Amendments at Indian National Phase: In Harmony with PCT Standards?

Abstract

The Patent Cooperation Treaty (PCT) under Article 28 / Rule 52 or Article 41 / Rule 78 guarantees the applicant the right to amend claims, description and drawings before each designated/elected office, on national phase entry or at least one month thereafter, further to the amendments submitted during the International phase of the application. The Indian Patent Office (IPO) however refuses to allow amendments while entering the national phase,1 except for deletion2 of one or more claims under Rule 20(1)3 of the Patent Rules 2003. The Patent Offices of other PCT signatories like the European Patent Office(EPO), the US Patent and Trademark Office (USPTO), the Intellectual Property Office of Singapore (IPOS)4, the Chinese Patent Office (CNIPA) and the Brazilian Patent and Trademark Office (INPI)allow this amendment under Article 28/Article 41 PCT. The IPO accepts all other types of amendments such as merging of two or more claims, alteration of the claim language, etc. only during the national phase proceedings. These amendments can be made either through a request for voluntary amendments in Form 13 along with payment of the associated fee, or in response to the examination report. The latter requires, the applicant to wait until the examination report is communicated. In this article, we are attempting to analyze whether India is in line with the above mentioned provisions of PCT in respect of providing the applicants an opportunity to amend the claims further from that on file in the international phase, at the time of filing the national phase application.