treated as an independent patent. Divisional applications must be filed while the parent application is still pending. They inherit the parent application’s filing date, ensuring that the priority is maintained. The term for a divisional application is 20 years from its filing date, providing a full patent term independently of the parent application. This approach offers inventors flexibility in managing their patent portfolios and protecting different aspects of their inventions separately.
In Japan, the concept of a Patent of Addition is provided under Article 44 of the Japanese Patent Act. It is also called “Utility Model Registration” or “Patent of Addition.” This provision allows inventors to patent improvements to an existing invention. Similar to India, the Patent of Addition in Japan does not have an independent term and expires concurrently with the main patent, ensuring that the improvement is protected for the same duration as the original invention. The improvement must meet specific criteria to be eligible, and the examination process is the same as for the main patent. This ensures that the added innovation is patentable and deserves protection.
- The Three Pillars of the Comparative Analysis
Term and Expiry: In India and Japan, the Patent of Addition expires with the main patent, ensuring no extension beyond the original patent’s term. This approach simplifies the management of patent durations but limits the protection period for improvements. In contrast, through CIP applications, the US system allows for a potentially different term based on the filing date of the new content, providing flexibility but adding complexity to patent term management. The EU’s divisional applications have independent terms, providing an entire 20-year protection period from the filing date of the divisional application and offering the longest potential protection for improvements.
Application Process: All jurisdictions require that the Patent of Addition or its equivalent undergoes the same rigorous examination process as the main patent. This ensures that the improvements meet all patentability criteria in India and Japan, even if the main patent is still pending. The US CIP application process allows for new subject matter to be examined independently, ensuring that each part of the application is thoroughly vetted. In the EU, divisional applications must be filed while the parent application is pending, maintaining a continuous chain of priority and ensuring that all aspects of the invention are examined appropriately.
Purpose and Use: All jurisdictions aim to encourage and protect incremental innovations and improvements. The US and EU systems provide more flexibility, with independent terms for CIP and divisional applications, allowing inventors to manage their patent portfolios strategically. This flexibility can be beneficial for complex inventions with multiple improvements. On the other hand, India and Japan offer a more straightforward approach, directly linking the term of the Patent of Addition to the main patent, simplifying the process but limiting the protection period for the improvements. This approach is beneficial for ensuring the improvement’s protection is tied to the original invention’s lifecycle, promoting consistent and predictable patent management.
Conclusion
The concept of a Patent of Addition plays a vital role in the global patent system by encouraging and protecting continuous innovation. Despite the varied implementations across different jurisdictions, the core objective remains consistent: incentivising inventors to improve and refine their inventions by providing legal protection for these incremental advancements. In India and Japan, the Patent of Addition ensures that improvements or modifications are protected as long as the main patent is in force. This approach simplifies the patent lifecycle for inventors by directly linking the improvement’s protection to the primary patent’s term, reducing administrative burdens and costs associated with filing multiple patents for related innovations.
The Continuation-in-Part (CIP) application in the United States offers a flexible mechanism for protecting improvements. By allowing the addition of new subject matter to an existing application and examining it independently, the CIP system allows inventors to extend the protection of their innovations while maintaining the original priority date for shared content. This flexibility can be particularly beneficial in industries where rapid technological advancements necessitate frequent updates and improvements to patented inventions. The European Patent Convention (EPC) adopts a different approach through divisional applications. Divisional applications allow inventors to split an existing patent application into separate patents, offering the advantage of independent terms and an entire 20-year protection period for each divisional.
Understanding these differences is crucial for inventors and businesses seeking to protect their innovations in multiple regions. The choice of jurisdiction and the specific type of patent application can significantly impact the scope and duration of protection for incremental improvements. By navigating the varied legal frameworks effectively, inventors can maximise the protection of their innovations, encourage continuous development, and strategically manage their intellectual property portfolios on a global scale. While the implementation of the Patent of Addition varies across India, the US, the EU, and Japan, each system aims to balance the rights of inventors with the public interest, fostering an environment that supports ongoing innovation, economic growth, and technological advancement.
Authors: Atriyo Bhattachary, School Of Law, Christ (Deemed to be University)
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Mar 12, 2023 | Patent, PCT National Phase in India
A patent is statutory grant by Government for the inventions (a Product or a process) that are novel, industrially useful and non-obvious to a person skilled in the art. It gives its owner the exclusive right to prevent or stop others from making, using, offering for sale, selling or importing a product or a process, based on the patented invention, without the owner’s prior permission.
