PCT National Phase Patent in India

PCT National Phase Patent Application in India: A Complete Guide

In today’s global innovation landscape, protecting intellectual property across multiple countries has become essential for inventors, startups, and companies alike. The Patent Cooperation Treaty (PCT) provides a unified platform for filing international patent applications, allowing applicants to seek protection in over 150 member countries through a single filing.

However, filing a PCT application alone does not result in patent protection in individual countries. To secure patent rights in a specific jurisdiction, the applicant must enter what is known as the “National Phase” in that country. This article provides a detailed overview of the PCT National Phase entry in India, including timelines, procedural requirements, documentation, and strategic considerations.

Understanding the National Phase Patent in India

The PCT system simplifies the initial filing process by allowing a single international application to be filed with the World Intellectual Property Organization (WIPO). But the system does not grant “worldwide patents.” After the international phase concludes, applicants must decide in which countries they wish to pursue patent protection and file separate national applications within prescribed time limits.

In India, this stage is called the National Phase of a PCT application. It essentially converts the international application into a national patent application under the Indian Patents Act, 1970. From this point onward, the application is examined and processed by the Indian Patent Office (IPO) as if it were originally filed in India.

Timeline for National Phase Entry in India

An applicant must file the National Phase application in India within 31 months from the priority date of the PCT application. The priority date refers to the date of the first patent application filed anywhere in the world for the same invention.

This 31-month deadline is strict. Unlike some jurisdictions that allow extensions, India generally does not permit any extension beyond this period. Therefore, applicants should plan ahead to ensure that all documentation and fees are submitted within the prescribed time limit.

If an applicant misses this deadline, the opportunity to obtain patent protection in India for that particular invention is permanently lost.

Who Can File a National Phase Patent Application in India

A National Phase application in India may be filed by:

1. The applicant named in the international application,
2. The legal representative or assignee of the applicant, or
3. An Indian Patent Agent authorized to act on behalf of a foreign applicant.

Foreign applicants are mandated to engage a registered Indian Patent Agent, as only such agents can correspond with the Indian Patent Office.

Documents and Forms Required for National Phase in India

Filing a PCT National Phase application in India involves submitting specific forms and documents as prescribed under the Patents Rules, 2003. The key requirements include:

1. Form 1 – Application for grant of patent
2. Form 2 – Complete specification (including claims, abstract, and drawings, if any)
3. Form 3 – Statement and undertaking regarding foreign filings
4. Form 5 – Declaration of inventorship
5. Form 26 – Power of Attorney (when filed through a patent agent)
6. English translation of the international application (if the original PCT filing was not in English)
7. Certified copy of the priority document, if not already provided during the international phase

The forms must be accompanied by the prescribed official fees, which differ based on the category of applicant—individual, startup, small entity, or large entity. India provides reduced fees for startups and small entities to promote innovation.

Publication of the Application

The PCT National Phase application in India is typically published after 18 months from the priority date. However, if the application was already published during the international phase, no separate publication is required. Applicants may also request early publication under Form 9 to expedite the process.

Once published, the application becomes available for public inspection, and third parties may submit pre-grant oppositions under certain grounds before the patent is granted.

Request for Examination

The examination of the application is not automatic. The applicant must file a Request for Examination (Form 18) within 31 months from the earliest priority date.

However, the rules allow this period to be extended up to 48 months from the priority date upon payment of the prescribed late fee. If the RFE is not filed within this extended period, the application is deemed withdrawn and cannot proceed further.

Failure to file this request within the specified period results in the application being deemed withdrawn. Once the RFE is filed, the application is queued for examination by the Indian Patent Office.

The examiner conducts a detailed review of the application to assess whether the invention satisfies the requirements of novelty, inventive step, and industrial applicability, as required under the Indian Patents Act.

The Examination and Objection Process

Following examination, the Patent Office issues a First Examination Report (FER) listing any objections or deficiencies identified. Common objections include issues related to:

• Lack of novelty or inventive step
• Insufficient disclosure of the invention
• Lack of clarity or unity of invention
• Non-patentable subject matter under Sections 3 or 4 of the Act

The applicant must respond to the FER within six months, which may be extended by three months upon request. The applicant’s response should address all objections with reasoned arguments and, if necessary, claim amendments.

If the Controller of Patents is satisfied that the application meets all legal and substantive requirements, the patent is granted and published in the Official Patent Journal.

