Indian Practice Note - Claim Fees at National Phase Entry

(22 November 2011)

 

The recently released Manual of Patent Practice and Procedure (the Manual) of the Indian Patent Office (IPO) stipulates that an Indian national phase application must be filed with the same claims as the PCT application as originally filed or as amended under Art 19 or Art 34 of the PCT.

The Manual states that "the fee payable in respect of a National Phase Application is calculated as per the number of pages and claims as they stand in the PCT Application on the date of filing in India". Section 138(4) read with Rule 7(2)(c) mandates that the applicant shall pay the whole fee along with the application, based on such PCT International Application.

Thus, it should be noted that while the Indian national phase application can be amended at the time of filing to reduce the number of claims, there is no saving in terms of the claim fees and the full number of claim fees on file in the international phase are payable to the IPO. Furthermore, we have observed that payment of claim fees is in practice being applied retrospectively, in that the IPO is now requesting the balance of the claim fees for national phase applications which were previously filed with a reduced number of claims.

Note: Applicants who want to reduce the claim fees payable when entering national phase in India should file a reduced claim set during the international phase.

 

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