Date of filing patent application is very significant in patent law. The day of first disclosure of the invention to patent office is called as “Priority Date”.
A very famous example to prove importance of first filing or getting earliest priority date is telephone patent controversy in 1870s, where two inventors Elisha Gray and Alexander Graham Bell both independently designed devices that could transmit speech electrically (the telephone) and both men rushed their respective designs to the patent office within hours of each other, Alexander Graham Bell patented his telephone first. Elisha Gray and Alexander Graham Bell entered into a famous legal battle over the invention of the telephone, which Bell won. Today we all know Alexander Graham Bell as inventor of telephone.
In order to claim the earliest priority date, the inventor may be interested in filing provisional patent application. The filing of provisional application enables the inventor to have “Patent Pending” status for the invention. In case, the applicant has filed provisional application, the complete specifications shall be filed within 12 months of filing provisional application. Provisional application can only be filed in Indian Patent Office [National Office] and not at PCT or convention country. Immediately on receiving the Provisional Specification the Patent office accords a filing date and application number to the Application.
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The main advantages of filing provisional application are:
Drafting provisional application is less-time consuming compared to drafting complete specifications, hence it is quick method of claiming the earliest priority date
Gives 12-month time to the inventor to take decision on whether he wants to file complete specification or not. This 12-month period is also useful for the inventor to assess the invention commercially.
Applicant has to file complete specifications within 12-months of filing provisional application.
Prime stages from filing patent application till the grant are as follows:
Filing application: You may file complete or provisional application in India to claim earliest priority. However, if you don’t wish to file in India and directly want to file in foreign country, Foreign Filing Permission is required from Indian Patent Office. If provisional application is filed, the complete application shall be filed within 12 months from the date of filing provisional application. The complete specification can be filed directly as a PCT application after taking necessary permission if required.
Publication: The application is published by patent office after expiry of 18 months from the date of filing. Date of publication is very significant as upon publication the invention forms part of prior art. After publication, in case anyone is interested, the application may be opposed on various grounds such as lack of novelty, non-obviousness, industrial application etc. Indian patent law also provides a provision for early publication of application before the expiry of 18 month on request by the applicant.
Examination: After publication, examination of the application takes place and on the basis of examination, examination report is sent by the examiner that has to be replied in a given period of time.
Grant of patent: After replying examination, applicant may hear grant of the patent and this is the time when payment of annual renewal fee to maintain patent is also to be made. Grant of patent is published and in case anyone is interested, the patent may be opposed on various grounds such as lack of novelty, non-obviousness, industrial application etc.
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Foreign filing
If the applicant is interested in filing patent application in foreign country (ies), it shall be done within 12 months from the date of priority. Once foreign filing is done, we will submit “Priority Document[1]”, obtained from India Patent Office to the foreign country or PCT as the case may be.
Foreign filing of application can be of 2 types:
- Convention application: When an application is filed directly in a country which is a member of Paris Convention is called as convention application. For example, if you file in India and then directly file in USPTO, the application filed in USPTO is called as Convention Application.
- PCT application: This is application filed though Patent Cooperation Treaty (PCT) which is a filing platform (does not grant patents) and enables you to file application in multiple countries within 30 or 31 months from the priority date. The PCT is only a patent filing procedure and does not provide for the granting of patents. The granting of patents is the responsibility of each individual member countries (Contracting States).
The above timeline provides a graphical representation of the PCT procedure and sequence. Typically, first patent application is filed national or regional patent Office. This patent application is commonly referred to as the local application
Filing a PCT application
PCT application is filed within 12 months from the filing date of local (first) patent application with the Receiving Office of national or regional Patent Office. It can also be filed directly with the Receiving Office of WIPO, if permitted by the national security provisions of applicant’s national law [Refer Section-39 of Indian Patents Act, 1970].
PCT application will have the same legal effect as a separate application filed in each PCT country.
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International Search Report (ISR) and Written Opinion of the ISA
Every international patent application is subjected to an “international search” by an International Searching Authority (ISA). An Applicant of an International Patent Application is sometimes given the choice of having a search done on the invention at a patent office other than at the Receiving Office. The patent office which performs the search is called the “International Searching Authority.”
Indeed, not all Receiving Offices are qualified to act as International Searching Authorities, and therefore International Applications filed at such Receiving Offices are regularly referred to a different patent office than where the International Application was initially filed for purposes of having a search of the prior art made. Even when the patent office functioning as the Receiving Office also has the status of an International Searching Authority, agreements may have been entered into which allow another patent office to serve as the International Searching Authority at the election of the Applicant.
