Information And Documents Regarding Entry Into National Phase In India Of An International PCT Application

Question 1
When does a patent application enters into national phase of India as PCT? How does the national phase start?

Answer 1
The Malaysian entry into national phase starts only when the applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The applicant should not expect any notification inviting him to perform those Acts (through in some designated / elected Offices, he may receive such invitations). It is his role responsibility to perform them in due time, even though, for example, the international search report or, if applicable, the international preliminary examination report is not yet available.

The time limit for entering the National Phase

(i) BEFORE DESIGNATED OFFICE – Where the applicant has not filed a demand for international preliminary examination, the time limit within which the applicant must enter the national phase by performing certain Acts is governed, for the designate Offices. In case of DO/IN it is 21 months from the priority date.

(ii) BEFORE A ELECTED OFFICE – If the applicant files a demand for international preliminary examination prior to expiration of 19 months from the priority date, the time limit before which the applicant must enter the national phase by performing certain Acts is governed, for the elected offices. In case of EO/IN 31 months from the priority date.

Question 2
What acts to be performed for filing PCT national phase patent application in India? What are the information and documents required?

Answer 2
An applicant desirous of entering the Indian national phase is required to perform certain Acts within the time limit applicable for entry into the national phase. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (1.) basic requirements and (2.) additional special requirements to complied with by the applicant in connection with the national phase.

(1.) Basic requirements

Under the said basic requirements, to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit:

(a) An application on a plain paper (national form is not mandatory), however the option remains with the applicant;

(b) Where the application has not been filed or published in one of the official language of DO/IN or EO/IN as the case may be, a translation of the application in one of the official languages.

(2.) Additional special requirements

Under the said additional special requirements, no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of the national fee, furnishing of a translation and in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national processing have started. As per DO/IN or EO/IN the special requirements of the Office are as follows:

a. Name and address of the inventor if they have not been furnished in the “Request” part of the international application;
b. Instrument of assignment or transfer where the applicant is not the inventor;
c. Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/ib/306);
d. Declaration of Inventorship by the applicant;
e. Statement regarding corresponding applications in other countries;
f. Power of Attorney if an agent in appointed;
g. Address for service in India (but no representation by an agent required);
h. Verification of translation, and
i. International applications or translation to be furnished in three copies.

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