Filing a national phase patent application in India after filing a PCT application

A PCT (Patent Cooperation Treaty) application, which is normally referred to as an “international application”, facilitates a patent applicant to file patent applications in the desired PCT member countries within 30 or 31 months from the priority date of the PCT application.
The patent applications that are filed in individual PCT member countries on the basis of the PCT application are generally referred to as “national phase applications”.
 
Timeline
In India, a national phase application can be filed within 31 months from the priority date of the PCT application. India does not provide time extension to file national phase applications.
 
Language requirement
The Indian national phase application can either be in English or Hindi (official language). While Hindi is an option, even Indian applicants choose to file patent applications in English. Hence, for all practical purposes, one shall consider filing the national phase application in English.
It shall be noted that, apart from filing the patent application in English, if a priority document of the PCT application is not in English, then an English translated priority document should be filed within 31 months from the priority date of the PCT application.
 
Examination
The Indian Patent Office (IPO) queues a national phase application for examination only after the applicant files an examination request. Hence, it is advisable to request for examination at the earliest.
An applicant has the option to file an examination request within 48 months from the priority date. Failing to request for examination within 48 months leads to abandoning of the patent application.
On the other hand, even if an applicant files a national phase application well before 31 months and also requests for examination, the IPO will queue the national phase application for examination only after 31 months. In case the Applicant wants the IPO to queue the national phase application for examination before 31 months, then an express request shall be made by paying appropriate fee (fee provided in the table below).
Once the application is queued for examination, the IPO is supposed to issue a First Examination Report (FER) within 6 months from the date on which the application was queued for examination. However, it normally takes substantially more time to receive the FER, owing to the workload at the IPO.
Once the FER is issued, the Applicant has 12 months to address the objections raised by the examiner and put the application in order for grant.
 

The statutory fee depends on who the applicant of the patent is. The Indian Patent Office (IPO) has categorized the applicants into 4 categories:

  1. Natural person
  2. Other than natural person – Startup
  3. Other than natural person – Small Entity
  4. Other than natural person – Others except small Entity

Any individual(s) applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining categories of :

  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
For example, legal entities, such as, companies would fall under these categories. It shall be noted that, a patent application can have more than one applicant, and even if one of the applicants do not fall under the first category, then the patent application is considered to be filed by applicants of the remaining two categories.
Applicants who are other than natural person are categorized into the below categories.
  1. Other than natural person – Startup
  2. Other than natural person – Small Entity
  3. Other than natural person – Others except small Entity
The patent office charges the least fee for applicants who are natural persons and Startups.The patent office charges other than natural person applicants who are a small entity, a fee, which is between a natural person/startup and others except small Entity.The patent office charges a maximum fee for other than natural person applicants who are Others except small Entity.The patent office collects 2 times the fee from the applicants who are "Other than natural person – Others except small Entity"  as compared to applicants who are "Other than natural person – Small Entity"Certain conditions have to be met by other than natural person applicants, who wish to claim "Small Entity" status. You can read more about this in our article.
 

The IPO fees for filing a national phase application are provided below:

 

Step No.

Step

Indian Patent Office Fee (E-filing)

Applicant – Individuals/Startups

Applicant – Non Individuals

Small Entity

 

Other than Small Entity

1

Filing a National Phase application in the IPO

USD 27

USD 68

USD 136

2

Fee for each sheet in excess of 30 sheets in a patent specification

USD 2.7/per sheet

USD 6.8/per sheet

USD 13.6/per sheet

3

Fee for each claims in excess of 10 claims.

USD 5.4/claim

USD 13.6/claim

USD 27.2/claim

4

Filing an Examination request in the IPO

USD 67

USD 168

USD 336

5

Filing statements and undertakings(Form 3) (Mandatory as per Indian Patent Act)

No fee

No fee

No fee

6

Fee for each priority document above 1 priority document

USD 27/priority document

USD 68/priority document

USD 136/priority document

Patent office fee may vary as per foreign exchange rates. 1 USD = ~ INR 60

 
You may also calculate the Indian Patent office fee using our calculator below. All fee in USD.
 

Indian Patent Filing Cost Calculator

 
Special Cases
 
Specification amendment

Kindly note that, the patent specification to be filed in the IPO has to be the same specification as filed in PCT stage in WIPO. Any article 19 and 34 amendments made during PCT stage, can be filed in IPO as well.

There can be a scenario wherein the Applicant wishes to file an amended specification (compared to the PCT specification) while filing the national phase application. In such scenarios, the specification present at the PCT stage shall be initially filed while filing the national phase application. Subsequently, the Applicant can file an amended specification along with an application to amend the patent specification  by paying the prescribed fee.
 
We hope this article helps you in understanding the nuances involved in filing an Indian national phase application. You may be also interested in reading our other articles:
At InvnTree, we have commendable expertise in filing national phase applications and prosecuting them. Feel free to write to us at contact@invntree.com for any assistance.
 
 
Best regards,
Team InvnTree 
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