An International Search Report and a written opinion from the competent ISA will be provided to the applicant within 16 months from the filing date of local application. The written opinion complements the ISR by providing a preliminary non-binding patentability assessment of the invention taking into consideration the references contained in the ISR.
India as ISA and IPAE
WIPO (World Intellectual Property Organisation) has recognized the Indian Patent Office as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT).
The recognition as an ISA and IPEA would be beneficial for India in several ways. International applications received by the WIPO under the PCT route sent to India for search and preliminary examination would generate revenues in the form of fees usually paid to ISA and IPEA. The new status would allow Indian companies and inventors to avail patentability search and obtain International Preliminary Examination report (IPER) and written opinions on a much faster and cheaper way.
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International Preliminary Report on Patentability (Chapter I of the PCT)
ISA sends report on patentability to the applicant. After having considered the written opinion of the ISA, the applicant may decide not to continue with the assessment of PCT application and not file a demand for international preliminary examination[2]. In this case, WIPO will attach a cover sheet to this written opinion effectively converting it into the international preliminary report on patentability (Chapter I of the PCT). The international preliminary report on patentability (Chapter I of the PCT) is available for public inspection 30 months after the priority date of PCT application (the date of first-filed local patent application).
International Publication
The International Bureau of WIPO will publish PCT application on PATENTSCOPE® shortly after 18 months from the priority date of applicants PCT application. Publication provides technical disclosure of applicant’s invention fuelling greater technological progress and development.
PATENTSCOPE® is a free search service offered by the World Intellectual Property Organization (WIPO). It is made up of two databases, each with its own search interface.
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Supplementary International Search (Optional)
Under PCT system, the applicant is given an option of supplementary international search carried out by participating International Searching Authorities, upon request by the applicant. The request for supplementary international search may be filed any time prior to the expiry of 19 months from the priority date. The supplementary search is completely optional but may be of interest in cases where a more complete overview of the prior art is desired, particularly in respect of specific languages. The supplementary international search service is not available across all International Searching Authorities. Those offering this service do so against the payment of a fee. The supplementary international search report prepared by the International Searching Authority should be available by 28 months from the priority date.
Filing of a Demand for International Preliminary Examination (Chapter II of PCT) (Optional)
This part of the PCT procedure is optional. If the applicant is not entirely satisfied with the contents of the written opinion, he may decide to continue the assessment of invention under the PCT by filing a demand for international preliminary examination with a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA.
Applicant is given at least 22 months from the priority date of his PCT application to file demand for international preliminary examination with the competent IPEA.
International Preliminary Report on Patentability (Chapter II of PCT)
An international preliminary examination may optionally be requested (“demanded”) by the applicant. The international preliminary examination is conducted by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examination Report (IPER).
At about 28 months from the priority date, the IPEA sends an international preliminary report on patentability (Chapter II of PCT) containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of applicants invention. This report is a non-binding opinion on patentability and is only provided to applicants who have filed a demand for international preliminary examination.
National Phase Entry
National phase follows international phase. Entry into the national phase represents the end of the international phase of the PCT procedure and the start of the national patent grant procedure. During national phase the applicant can file patent application in the countries of his choice within prescribed time. A PCT application has to enter into nation phase with in 30 or 31 month from the priority date.
The international preliminary report on patentability (either under Chapter I or Chapter II), received during the international phase of the PCT procedure, will help the applicant to evaluate the chances of obtaining a patent in the countries of his interest. The international preliminary report on patentability also provides guidance to patent Offices on whether a patent should be granted for the invention.
Once entered in to the national phase, the patent application is subjected to the patent laws, regulations and practices of each country. Rejections on form and content may not be raised provided that they conform to the requirements of the PCT.
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When a PCT application is filed in India at national phase, it is processed under following stages:
1. On receipt of an application, the Office accords a date and serial number to it. PCT national phase Applications and non-PCT Applications are identified by separate serial numbers.
2. All applications and other documents are digitized, verified, screened, classified and uploaded to the internal server of the Office.
3. Patent applications and other documents are arranged in a file wrapper and the Bibliographic sheet is prepared and pasted on the file cover, so that the files move on for storing in the compactors.
4. The Application is screened for:
a. International Patent Classification.
b. Technical field of invention for allocation to an examiner in the respective field.
d. Correcting/completing the abstract, if required. If found not proper, the abstract will be recasted suitably, so as to provide better information to third parties.
