Friday, July 6, 2012

Guest Post: PCT National Phase Applications – No Amendments at the time of filing at IPO

A well-wisher from a prominent IP law firm has written the following guest post on the recently issued Circular by the IPO on July 2, 2012 with respect to National Phase PCT Applications. Below is the guest post:

The new Controller General of Patents, Mr. Chaitanya Prasad has issued a Circular with regard to the handling of PCT National Phase applications entering India. The Circular dated July 2, 2012 can be accessed here.

According to the instructions contained therein, the Indian National Phase application PCT application needs to be identical with the published PCT application. The premise given in this regard is that IPO wants to simplify the filing procedure.

The above guidelines have in any way been included in the said Circular as a clarification to the earlier guidelines in the Patent Manual of the IPO which states:

  • For the National Phase Application, the title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification [Section10(4A)].
  • The applicant may make a request to the Controller for amendment of the complete specification which was filed with the National Phase Application, as a separate request in Form-13, along with the application.
To clarify the last point, the present Circular says that “It is clarified that the IPO does not allow an applicant to amend the specification or the related documents before he actually enters National Phase in India.

Putting two and two together, what this means is that no amendments can be carried out in the National Phase application, not withstanding any unpatentable subject matter or any noticeable error which would otherwise need a correction, at the time of entering India. Ditto in cases where there is a change in ownership and PCT/IB/306 has not yet been issued.

However, if the applicant wishes to carry out any amendments, he can do so only by way of filing a Form 13/Form 6 along with the necessary fees (even along with the application). Needless to say, the guidelines simply reek of intent to increase Form 13/Form 6 filings and in turn the revenue for the IPO.

In the past, an applicant would simply enter India with an amended set of claims deleting claims which are otherwise unpatentable, thus saving considerable costs. Moreover, if some error had occurred in the published PCT application, they would file the corrected application in India again to save duplicity of efforts and costs.

What is more disturbing is that in light of the new instructions, the applicants will have to pay for claims which may be prima facie unpatentable in India only to have them removed at the time of prosecution. In majority of pharma and biotech cases as well as some software based inventions, the applicant may wish to delete certain claims at the time of filing itself, knowing well the prohibitions under section 3.

The new circular prohibits any such activity and puts the applicants in a double jeopardy – one, they have to pay up for claims containing subject matter otherwise unpatentable in India, and two – those claims will eventually have to be deleted during prosecution.