India: Entering India National Phase With Lesser Claims –A Step Ahead By IPO

Last Updated: 2 September 2016
Article by Suchi Rai Singh

Most Read Contributor in India, September 2016

Patent Amendment Rules 2016 as published on 16 May 2016 by the Government of India, Ministry of Commerce and Industry {Department of Industrial Policy and Promotion} has brought many positive changes in the procedure for Patent Grant in India. The amended Rules make an effort to restructure the patent procedures with an important objective of reducing the pendency time and providing other benefits to the applicants.

There are many important amendments including but not limited to:

  • Reduction in time period for filing response to FER
  • Remote Hearing, Restriction on adjournments
  • Claim deletion at National Phase Entry
  • No extension of 31 months for National Phase Entry
  • Sequence Listing Maximum Official fees
  • Refund of Examination Request Fee
  • Expedited Examination
  • Electronic Submission mandatory for Agents
  • New Entity: "Start-up"

In this article we will be discussing the importance of amendment with regards to Claim deletion at National Phase entry. As per the amendment rules, an applicant can now directly delete claims while entering national phase in India without filing amendment application and without paying excess claims fees. As per the meaning of amended rule, it does not suggest any other form of amendment in claims except for deletion.

Earlier an applicant entering India National Phase had to pay excess claim fees while filing application and then file amendment application to delete the claims, thereby unnecessarily paying the excess claim fee for filing the claims which the applicant intends to delete in national phase application.

Before the Patent Amendment Rules 2016 were notified, the Indian National Phase application was required to be filed as it is as filed in the PCT International Phase application. The problem with such a practice was that, in India there is an official fee for claims in excess of 10 and each claim above 10 and each page above 30 charged an official fees. When a PCT International Application was filed with many claims and applicant intends to file a National Phase in India, then applicant had to pay official fees for all claims in excess of 10. Even when the applicant intended to reduce the number of claims while entering India National Phase, he had to first file the application as it is filed in International Phase with excess claim fees and then submit amendment application to delete the claims in national phase.

However with the new amendment rules, applicant can now delete the claims while entering national phase and is now not required to pay official fees for claims the applicant is not intending to keep in the national phase patent application. It is also to be noted that new rules only allow the deletion of claims while entering national phase and it does not allow any amendment or addition to claims directly.

Below are the Patent Amendment Rules 2016 in this regards:

In the principal rules, for rule 14, the following rule shall be substituted, namely:-

14. Amendments to Specifications .-

  1. When amendments are made to a provisional or complete specification or any drawing accompanying it, the pages incorporating such amendments shall be retyped and submitted to form a continuous document.
  2. A marked copy clearly identifying the amendments carried out and a statement clearly indicating the portion (page number and line number) of the specification or drawing being amended along with the reason shall also be filed.
  3. Amendments shall not be made by slips pasted on, or as footnotes or by writing in the margin of any of the said documents.
  4. When a retyped page or pages incorporating amendments are submitted, the corresponding earlier page shall be deemed to have been superseded and cancelled by the applicant.

In the principal rules, in rule 20, for sub-rule (1), the following sub-rule shall be substituted, namely:-

-1) An application corresponding to an international application filed under Patent Cooperation Treaty may be made in Form 1 under sub-section (1A) of section 7.

Explanation.- For the purpose of this rule, "an application corresponding to an international application means an international application as filed under Patent Cooperation Treaty which includes any amendments made by the applicant under Article 19 and communicated to Designated Office under Article 20 or any amendment made under sub-clause (b) of clause (2) of Article 34 of the Treaty:

Provided that the applicant, while filing such application corresponding to an international application designating India, may delete a claim, in accordance with the provisions contained in rule 14.

Earlier to this, there was provision to accept the amendments as filed in International Phase Application, meaning thereby if the desired amendments in claims including addition and deletion are already filed with International Application, then the same amendments were accepted at India National Phase and there was no need to file amendment application in India and applicant could proceed directly with filing amended application. The said provision from Patents Act, 1970 is produced below for ready reference.

Section 138 (6) of Patents Act, 1970

Supplementary provisions as to convention applications .—

Amendment, if any, proposed by the applicant for an international application designating India or designating and electing India before international searching authority or preliminary examination authority shall, if the applicant so desires, be taken as an amendment made before the patent office.

In this regards, with the patentability reports of International Application like Written Opinion and International Preliminary Report on Patentability, applicant gets the idea with regards to amending the Patent Application specifically Claims, as the report provide the idea of three specific features for Patent Grant i.e. Novelty, Inventive Step and Industrial application. With these reports an applicant can either amend the application in International Phase itself which is acceptable at Indian Patent Office for filing of direct amended application, or the applicant can chose to amend the application in National Phase. In this respect, in India applicant had to first pay excess claim fee for entering national phase and then file amendment application to delete the claims based on the previous International Patentability reports.

With the recent amendment, it will remove the financial burden of paying official fee for claims which the applicant is desirous of deleting in National Phase. It is a wise and much appreciated amendment rule, which will benefit all the applicants entering National Phase in India. This was especially annoying when an applicant had more than 20 extra claims to be deleted and more than one patent application to be filed. The same was an unnecessary financial burden as well for the applicant.

In a past decision by Hon'ble Smt. Justice Prabha Sridevan (Chairman) and Hon'ble Shri D.P.S. Parmar (Technical Member, Patents) via order OA/60/2012/PT/ DEL1 dated 23rd January 2013, it was suggested to the patent office to implement a revised numbering scheme for applications. This decision was issued to direct the patent office to accept a national phase application filed with less than prescribed fee. Where an applicant filed a PCT International application with 20 claims, entry at the national stage was made by deleting three claims and the applicant seeked to submit the application submitting fees for 17 claims only. The application was duly filed within the 31 months time period. However, the controller returned the application on the ground that the fee was insufficient. The application was rejected on the ground of less fees being submitted with

The aggrieved applicant then approached IPAB. IPAB in this matter directed the Controller to take the application on record, since rejecting the application on this ground was not acceptable specially when the applicant was not given chance to rectify the mistake and pay the appropriate fee as applicable according to the Patent Rules at that time. Moreover the rejection was beyond the 31 months time period and applicant could not rectify the miscalculation error in fee.

Under section 138 (4) of the Patents Act, 1970, a PCT application designating India has the effect of filing an application for patent under section 7, 54 and 134 and the title, description, claims, abstract and drawings, if any, filed at the international application stage are to be taken as complete specification for the purposes of the Act. Section 139 provides that all the provisions of Act apply to a convention application.

Further allowing the appeal from the applicant, it was directed to the Patent Office to accept a national phase application filed with less than the prescribed fees and suggesting the patent office to implement a revised numbering scheme for applications. Accordingly, there would be 2 stages which if followed properly then the situations which arose in the said case, proceeding further would be easy. The first step being where the application is merely received and a provisional No. is given and the second, when the application is taken on record and an application number is given as per the provisions stated in Rule 11.

It was then directed to delete the 3 claims and proceed with the application, as Controller was directed to take the application on record. It was made clear that no amendments are permitted in the claims and only deletion was allowed.

Conclusion: Till yet patent office was receiving extra fee from applicants in respect of claims they intended to reduce in national phase than at the International filing stage. The applicants had to pay this fee, even when there was no examination of the cancelled or deleted claims.

As regards the case discussed here and the recent amendment in Patent Rules, it will now be easier for applicants to calculate the applicable fee and also they will not be getting annoyed with unnecessary procedure of first filing complete claims and then filing amendment application in India to delete the claims they do not want to get examined in India. This will also remove the financial burden of paying unnecessary official fee.


1 MANU/IC/0007/2013

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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