5. Requests for examination are also accorded separate serial number.
Advantages of PCT
The PCT is an important part of the international patent system and application filed at PCT is also called as international application or PCT application. It provides a worldwide system for the simplified filing of patent applications that:
- Brings the world within reach
- Postpones major costs and provides the applicant with additional time to consider his various patenting options
- Provides a strong basis for patenting decisions
- Used by the world’s major corporations, universities and research institutions when they seek international patent protection
A single PCT application has the same legal effect as a national patent application in each of the PCT Contracting States. Without the PCT, one may have to file a separate patent application in each country of interest.
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[1] It is a certified copy of the application which is issued by Indian Patent Office and it is required by foreign country as a record or Indian filing.
[2] Filing demand for international preliminary examination is optional.
Feb 23, 2023 | PCT, PCT National Phase in India
Patent Cooperation Treaty or PCT is an important treaty, concluded in 1970. The uniqueness of PCT stems from the fact that it provides a unified procedure for filing patent applications in its contracting states, earning it the title of “International Application”. As on 1st September 2020, 153 countries are contracting states of PCT (details may be viewed here: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf). PCT is administered by the World Intellectual Property Organization (WIPO), primarily created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. Headquartered in Geneva, Switzerland, WIPO began operations on 26th April 1970 when the convention came into force. Key responsibilities of WIPO include extending technical & legal assistance in the area of intellectual property, conducting research on various areas of IPR and ensuring the proper facilitation of international IP protection.
Steps to file PCT Application
PCT is one of the most preferred ways to file patent application in multiple counties. Steps to file PCT application are as below:
- Applicant is required to file patent application (provisional or complete application) in his home country first to claim date of priority.
- Within 12 months from the date of priority, PCT application shall be filed.
- PCT application may be filed directly with International Bureau of WIPO (online) or via a Receiving Office (RO), which ultimately transmits PCT application to International Bureau.
As soon as the PCT application is filed, international phase starts. The application is searched by International Search Authority or ISA at a later point in time and international search report and written opinion is generated. This report is very important as it gives detailed patentability analyses of the invention. The inventor can consider this report and can take a decision regarding the number of countries in which the application must be filed.
Before International Phase ends, i.e., within 30 or 31 months from the date of priority, PCT national phase application, in PCT-contracting states shall be filed. The applicant may chose any number of countries out of 153 contracting states of PCT. The deadline to enter national phase is 30 months in majority of the countries but some countries like India follow a deadline of 31 months from the date of priority.
Advantages of PCT application filing
The main advantages of filing PCT application are as below:
- PCT is a unified platform that enables applicants to file their patent application in multiple countries claiming priority from the application filed in their home country’s national office. Please note that the applicant can file patent application via PCT route only in the countries that are member states or contracting states of PCT.
- The process of filing PCT application is completely hassle-free. The application may be filed online, requiring the filing of only a single application.
- Unlike convention application filing where international application has to be filed within 12 months from the date of priority, PCT allows the applicant a time window of 30 or 31 months from the date of priority to file application in individual countries that are PCT contracting states.
- International Search Authority (ISA) gives written opinion on patentability of invention which helps applicant to take right decision with respect to national phase filing.
Myths and facts
Even though PCT is a popular and a convenient way to file patent application in multiple countries, there are a lot of myths surrounding PCT filing, as listed below:
Myth 1: PCT grants patent
Fact: PCT is a patent filing platform and does not grant patents. Patents are granted only by national offices when PCT-national phase application is filed and prosecuted as per national laws of the given country (ies). PCT does not have any authority to grant patents.
Myth 2: PCT filing ensures grant of patent globally
Fact: Filing PCT application does not mean that you have an automatic protection in all contracting states of PCT. Instead, you get protection in the contracting states of PCT only if you file national phase application there and your patent is granted by such national offices.
Myth 3: Foreign attorney files PCT application
Fact: The patent agent of your country is authorised to file PCT application, which means you don’t need a foreign attorney to file PCT application. However, a local attorney belonging to the country in which the PCT is being filed will be required for filing PCT National Phase application in that specific country.
Myth 4: PCT filing fee takes care of all expenses
Fact: Applicants often ask whether they are required to file separate fees at the time of filing PCT national phase application as they have already paid PCT filing fees. The fact is that PCT national phase filing fees is independent of PCT filing fees. The fee that the applicant paid to PCT is only for PCT filing and for generating the search report. When a national phase application is to be filed, applicant needs to pay fees for each country for filing and prosecution of the application.
