- A national phase application, corresponding to a PCT international application, must be filed in India within a non-extendable period of 31 months from a date of priority of the corresponding PCT international application.
Forms and Fee
- As per Section 139 of the Patents Act 1970, the patent office necessitates filing of national phase applications by means of forms provided by the patent office. Different forms need to be filed for different services. However following forms are mandatory before the national phase application can proceed for grant:
- FORM 1 (AS PER SECTION 7) : APPLICATION FOR GRANT OF PATENT
- FORM 2 (AS PER SECTION 10): PROVISIONAL/ COMPLETE SPECIFICATION
- FORM 3 (AS PER SECTION 8): STATEMENT AND UNDERTAKING UNDER SECTION 8
- FORM 5 (AS PER SECTION 10): DECLARATION AS TO INVENTORSHIP
- FORM 18 (AS PER SECTION 11B): REQUEST/ EXPRESS REQUEST FOR EXAMINATION OF APPLICATION FOR PATENT
- FORM 26 (AS PER SECTION 127): FORM FOR AUTHORIZATION OF A PATENT AGENT/OR ANY PERSON IN A MATTER OR PROCEEDING UNDER THE ACT
- As per Rule 24C, Form 18A may optionally be filed, instead of Form 18, for expedited examination of the national phase application, if India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding PCT international application.
- As per Section 138, for the PCT international applications filed in language other than Hindi or English, an English translation of the complete specification and the abstract, and a translation verification certificate needs to be filed with the national phase application.
- The fee for filing of the national phase application varies as per requested services, contents of the specification (provisional or complete) and status of the applicant (natural individual, start-up, small entity, other than small entity). The detailed breakup of the fee can be obtained from a fee schedule published by the patent office.
Nucleotide and Amino Acid Sequences
- The PCT international application must be accompanied by a sequence listing in electronic form, where the PCT international application comprises nucleotide or amino acid sequences.
Amendments to Application/ Claims
- The national phase application should exactly match with the details of the corresponding PCT international application published by the International Bureau (IB)
- However the national phase application (including the claims) may be amended subsequent to filing of Form 13 (APPLICATION FOR AMENDMENT OF THE APPLICATION FOR PATENT/ COMPLETE SPECIFICATION/ANY DOCUMENT RELATED THERETO) once the national phase application has been filed with the patent office.
Publication of National Phase Application
- As per Section 11A and Rule 24 of the Patents Act 1970, a national phase application is published after completion of eighteen months from its earliest priority date.
- However as per Rule 24A, an early publication may be requested in Form 9 at any time before the end of the eighteen months period.
Examination of National Phase Application
- As per Section 11B, and Rules 24B and 24C, the national phase application will be taken up for examination if the application has already been published as per Section 11A and a Request For Examination has been filed in form 18 or 18A.
- As per Section 11B and Rules 24B and 24C, after publication, the Controller will refer the national phase application to an examiner in an order of filing of the Request for Examination in Form 18 or 18A, as the case may be.
- The examiner will conduct a formal and a substantive examination of the national phase application as per relevant sections including Section 2, 3, 12, 13 of the Patents Act 1970.
- A first statement of objections, also called as a First Examination Report (FER) is mailed to the applicant within maximum of 5 months from the date on which the national phase application was referred to the examiner.
- The applicant needs to comply with the requirements of the FER within a period of six months from the date of mailing of the FER. This period may be extended for another three months by way of request made in Form 4.