When in India, do what Indian Patent Offices (IPOs) do - Inohelp explores the necessity of amending PCT national phase or convention applications according to practices at IPO

Last year, close to 25,000 patent applications were filed in the Indian Patent Office by foreign applicants. Most of these applications either came through the Patent Cooperation Treaty (PCT) route, or came through the Paris convention route.

These PCT national phase or convention applications are usually forwarded by foreign patent attorneys to their Indian associate, which may be a patent filing and prosecuting firm, a law firm or an individual patent agent. The Indian associate prepares prescribed forms, and files the application along with prescribed fees at the Indian Patent Office (IPO).

A key aspect that may be involved in filing a PCT national phase or a convention application is modification or amendment of the parent application according to the best practices followed at the IPO. The parent application is usually drafted by a foreign attorney, who drafts the parent application according to the requirements and best practices accepted at the receiving patent office.

Accordingly, it becomes a strict duty of the Indian associate to amend the parent application according to the best practices of the IPO, which significantly differ from say practices at United States Patent and Trademark Office (USPTO).

At Inohelp, we conducted a study to determine a set of best practices followed at the IPO. For this, we analyzed the prosecution history of close to 50 granted patents to identify the set of best practices, and tried to determine examiner objections, which could have been easily avoided by making minor or appropriate amendments at the time of filing the PCT national phase or convention patent application.  Table 1 classifies practices in 3 categories related to sections of a complete patent specification: Description, Claims, Figures, and a category: Filing Formalities.

 The study concluded that if these minor and appropriate amendments are made to the PCT national phase or convention patent applications at the filing stage itself, a lot of examination time could be saved, leading to better and timely grants of the patents.

Unfortunately, the practice of modifying or amending the patent application according to the best practices is not religiously adopted by attorneys in India. The attorneys only amend sections, such as figures, or abstract, and refrain from amending claims and description section. The main reasons for such non-amendment may be inhibition on the part of an attorney to approach clients and suggest voluntary amendments. Moreover, such amendments may additionally involve efforts and separate formalities in terms of preparing additional forms, which attorneys may try to avoid. Therefore, attorneys may resort to a well accepted practice of filing the application as it is, allowing the patent office to raise the objections in the FER, and traversing the objections later. This wasteful effort may be avoided by adopting the patent application according to the best practices, some of which are as cited above, leading to speedy grant of a patent.

We at Inohelp, follow a strict practice of reviewing all national phase or convention patent applications, and suggesting our clients possible amendments in the complete specification before filing the application at the IPO. The acceptance of these amendments is on the discretion of the client, who we find seldom disagrees with the suggestions.

Inohelp Consulting Solutions Pvt. Ltd.

www.inohelp.com