New simplified process of filing of PCT national phase Applications in India

The Indian Patent office has published public notice CG/ Public Notice/ PO/2012/15 dated July 2, 2012, whereby the Patent office has simplified process of filing of PCT national phase Applications in India.  These instructions would come into force from July 6, 2012 and would do away the redundant process of filing multiple documents that are invariably available on records of the IB of WIPO. This will also reduce errors in data entry to obviate need for corrections in PCT national phase applications filed in India.

The following changes would come into force:

1.         Along with Form 2 (having 1-3 columns) instead of entire Complete specifications only the signature sheet of claims need to be filed (only last page of claims as per records of the IB where the Applicant or authorised agent of Applicant has to put his signature along with date of filing Complete Specification).

2.         For such applications the Column 7 and 8 of the Application Form 1 are not required to be filled in.

This is applicable only for filing such PCT national phase Applications in India that do not claim priority from any earlier PCT national phase application filed in India. Implying that these instructions would not be applicable to any divisional application or patent of addition that is filed in relation to any previously filed pct national phase application in India.

Indian Patent office would not allow any amendment before entering national phase in India and would take details of Application as available on records of the IB Therefore any amendment (not reflecting on record of IB) has to be carried out after entering national phase in India.

However, where the international application was either not filed or has not been published in English, the English translation along with verification has to be filed in the Indian Patent Office.

The above amendment would supersede the Rule 9 of proposed draft Patent (Amendment) Rules 2011 whereby a specific formatting of documents (except affidavit) was required before filing in the Indian Patent office, unless otherwise a provision is made and such PCT national phase applications are exempted from application of proposed Rule 9.

The notification has not brought clarity on whether the other misc. documents such as IB-304 towards transmittal of priority documents, International search report, Written opinion of International Search authority, International preliminary report on patentability, IB-306 towards any amendment, have to be supplied or not.  

Aswal Associates