Procedure to apply for a patent for Patent Registration in India
Types of patent application
- Ordinary patent applications: Made under the provisions of Indian Patent Act. It is then accompanied with provisional or complete specification.
- Patent of addition application: Patent of addition can be filed for any kind of improvement in or modification of an invention for which a patent has already been applied under the provisions of Indian Patent Act.
- Conventional application: Applicants I the foreign countries, which are declared as conventional countries by the Indian Government, can apply for patent in India, under the reciprocating arrangement, claiming the priority date of original filing in the convention country.
- Patent Cooperation Treaty (PCT) or International Patent Application: PCT is an international treaty that provides a system for filing patent applications in multiple countries on the basis of a single patent application and allows you to obtain patents in multiple countries around the world.
- PCT National Phase Application: After international phase, the application then enters the national phase. Applicant may decide the states in which he wants to proceed further with international application.
- Divisional Application: Divisional applications are the type of patent applications which have been derived from another patent application which contain more than one invention. Applicant may cleave the main patent into more than one divisional application.
Who can apply for a patent?
A person whosoever is actual and first inventor or his assignee or legal representative is eligible to apply for a patent. Either a single person or a single person jointly with other person can protect his invention through patent rights. In accordance with the Indian Patents Act, 1970 and the amendments thereafter, the applicant of a patent application can belong to any of the following categories. The categorization below is primarily done with the invention to charge different application fee depending upon the category to which the application belongs.
- A natural person
- Persons other than natural person(s) either alone or jointly with a natural person – small entity
- Persons other than natural person(s) either alone or jointly with a natural person – others except small entity
- Startups as defined under the notification.
How to apply for a patent?
The Indian Patent Office allows for the patent application to be filed through two modes, such as
- Hard copy application format
- Online e-filing application format
The applicant of a patent application can opt to choose from any of the above two methods to file a patent application. In order to incentivize the e-filing of the patent applications, the patent office charges an additional 10% fee for applications not filed through the online mode. This not only speeds up the patent office processes but also helps get a fast and reliable priority date. Upon e-filing the date along with the exact time of the application is provided to the applicant.
Where to apply for a patent?
The patent application has to be submitted or applied according to the territorial jurisdiction where,
- Applicant or first mentioned applicant or place of business or place from which the invention actually originated.
- If an individual or an applicant has no place of business, or domicile in India, the appropriate office will be as per the address given by an applicant.
- In case the patent application is being submitted by a patent then in that case the location of the office of the patent agent becomes the deciding factor for the jurisdiction of the patent application.
On the basis of the location, one has to look for appropriate office (Indian Patent office at Mumbai, Delhi, Kolkata and Chennai) or whatsoever office is covered for his region.
Contents of a patent application
A patent application shall be filed on Form-1 along with Provisional or Complete Specification, with the prescribed fee as given in First Schedule at an appropriate office. However, a provisional specification cannot be filed in case of a Convention Application (either directly or through PCT routes). Normal fee shall be applicable for applications containing up to thirty pages in specification and up to 10 claims. If the specification exceeds thirty pages or claims are more than ten in number, additional fee as given in First Schedule is payable.
A patent application should contain,
- Application for grant of patent in Form-1.
- Applicant has to obtain a proof of right to file the application from the inventor. The proof of right is either an endorsement at the end of Application Form-1 or a separate agreement.
- Provisional or complete specification in Form-2.
- Statement and undertaking under Section 8 in Form-3, if applicable. An applicant must file Form 3 either along with the application or within 6 months from the date of application.
- Declaration as to inventor ship shall be filed in Form 5 for applications accompanying a complete specification or a Convention Application or a PCT application designating India. However, the controller may allow Form 5 to be filed within one month from the date of filing the date of filing of application, if a request is made to the controller in Form-4.
- Power of authority or power of attorney in Form-26, if filled through a Patent Agent. In case a general power of authority has already been filed in another application, a self-attested copy of the same may be filed by the agent. In case the original general power of authority has been filed in another jurisdiction, that fact may also be mentioned in the self-attested copy.
- Priority document is required in the following cases
- Convention Application (under Paris convention).
- PCT National Phase Application wherein requirements of Rule 17.1 (a or b) of regulations made under the PCT have not been fulfilled. The priority document may be filed along with the application of before the expiry of eighteen months from the date of priority, so as to enable publication of the application. In case of a request for early publication, the priority document shall be filed before or along with such request.
- Every application shall bear the signature of the applicant or authorized person or Patent agent along with name and date in the appropriate space provided in the forms.
- The Specification shall be signed by the agent or applicant with date on the last page of the specification. The drawing sheets should bear the signature of an applicant or his agent in the right hand bottom corner.
