Filing PCT national phase application in India

In a recent order, accessible here, the Indian patent office has dispensed with the requirement of filing complete specification and abstract in Form 2 at the time of filing of a PCT National Phase Application in India.

Main Points of CG’s Order

 1.  Applicant will no more be required to file multiple copies of documents already available with International Bureau (IB) of WIPO.

 2. IPO will be able to utilize such documents accessed electronically from IB (This would also result in more efficient usage of the valuable resources of IPO and reduce errors in data entry).

 3. For filing a PCT National Phase Application in India, which does not claim priority of any PCT National Phase Application filed previously in India, only the following contents are required :

FORM 2: Column 1, 2, 3 and last page of claims (first page, if claims comprise of only one page) with date and signature.

4. The documents filed by the Applicant should exactly correspond with the up-to date information available on the record of IB on the date of filing of the PCT National Phase Application in India.

5. The international application was either not filed or has not been published in English, the Applicant shall file translation of the Application in English, duly verified by the Applicant or the person duly authorized that the contents thereof are correct and complete.

6. It has also been clarified that the IPO does not allow an Applicant to amend the specification or the related documents before he actually enters National Phase in India.

 7.  Applicable from 6th July 2012

Note on Practice

Therefore, from 06th July 2012, an applicant will be required to provide the following documents to the patent office at time of filing:

  1. FORM 1
  2. FORM 2 with only Column 1, 2 & 3 filled along with last page of claims with date and signature
  3. FORM 3 (If Applicable)
  4. FORM 5 (If Applicable)

Also, the CG has clarified that IPO does not allow an Applicant to amend the specification or the related documents before he actually enters National Phase in India. However, I believe this does not stop an applicant to file preliminary amendments just after entering India in the national phase.

Kshitij Malhotra

Kshitij.malhotra@inohelp.com

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