Entering The National Phase in India From A PCT Application Must Be Only Done With The Specification
20 August 2015
In a hard hitting judgement delivered on July 30th , The Controller of Patents, at Calcutta (in Re: Ericsson) decided that entering the National Phase in India from a PCT application must be only done with the specification as finally published at WIPO during the International Phase. Amending the specification drawings or claims at the time of national entry is a “malpractice and a surreptitious action”.
RK Dewan & Co reported that in this case, at the time of National Entry, the applicant dropped 3 claims and introduced amendments in 3 claims. By dropping the 3 claims the applicant filed the application by paying less fees (i.e. no fees were paid for the dropped 3 claims). The Controller held that by this action the applicant had committed an “illegality". Also he held that the time for payment of the balance fees had lapsed and by law this amounted to not paying the fees at all. With the result that the application was deemed to not to have been filed at all at the Indian Patent Office. The end result was that in Re: Ericsson the application was deemed not to have been filed at the Patent Office and therefore resulted in complete loss of rights of the applicant.
Applicant seeking to enter the National Phase and their representatives are cautioned that the Indian Patent System follows the rule that at the time of National Phase Entry, strictly the specification as last published at the WIPO website by the Intellectual Bureau (IB) will be allowed for national entry and not following this rule will be fatal to the applicant’s rights and result in total loss of rights.
Any amendment in claims or specifications or drawings must be carried out only after National Phase Entry by making a formal request on Form 13.