- If the application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of patent. However, it would be sufficient if the permission from shall also indicate clearly the source of geographical origin of any biological material used in the Specification, wherever applicable. In case of an application being filed offline or through physical mode, a list of documents has to be submitted during the filing of a patent application to the patent office. Online forms can be submitted at www.ipindia.nic.in using a class 3 digital signature certificate. Preparing the patent specification is the most important factor in patent filing, which can be only performed by persons who have both technical as well as patent law expertise. It is highly recommended to use patent attorney if a company or person is serious about protecting their intellectual property. Complete understanding of the Indian Patent Act is essential for filing patent application. Patent agents have the knowledge of Indian Patent Act and they are authorized by the Patent Office to file Patent applications on behalf of the applicant. The patent application has to be filed in the appropriate office based on the location of the applicant or the appropriate patent agent. Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai.
Process of grant of a patent
The process of grant of patent requires a certain set of steps to be followed as per the manual of patent office practice and procedure as drafted and published by the office of Controller General or Patents, Designs and Trademarks. The steps are as discussed under.
Step 1: Filing of patent application
The first and the foremost step is to file an application for the grant of a patent comprising of the following forms.
- Form 1: Application for grant of a patent (under Section 7, 54, 135 and Rule 20(1))
- Form 2: Provisional or complete specification (under Section 10 and Rule 13)
- Form 3: Statement and undertaking (under Section 8 & Rule 12)
- Form 5: Declaration as to inventorship (under Section 10(6) and Rule 13(6))
- Form 26: Power of attorney in original (under Section 127, 132 and Rule 135)
- Certified true copies of the priority document (if priority claimed)
- Certified copy of convention application (If required)
In case the application is not being submitted online, all the forms need to be submitted in duplicate. In case the Form 2 is being submitted along with the provisional specification, then it should briefly describe the invention and should carry a brief description of the main important features of the invention. In case the Form 2 is being submitted along with the complete specification or the complete specification is being submitted at a later stage, it should necessarily comprise of
- Field and background of invention
- Use of invention
- Prior art in the said field and the drawbacks in it
- Comparison of the prior art and present invention
- Abstract or summary of the present invention
- Statement of invention
- Brief description of the drawing accompanying the specification (if any)
- Detailed description of the invention
- Best method of working of the invention
- Claims defining the scope of protection being sought through the patent.
The submission of the application is complete upon the payment of the fee online or offline as the case may be.
Step 2: Publication
Till 18 months of date of filling the application is kept secret. In 19th month the application is published on official website on weekly basis (every Friday). From 0-18 months file is under secrecy period after that it comes under public domain. If one wants the publication before 18 months, he can file a request for early publication under the rule 24A by submitting a request along with Form 9.
Step 3: Request for Examination (RFE)
India follows a system of deferred examination, which means that an application is examined only on request, either by an applicant or by any third person. The applicant gets 48 months’ time period to file an application for examination. In case an application for request for examination is not submitted, the application is automatically abandoned. Upon receipt of request for examination the controller sends the application to the examiner within one month. The examiner looks whether invention is prohibited for grant of patent or not; and whether invention meets the criteria of patentability.
Step 4: Issue of First Examiner Report (FER)
The examiner takes a time period of 1-3 months to submit the examination report to controller. The controller further takes one month to examine the report of the examiner. The FER containing a list of objections is issued to the applicant within 6 months of date of filling a request.
Step 5: Response to the First Examiner Report (FER)
Upon receipt of the first examination report, the applicant now has 12 months’ time period to make the changes to the application as recommended in the first examination report and resubmit the same to satisfy the controller’s objections. This 12 months’ time is given to applicant to remove the anomalies and objections raised by the examiner. During this period the applicant is also provided and opportunity of being heard by the controller. A response is then submitted by the applicant to the controller. In case the controller is not satisfied, he may refuse the grant of the patent or may order the division of the patent application. From the date of issue of the first examination report comprising of the objects, the applicant gets 12 months’ time to put his application in order and put up for grant of the patent.
Step 6: Grant of patent
After the applicant submits the response to the first examination report and provided the controller is satisfied by the reply submitted, the controller under section 43 orders for the grant of the patent. In the register of patents the date of grant of patent is noted and the certificate of grant of patent bearing the official seal of the patent office and date of grant of patent is issued to the applicant.
Step 7: Maintenance and renewal of the patent
The patent is granted for a period of 20 years from the date of application and upon the expiration of two years from the date of grant of the patent, it needs to be renewed regularly to make sure that it remains in force during the period of its validity. In case the patent is not renewed then it is liable to get lapsed and the applicant cannot claim damages during the period it was not active.
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