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 worldâs 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.
đ Contact Origiin IP Solutions LLP for India national phase filings and local patent agent support
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 âInternational Applicationâ.  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.Â
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 countryâs 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 donât 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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Feb 23, 2023 | General
For various reasons, every inventor wants to file for a patent internationally after filing it in his/her home country. Sometimes itâs 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 âInternational Patentâ. 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:
- 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.
2. 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:
a. 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.
b. 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.
3. 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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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 âResident of Indiaâ?
The term âResident of Indiaâ has not been defined in the Patents Act, 1970 but according to Income Tax Act, an individual can be termed as a âResident of Indiaâ 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 âNon-Residentâ. A resident individual is considered to be âordinarily residentâ 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 ânot ordinarily residentâ.
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.
