PCT National Entry – A View from Indian Prosecutions

Ashima: Sir! A PCT national phase application requires my attention but, as usual, I have questions.

Dr. Dewan: Please ask Ashima your questions!

Ashima: What is the deadline for requesting examination for a PCT national phase application? Is the substantial review queue ordered by actual filing date or review request date?

Dr. Dewan: The time limit for filing a request for review is 48 months from the first priority date. The substantial review queue is ordered by review request date.

Ashima: How long will it take for patent applications to be published after national PCT entry?

Dr. Dewan: These days, patent applications are published a few months after national PCT filing. The requirement is that publication must take place shortly after the expiration of 18 months from the earliest priority date of the application.

Ashima: What is the deadline for responding to OA/appealing a rejection decision?

Dr Dewan: The time limit for responding to an action of the office or a decision of rejection is normally 6 months which can be extended for a maximum period of 3 additional months, but the request for extension must be filed within the time limit of 6 months.

The time limit for appealing against a rejection decision is 3 months from the date of the rejection.

Ashima: How many sets of office shares are issued on average before the end of the exam? for example, will probably be rejected if the response to the first OA does not convince the examiner?

Dr. Dewan: There are usually 2 rounds on average before the end of the exam, followed by an audition which can be completed with an extended audition.

Ashima: What are the reasons for rejection frequently presented in an FER or an Office Action?

Dr. Dewan: Lack of novelty, lack of inventive step, lack of clarity, lack of finality, non-compliance with formal requirements, subject matter not an invention.

Ashima: What kind of reasoning do you recommend in response to Inventive Step’s rejections? EP style, US style, JP style, CN style or other suggestions?

Dr. Dewan: EP-style reasoning is usually helpful. However, this needs to be complemented by local practice and case law.

Ashima: How does the examiner handle if there is more than one group of inventions (unity issue) in the claims, for example group A claimed before group B?

Dr. Dewan: The Monitor will ask to split the claims into Group A or Group B claims.

Ashima: Is an interview with an examiner normal or rare in Indian practice, especially before hearing the opinion? Is the examiner hosting an interview, formal or informal? What is the scheduled maintenance procedure?

Dr. Dewan: There is no provision for a formal interview, but some controllers accept an informal interview over the phone to resolve certain complaints or formalities issues.

Ashima: What is the average time between entering the country and the date of sending the first examination report? What is the average time between entry into the national market and the date of grant/rejection of the patent application?

Dr. Dewan: The average period from entry into the country is about 18 months. The average time between entry into the national market and the date of grant/rejection of the patent application is 3 years.

Ashima: If the claims are changed to resemble the scope of claims allowed in other PTOs (e.g. EPO, USPTO or JPO), will that help speed up the examination, or the examiner likes it does he, or does the Examiner usually invite the Applicant to do so in the OA?

Dr. Dewan: Yes. If the claims are amended to be similar in scope to the claims permitted in other PTOs, particularly the EP, this will help expedite examination. The Controller will not invite the applicant to do so, the applicant must anticipate this and do it himself.

Ashima: Is there an allocation notice issued in India? How long to pay the registration fee?

Dr. Dewan: No notice of allocation is issued and there is no registration fee.

Ashima: After the rejection of a patent application, what is the time limit for appeal (review)? Is the appeal (examination) by counsel or by examiners?

Dr. Dewan: After a patent application has been rejected, the time limit for filing an appeal is 3 months and the appeal must be filed in the High Court having jurisdiction over the Patent Office. A review must be filed within 2 months, but it will be submitted to the same reviewer who rejected the application in the first place.

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