When it comes to prosecution of trademark, design or patent applications, there are a lot of things that are common to all countries. However, each country has its own peculiarities and most often, its mind blogging for attorneys who are simultaneously prosecuting applications in several countries. With specific reference to patents, there are differences in deadlines, extension for these claims, voluntary amendment of claims, renewal structure and the list goes on.

There are a few questions which are frequently asked and rightly so, because India has opted for some conditions under the PCT which are slightly different from that of the other countries. I have listed out some of them that I have often come across.

What is the deadline for filing an application?

In general, the time limit to file a national phase application is 30 months. However, some countries like India have opted for the deadline to be 31 months from the earliest date of priority.

Can the deadline to file an application be extended?

Some jurisdictions allow applicant to file for an extension of time to file the national phase application, however, India is not of them. There have been two judicial precedents on this matter. The Madras High Court in a case concerning time lapse for filing the application, observed that it was incorrect on part of the Patent Office to reject an application for condoning the delay and disallowing the applicant to file the application. The Court further went on to state that such matters should be decided on the facts and circumstances of each case and an extension should be allowed if made within 1 month from the date of lapse.

The Delhi High Court judgment subsequent to this one held a contrary view for lapse in filing the Request for Examination (RFE) due to technical issues in the docketing system. In this case, the applicant tried to amend the date of priority to extend the deadline to file RFE but were unsuccessful in their attempts to do so. The Delhi HC upheld the decision of the Patent Office stating that amendments cannot be made to an application that doesn’t exist.

Based on the law and practice in India, the 31 month deadline to file the national phase application and 48 month deadline to file RFE are non-extendable.

Can claims be amended at the time of filing? 

The Patent Office in a notification dated July 2, 2012 provided a few clarifications and one of the most pertinent ones was that they would access information directly from the International Bureau. To quote directly from the notification,

The documents filed by the Applicant should exactly correspond with the up-todate information available on the record of IB on the date of filing of the PCT National Phase Application in India.

Accordingly, any amendments to a patent application can be made only subsequent to filing the national phase application. In effect, an Applicant is allowed to amend the application however that it possible only after filing the application as it has been published by the IB.

What does the official fee comprise of?

The official fee is limited to 30 pages of specifications (this includes the drawings, sequence listing, specifications and the abstract) and 10 claims. Any additional page or claim will be charged separately. This would mean that applicants who are looking to cut costs by amending the claims or specifications won’t be allowed to do so and may incur additional costs at a later stage (the IPO will require that the official fee be paid for the original claims/specs) if they amend the application at the time of filing. Additionally, they may be required to condone the irregularity, which would again mean additional costs.

This article has been authored by Nikita, an IP Law practitioner.