Myth 5: With PCT, National Phase application may be filed in any country
Fact: By filing PCT application, national phase application can only be filed in PCT contracting states. Before considering PCT filing, it is highly recommended to look into list of PCT contracting states on the official website of WIPO to ensure that the countries where you desire to file application is a contracting state of PCT.
Even though PCT is a popular and convenient way to file international application, all pros and cons shall be weighed carefully before opting for PCT route.
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Jan 23, 2023 | PCT National Phase in India
United States Patent and Trademark Office (USPTO) is considered to be one of the most lucrative destinations for the applicants to file for a patent for various reasons. Business opportunities in US are better than any other jurisdictions; enforcement of patent rights is effective; time taken for patent grant is less; US market is mature for buying or selling of patents; & US patent is valued more by the investors. For all these reasons, when the applicant wants to file patent application both in India and US, the biggest dilemma he has is where to file for a patent first, in India or US? Problem becomes bigger if the applicant does not want to file for a patent in India at all and directly wants to file in the US without pursing Indian filing.
In this article, we will explore the advantages of filing for a patent in India first, and consequences of filing directly in US first if the applicant is a resident of India.
Filing in India first makes sense (U/S 39)
Before taking a decision on where to file first, it is essential to understand what Indian Patent Laws say about foreign filing of a patent. The issue is sensitive as well as critical and lack of expert legal advice on the same may have fatal consequences.
According to Section 39 (Residents not to apply for patents outside India without prior permission) of the Patents Act 1970, a person who is resident of India may file for a patent in the US or any other foreign country by 2 ways:
- The first option is to file a patent application in India first, wait for 6 weeks and then go for foreign filing or PCT (Patent Cooperation Treaty) application filing, as the case may be. After filing the patent application in India, if the applicant does not get any objections from Indian Patent Office within 6 weeks from the date of filing, this indicates that the Controller does not have any objections with respect to foreign filing and applicant can file application outside India.
- The second option is to take Foreign Filing Permission (FFP) on Form-25 [Request for permission for making patent application outside India] from the Controller of patents, if the applicant does not want to file patent application in India and wishes to go for foreign filing directly. Prescribed fee to be paid along with Form 25 is 1600 INR for natural person/start-up/small entity and 8000 INR for others except natural person/start-up/small entity for e-filing and ten per cent additional respectively in case of filing by physical mode. This permission is usually granted by the Controller within 21 days from the date of request. So, if the applicant wants to file patent application in any foreign country without Indian filing, this Foreign Filing Permission (FFP) or Foreign Filing License (FFL) is required.
If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission to file patent in foreign country without the prior consent of the Central Government. This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Who is “Resident of India”?
The term “Resident of India” has not been defined in the Patents Act, 1970 but according to Income Tax Act, an individual can be termed as a ‘Resident of India’ if he stays for the prescribed period during a fiscal year i.e. 1st April to 31st March, either for:
- 182 days or more; or
- Has been in India in aggregate for 365 days or more in the previous four years.
Any person who does not satisfy these norms is termed as a ‘Non-Resident’. A resident individual is considered to be ‘ordinarily resident’ in any fiscal year if he has been residing in India for nine out of the previous ten years and, in addition, has been in India for a total of 730 days or more in the previous seven years. Residents who do not satisfy these conditions are called individuals ‘not ordinarily resident’.
Rational behind filing in India first
Main rational behind having Section 39 is to safeguard national defence and security. If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission for foreign filing without the prior consent of the Central Government. Secrecy Directions may be imposed on such application and the Controller may give direction for prohibiting or restricting the publication of such application if it appears to him that the invention in question falls in one of the classes notified to him by Central Government as relevant for defence purposes or the Controller himself considers it to be so. However, this section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Do you lose anything by filing in India first?
It is a myth that by filing a patent application in India first and US later, one loses on the date and filing and patent filing in the US gets delayed. The fact is that even if you file for a patent in India first, you can file the same application in US (as convention application) immediately after expiry of 6 weeks from the date of Indian filing. Kindly note that patent application may be filed anytime before expiry of 12 months from the date of Indian filing to claim priority from the Indian application. At the time of filing in US, you can claim priority date from your Indian filing as both India and US are convention countries as per the Paris Convention. Effectively, this means that even though you file in India first and US later, the same date of priority can be maintained in USPTO as well. In-fact when priority is claimed from Indian filing, the applicant has to submit to USPTO, the priority document obtained from the Indian Patent Office.
