27 Apr 2018

PCT application filing procedure at Indian Patent Office (IPO)

Introduction

A patent application filed under the PCT is called an international application, or PCT application. A PCT application is filed with a Receiving Office (RO) such as Indian Patent Office (IPO), which then transmits the PCT application to IB (International Bureau), WIPO, Geneva.

While filing an international PCT application, one should have following elements

  • Request (Article 3(2)) –RO/101
  • Description (Article 3(2))
  • One or more claims (Article 3(2))
  • Abstract (may be filed later without affecting the International filing date) (Articles 3(2) and 3(3))
  • Drawings (where applicable) — later submission may, subject to certain conditions, result in a later International filing date (Articles 3(2) and 14(2))
  • Sequence listing part of description (where applicable) (Rule 5.2(a))
  • Indications containing references to deposited microorganisms or other biological material (some designated offices (e.g. Japan) require that they may be included in the description or in the International application on the International filing date) (Rule 13bis)
  • Translation of the International application for the purposesof International search or International publication — maybe furnished later without affecting the International filing date (Rules 12.3 and 12.4)
  • Power of Attorney or copy of General Power of Attorney — may be filed later without affecting the international filing date (Rules 90.4 and 90.5)
  • In case of offline filing, three copies should be submitted to RO/IN or one copywith RO/IB

One is also required to elect ISA (International Searching Authority) at the time of filing PCT application.
The competent ISA’s are as following:

  • INDIAN PATENT OFFICE (IN)
  • AUSTRIAN PATENT OFFICE (AT)
  • AUSTRALIAN PATENT OFFICE (AU)
  • EUROPEAN PATENT OFFICE ( EP)
  • CHINESE INTELLECTUAL PROPERTY OFFICE (CN)
  • UNITED STATES PATENT & TRADEMARK OFFICE (US)
  • SWEDISH PATENT OFFICE (SE)

Modifications and simplified filing requirements at the time of filing PCT

1. The new provisions are applicable only to the PCT applications which are filed into India while national phase entry does not claim priority of any PCT National Phase application filed previously in India.

2. For a PCT National Phase application in India, IPO will only require the following contents from an applicant:

  • Title of the invention;
  • Applicants name, address and nationality;
  • Preamble to the description of the invention; and
  • The last page of claims together with the date and signature

3. The Indian IPO will now not permit an applicant to amend the specification or related documents while entering into the national phase in India. Any amendments in the claims or specification therefore can only be done after entering the National Phase entry in India.

4. The documents to be filed by an applicant should exactly match the updated information available on the International Bureau (IB) records on the date of filing of a PCT National Phase application in India. Such information should also be notified/ published by the International Bureau (IB) in accordance with the PCT regulations. Any request pending before the International Bureau (IB) shall now be of no consequence and should not be reflected in the application.

For more information on PCT International Patent application in India, please write to us at info@effectualservices.com

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