For many PCT applicants, India has risen as an important patent filing destination. In 2010, India was the fourth most popular national stage country among inovia clients, tying it with Australia, Brazil and Europe.
Our Indian associates informed us of a recent change, effective immediately, pertaining to the fees at the national filing stage. The Indian Patent Office levies an excess claims fee of 800 INR (200 INR for individuals) for each claim over 10. Previously, applicants could avoid or reduce this fee by reducing the number of claims during the national stage filing.
Under the new rules, claim fees are calculated based on the number of claims originally filed in the PCT application. However, if Article 19 or Article 34 amendments were filed during the International Phase, these would be considered to be part of the published application for fee calculations.
Furthermore, if the applicant wishes to file an amended set of claims at filing for reasons other than avoiding excess claim fees, they will need to submit a formal request for amendment along with a prescribed official fee. As such, the net result is that not only can applicants no longer save on filing costs by submitting a reduced set of claims, but that doing so will actually increase the cost of filing.
Thankfully, Indian excess claim fees haven’t reached EPO-like proportions yet.
More information
To learn more about India filing requirements and to get a quote for PCT national stage entry into India, visit our India filing guide. Alternatively, you can contact us or leave a comment below if you have any questions on the fee change.
The excess claims fee was already there, but that PCT claims will be considered for fee calculation over what claims will be provided in national phase filing seems an addition….but i still doubt if any separate provision/rule was brought into Indian patent act/procedure for such requirement of filing request for amendment with fee (new) if any claim reduction was desired, sofar whatever claims filed in national phase application were acceptable to IPO?
Correct, the excess claims fee was already in place. The change is that applicants can no longer save on the official fees when filing in India by filing a reduced claim set, and that filing amendments will actually increase the cost of filing. The official fees are based on the application as published (a similar situation to China).
If you have any questions on the change, feel free to email us at mail@inovia.com.
The charges for amendment are only Rs. 2000, so if one reduces 3 claims, he actually saves more than amendment fee.
And fee for amendment in claims can be paid later on when desired by Examiner during the course of Examination. At times in case of reduced claims Examiner dont insist on amendments as it takes place at time of filing of application in India and no new sets of claims are added
Want a Patent ? Be patient !
Newspaper Pravasi ( 26 Feb 2012 ) gives following interesting – but far more distressing – info about working of India’s Patent Office in Mumbai :
No of patent applications pending ………………………………… 100,000
Which will take to clear ………………………………………………….. 3 years
No of requests being examined / year ………………………….. 12,000
Additional Patent Examiners being trained …………………….. 250
Which will help clear no of applications / year ………………… 40,000
New requests being received / year ………………………………… 25,000 +
Annual growth-rate of requests ……………………………………… .. 20 %
I would not be surprised if Indian scientists working in foreign labs are filing more patent applications abroad than the Indian scientists working in Indian labs !
Innovation will get a huge boost if Patents can be granted – or even rejected – in 6 months !
With regards
hemen parekh
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