As India evolved from an underdeveloped nation to a developing nation and is now flirting with the top five nations in the world, the protection of intellectual property has also evolved to such an extent that India is now considered one of the top filers of patents globally. In 2024, India ranked 6th globally in the number of patent of filings. Again in 2024 India achieved the distinction of having over 100,000 grants in a year. This achievement is remarkable considering that India entered international patent system through the PCT route only as late as 1998.
India became a contracting state to the Patent Cooperation Treaty on December 7, 1998. This move significantly transformed the patent filing landscape for international applicants wanting to enter into India. The provisions were simplified until 2025 the simplification aspect is a work in progress. The Indian national phase filing system has not yet reached the sophistication of the European system, where the requirement of a power of attorney or a proof of right from inventors to applicants has been dispensed with. However, the Indian national phase rules are a shade simpler than the US which requires these formal documents in considerable detail.
With the signing of Patent Cooperation Treaty, inventors in India can now file a single PCT application designating multiple countries, and foreign applicants can include India as one of their designated jurisdictions for patent protection without the need to immediately engage in local procedures. These decisions can be postponed for a length of time, that is the beauty of the PCT system.
India’s participation in the Patent Cooperation Treaty (PCT), assisted India in integrating the country with the global patent system and is an important step in history of patenting of India in moving up in the ranks of countries in terms of patent filings. It is expected very shortly India will overtake Germany in the number of patent filings.
In 1995,India became a founding member of the World Trade Organization (WTO) and agreed to bind itself to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). This milestone was a stepping stone to push India to align its patent laws with international standards, while still preserving safeguards for public health and access to technology values deeply rooted in the Indian legal and moral framework. The introduction of section 3d is an example of this safeguard.
The PCT system allows an applicant to file one international application and defer the decision of where to seek actual patent protection for up to 30 or 31 months (depending on the jurisdiction) from the earliest priority date. In India it is 31 months. By the recent amendment in 2024, it is possible to extend entry for filing into India with an extension fee by up to 6 months.
Before the 30–31-month period expires, an applicant must enter the “national phase” in each country where protection is desired. For India, this means filing a national phase patent application before the Indian Patent Office (IPO) within 31 months from the priority date and now with an extension of 6 months. Once a PCT application enters the Indian national phase, it is treated as a regular Indian patent application and examined under the Patents Act, 1970, as amended. The recent amendment also requires the request for examination to be made within the 31 months period.
Some tips and tricks to efficient filing of a national phase application in India
Filing a national phase application in India requires attention to procedural detail and the following of strict guidelines. Below are some tips to ensure a smooth and effective filing process:
1. Appoint a Registered Indian Patent Agent
- Foreign applicants must act through a registered Indian patent agent to file and prosecute the national phase application. Appointment of a proper Indian Patent Agent is the key to the success of prosecuting the national phase application in India. Filing of the application is an administrative exercise, however considerable experience is needed to navigate the prosecution stage. Engaging an experienced agent ensures compliance with procedural nuances and Indian legal interpretations, particularly during the prosecution stage while attending to responses to first examination reports and during a hearing before a Controller.
2. Timely Entry Within 31 Months
- The requirement is entering the national phase within 31 months from the earliest priority date. The tip is to plan early, have the power of attorney, the application form (Form 1), with the signatures of the inventors and the details of corresponding applications ready before filing so that the actual process is smooth and uncomplicated. It is possible to delay the filing of the power of attorney by 3 months and the details of corresponding applications and Form 1 by 6 months.
3. Ensure Proper Translation
- If the international application was not filed in English, a verified English translation of the complete specification (including claims, drawings, and abstract) must be submitted at the time of filing in India. Verification requires the local agent to sign on the translated document that it is true and correct. Errors or omissions in translation can have serious consequences, including affecting claim scope or validity.
4. Verify Inventorship and Applicant Details
- The details of inventors and applicants should be consistent with the international application and updated in case of any assignment or name change. Supporting documents such as Form 1 and Form 3 (statement of undertaking) must be filed correctly.
5. Request for Examination
- Merely filing the national phase application does not initiate examination. A Request for Examination (Form 18) must be filed within 31 months from the priority date.
6. Disclosure of Corresponding Patent Filings
- Under Section 8 of the Indian Patents Act, applicants must disclose details of corresponding applications filed in other countries and keep this information updated. Failure to comply properly can lead to objections, in refusal of the application or invalidation of the patent even it is granted.
7. Eligible Subject Matter:
- Indian law excludes certain categories from patentability such as mere discoveries, algorithms, software per se, and methods of agriculture and method of diagnosis and treatment of human and animal body. Applicants should carefully review claim language to be in line with Indian patent standards. Applicants coming via the PCT route have a limited ability to amend claims to comply with the stringent standards of the Indian Patent system. It is now possible to delete claims but not possible to amend claims at the time of national entry. Amendment is possible after entry the scope of the claims cannot be broadened.
India’s Balanced Approach: Protection and Public Interest
- India’s patent system is often described as a balanced patent system where innovation is encouraged while at the same time the public interest and accessibility to innovation is preserved. Increasingly, IP systems in the world are looking to adopt the “India model” in their patent law.
- The PCT framework, combined with India’s robust patent jurisprudence, now provides a fertile ground for both domestic innovators and international entities to seek protection for their innovations in arguably the world’s most populous and dynamic market.
- Filing a PCT national phase application in India is not just a procedural milestone it is a strategic business decision. It demands attention to timing, translation, compliance, and an appreciation of India’s rich and unique legal and cultural heritage.
