Filing a PCT National Phase patent application in India

The PCT national phase patent application has to be filed in India within thirty-one months from the priority date pursuant to rule 20 (3) and (4)(i) of the Indian Patents Rules 2003. The complete specification of the PCT national phase patent application has to be filed in the English language since the official language of the Indian patent office is English and Hindi. In case, PCT patent application (also referred to as an international patent application) were either not filed or has not been published in English, then the Applicant has to file a translation of the PCT patent application in English with Indian Patent Office at the time of filing the PCT national phase patent application. In accordance with rule 20 (5) of the Indian Patents Rules 2003, the translation of the international patent application while filing the PCT national phase patent application in India includes the following documents:

1. Description of a PCT specification, 2. Claims as filed, 3. Text matter of the drawings, 4. Abstract, 5. Amended claims together with any statement filed under the PCT Article 19, and 6. Any amendments to the description, the claims, and text matter of the drawings under the PCT Article 34 that are annexed to the international preliminary examination report.

Timeline to file a translation of the international patent application 

In pursuant to rule 20 (3) and (4)(i) of the Indian Patents Rules 2003, the English translation of the documents mentioned above has to be filed within thirty-one months from the priority date of the PCT national phase patent application. The English translation of the PCT Article 19 and Article 34 amendments can be submitted after an invitation from the Indian patent office to do so, within a time limit fixed by the patent office. If the applicant fails to file a translation of the amended claims and annexures of the PCT Article 19 and Article 34 amendments within the prescribed time limit of the invitation, the amended claims and annexures shall be disregarded in the course of further processing the PCT national phase patent application.

Translation of Priority document

Where priority document of the international patent application is not in the English language, an English translation thereof has to be submitted while filing a PCT national phase patent application in India as per rule 21 (2) of the Indian Patents Rules, 2003 within thirty-one months from the priority date of the PCT patent application. If the Applicant does not file the translation of the priority document with the Indian patent office within the stipulated time limit, the Indian Patent office shall invite the Applicant to file the priority document or the translation thereof within three months from the date of such invitation in accordance with rule 21(3) of the Indian Patents Rules, 2003. In case, the Applicant fails to file the translation of the priority document within three months from the date of the invitation, the priority of the PCT national phase patent application shall be disregarded for the purposes of the Indian Patent Act.

Verification Certificate of translation

Mere submission of a translation of the international patent application in English does not fulfill the translation requirements of the Indian Patent Acts and Rules. Rule 20(3)(b) of the Indian Patents Rules, 2003 clearly states that the translation of the application in English has to be duly verified by the applicant or the person duly authorized by the Applicant that the contents thereof are correct and complete. The Verification certificate of translation executed by the applicant or the person duly authorized by the Applicant has to be submitted along with the translation in order to complete the translation requirement of the Indian Patents Act. The sample certificate of translation as given below has to be submitted to the Indian patent office to meet the patent translation requirements.

--------------------------------------------------------------------------------------------------------------------------------

Certificate of translation

I ______________________ (Name of the Applicant/Translator) of ___________________ (Address of the Applicant/Translator), hereby declare that I am conversant with the ______ and English languages and that the following is a true and correct translation to the best of my knowledge of international patent application No./Priority patent application No._____

Signature of the Applicant/Translator:_________________ 

Date: _________________ 

--------------------------------------------------------------------------------------------------------------------------------

Condonation of delays in filing a translation

The time limits to submit the translation of the international patent application as prescribed in the Indian Patent Acts and Rules are non-extendable. However, the Indian Patent Acts and Rules have provisions, which offer a remedy to seek condonation of delay. The Hon’ble Controller of the Indian Patent Office will condone the delay if the Applicant files a petition as prescribed under rule 137 of Indian Patents Rules, 2003. Although the Indian Patents Acts, 1970 and Rules, 2003 provide provisions to correct the irregularity, it is advisable to follow the timelines as prescribed in the Acts and Rules without delays to avoid the additional cost and adverse effects in the future course of proceedings. 

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.