Duration and Renewal

A patent granted in India through the National Phase remains valid for 20 years from the international filing date, subject to annual renewal fees starting from the third year. Non-payment of renewal fees results in the lapse of the patent, although it can sometimes be restored within a prescribed period.

Advantages of Entering the National Phase in India

India has emerged as a major hub for research, innovation, and technology. Entering the National Phase in India offers several advantages:

• Large and fast-growing market – Patent protection in India provides access to one of the world’s largest consumer and technology markets.
• Cost-effective prosecution – Compared to many developed countries, patent filing and prosecution costs in India are relatively low.
• Recognition of international examination reports – The Indian Patent Office considers International Search and Preliminary Examination Reports, potentially reducing duplication of effort.
• Strong legal protection – The Indian Patents Act provides robust enforcement mechanisms against infringement.
• Fast-track options – Expedited examination is available for startups, female applicants, and applicants who have filed corresponding applications in certain partner countries.

Frequently Asked Questions (FAQ) on PCT National Phase Patent in India

1. What is a PCT National Phase application in India?

A PCT National Phase application in India is the Indian entry of an international patent application filed under the Patent Cooperation Treaty (PCT). It allows an inventor to seek patent protection in India based on the earlier PCT filing, without filing a completely new application. The Indian Patent Office examines and grants the patent in accordance with Indian Patent Law.

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2. When should the National Phase application be filed in India?

The National Phase application must be filed within 31 months from the earliest priority date of the international application. India also permits a delayed filing up to 48 months from the priority date, subject to payment of late fees and filing a condonation request explaining the delay.

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3. What documents are required for filing a PCT National Phase application in India?

The following documents are typically required:

• Copy of the published PCT application and international search report (ISR)
• Form 1 (application for grant of patent)
• Form 2 (complete specification)
• Power of Attorney (Form 26, if filed through an agent)
• Priority documents if not already submitted to WIPO
• English translation if the international application was not filed in English

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4. What happens after the National Phase application is filed?

Once filed, the application is published automatically after 18 months from the priority date (or earlier if requested). The applicant must then file a Request for Examination (RFE) within 31 months of the priority date, extendable up to 48 months with a late fee. The Patent Office will then examine the application, issue objections if any, and finally grant the patent upon successful compliance.

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5. What are the official fees for filing a PCT National Phase patent in India?

The official fee depends on the type of applicant — individual, startup, small entity, or large entity — and the number of pages, claims, and priority documents. While India’s filing costs are among the lowest globally, the total may vary based on complexity. Additional fees apply for extra pages, claims, and late filings.

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6. Can amendments be made to the National Phase application in India?

Yes. Amendments are allowed in accordance with Section 57 of the Patents Act, provided they do not add new subject matter beyond what was originally disclosed in the PCT application. Amendments can be filed voluntarily before examination or in response to official objections.

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7. What is the typical timeline for grant of a National Phase patent in India?

On average, the grant timeline ranges from 2 to 4 years, depending on factors such as examination workload, the applicant’s responsiveness to objections, and whether expedited examination is requested. Startups, small entities, and female applicants can seek expedited examination to shorten the process.

Conclusion

The National Phase entry in India is a vital step for inventors and companies seeking to expand their patent protection into one of the world’s most dynamic markets. A well-prepared and timely filed application ensures a smoother prosecution process and stronger protection of intellectual property rights.

At Bhagnari & Co, we assist clients across the globe in navigating the complexities of the Indian patent system. Our services include filing and prosecution of National Phase applications, responding to examination reports, managing oppositions, and maintaining granted patents.

Whether you are an individual inventor, a startup, or a multinational corporation, our patent attorneys provide comprehensive, end-to-end support to help you secure and protect your innovations in India.

Contact us to learn how we can help you file your PCT National Phase patent application in India efficiently and strategically.

About This Page

This page provides a detailed overview of the PCT National Phase Patent filing process in India, explaining how international applicants can enter the Indian national phase under the Patent Cooperation Treaty (PCT). It covers crucial aspects such as filing deadlines (31 and 48 months), required documents, official fees, request for examination (RFE), and the timeline for patent grant. You will also find guidance on amendments, publication, and expedited examination options.
At Bhagnari & Co, we assist inventors, startups, and corporations in preparing and filing PCT National Phase applications in India, ensuring compliance with Indian Patent Law and smooth prosecution until grant.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.