Therefore, it actually does not matter where you filed first, but yes, it certainly is a better and a safe choice to either file for a patent in India first or take permission from the Controller for foreign filing.
Consequences of violating section 39
If a person makes or causes to be made an application for the grant of a patent in contravention of section 39, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both. Hence, it is important to either file application in India first or take FFP from the Controller of Patents.
Conclusion
In the instances where the applicant or inventor is a resident of India, it is important to consider filing for a patent in India or taking permission for foreign filing from the Controller, before filing for a patent in foreign country or PCT for the reason that violation of this provision can lead to fatal consequences.
Apr 15, 2022 | Patent, PCT, PCT National Phase in India
For various reasons, every inventor wants to file for a patent internationally after filing it in his/her home country. Sometimes it’s about the status that is associated with having a patent filed in the US or Europe, but having an international patent may also enhance the valuation of the technology which ultimately may impress investors and fetch better value to the inventor. Oftentimes, inventors drop the idea of filing for patent internationally because it is expensive, complicated, and long procedure. Laws across the countries are also not unified in terms of procedures, fee and timelines leading to more and more confusions at every stage,
It is firstly of crucial importance to understand the term “International Patent”. In reality, there is nothing called international patent or global patent. Despite there being ways to file for a patent internationally, there is no single authority to grant international patents with validity across the globe. Patents are required to be filed in and granted by each country where the inventor wishes to seek protection.
Few things are required to be focused on, when filing a patent outside India. For a resident of India, Section 39 [Residents not to apply for patents outside India without prior permission] of Indian Patents Act 1970 states that the patent must be filed in India first and can be filed in any foreign country within a period of 12 months. Once this 12-month period expires, the inventor loses the chance of filing outside India.
Two ways to file patent application internationally
There are 2 ways to file a patent in foreign countries. These are:
A. Patent Cooperation Treaty (PCT) Route
An inventor may file a single patent cooperation treaty (PCT) application or international application within 12 months from the date of filing a patent application in India. PCT is an international patent law treaty that provides a unified system for filing patent applications in each of its contracting states. It is a convenient platform to assist inventors that are seeking patent protection internationally (in the contracting states of PCT) for their inventions. It also helps patent offices with their patent granting decisions by providing comprehensive search reports for the patent application along with opinion on patentability. PCT publishes the patent application filed with it and maintains an online database called Patentscope which facilitates patent searches as well as gives public access to a wealth of technical information in the form of patents.
PCT examines the application, issues examination report and enables inventors to file their application within 30/31 months from the date of priority in any of the member states of PCT. After this, the patent is processed and granted by the national offices of the countries where patent protection is sought, based on the procedures and requirements of the respective offices. PCT enables patent filing in its member states & gives extra time to the inventor to decide about the countries they want to file their application in.
B. Convention Route
The countries which are members of the Paris Convention are called convention countries and an application filed in a convention country is called a convention application. Unlike PCT, convention application is required to be filed in the convention country within 12 months from the priority date.
Reasons to file international application
Filing international application without clarity on the reason to file is not a good idea. It does not help inventors in long run and may actually lead to a very stressful situation if the prosecution is left midway, further making the overall process financially cumbersome. Following parameters should be considered when deciding about the countries to file patent application in:
- Your future business plans
Patents must be filed in the countries where the inventor wishes to expand the business in the future. It must be remembered that there is a specific time period within which inventors must file the patent application in specific countries. Once this period has lapsed, it is not possible to file an application at a later stage. Therefore, if it is desired by the inventor to expand the business in countries like the US or Japan 5 years later, it would make sense to file patents in these countries within the required time frame.
- Potential of technology in given jurisdiction
Sometimes, it makes sense for an inventor to file for patent in some countries even if the inventor does not have business there. Countries like the US have a mature system of buying, selling and enforcing patents. If technology has good potential in a specific country, a patent should be filed in that country. Further, licensing and selling options may also be explored to facilitate easier transition of the patented technology to the market.
- Your budget
Filing and prosecution of a patent is a long process and strictly regulated by several timelines. A patent may be lost if the inventor does not respond to the office in time or fails to pay the necessary fees. Further, there are standard expenses for each country and renewal fees to be paid post grant of the patent. This leaves a very small window for postponing expenses and timelines, making the overall process of getting a foreign patent extremely time consuming, complex and expensive. The tentative costs of filing, prosecution and maintenance must be assessed in advance and only then should a decision about foreign filing be taken.
Keeping in mind budget, type of invention and area of business, the decision to file patent internationally shall be taken.
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