Reducing excess claims during PCT national phase entry in India

Until recently it was compulsory to file a Patent Cooperation Treaty (PCT) application – including any Article 19 or Article 34 amendments – as is in India. Any amendments to the claims, including deletions, had to be made through a request for voluntary amendments, which involved additional fees. Alternatively, applicants could wait until examination to delete claims. The situation was unhelpful to both the Indian Patent Office and applicants.

Last year, the Patent Rules were amended to include several new provisions. One of the most important of these changes is set out in the substituted Rule 20(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.

Under this rule, patent applicants may delete a claim during PCT national phase entry in India. This can be useful for reducing excess claim fees – currently these are approximately $25 per claim. However, the rule change is strictly limited to claim deletions. Other types of amendment (eg, mergers of two or more claims or the alteration of the claim language) must still be supplemented by a request for voluntary amendments and the payment of an associated fee. Alternatively, applicants can choose to wait until the examination stage to make any claim amendments.

Sometimes patent applicants wish to enter the PCT national phase in India with their claims in line with claims that have been allowed or are being examined in other jurisdictions (eg, the United States or the European Union) in order to make the examination process as swift as possible. However, this may require more changes than merely deleting claims. For instance, an applicant may wish to merge one dependent claim into a corresponding independent claim and then delete the dependent claim, as well as deleting other undesirable claims. While an applicant is free to delete any undesirable claims under the latest version of the Patent Rules, merging a dependent claim into an independent one would still require a request for voluntary claim amendments and payment of the associated fee. A better option would be to delete the undesirable claims at the time of filing the application and then wait for the examination report to issue in order to merge the dependent claim with the corresponding independent claim. The applicant should retain the dependent claim at the time of filing so that it can be merged with its independent claim at a later stage without violating Section 59 of the Patents Act – this provides supplementary provisions for the amendment of patent applications. No further fee will have to be paid if claim amendments can be made part of a reply to the examination report. However, where claim amendments appear indifferent to objections raised in the examination report, the Patent Office may require the applicant to file a request for voluntary amendments along with the prescribed fee.

Additionally, it would be advisable to delete any claims directed towards non-patentable subject matter in India when filing a national phase application. Sections 3 and 4 of the Patents Act set out non-patentable subject matters in India. Since the term ‘invention’ is defined as a new product or process involving an inventive step and capable of industrial application, any claim which is directed towards neither a product nor a process (eg, a data structure or a signal) is not allowed in India. Likewise, omnibus claims and claims directed towards computer-readable medium or computer program products are not allowed in India. All such claims can therefore be deleted at the time of filing in order to avoid excess claim fees.

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