Patent Filing in India: A Guide
A patent is an exclusive right granted to the inventor of an invention to forbid others from using, making, selling, or otherwise commercially exploiting the invention. It is granted by the respective governments, for a particular span to incentivise inventors and promote creativity. To grant a patent, the government checks the following aspects-
1. Patentable subject matter- Whether the subject matter of the invention falls under the ambit of the list of non-patentable subject matter given under Sections 3 to 5 of the Patent Act (1970);
2. Novelty- Whether the invention novel;
3. Inventive step- Whether the invention is non-obvious in the respective industry, and
4. Capable of industrial application- Whether the invention is useful for people.
To obtain a patent, the inventor must file an application to the government. The filing of a patent application is also called patent prosecution. The Indian law that provides the process for filing a patent application in India is the Patents Act (1970) and is complemented by the Patent Rules (2003). This article discusses the process of patent filing in India.
Eligibility to file patent application
The persons entitled to apply for patents are explained under Section 6 of the Act. It states that the following can file an application for patenting of an invention-
1. The person who claims to be its true or first investor
2. The assignee of the person who claims to be its true or first investor
3. Legal representative of the deceased person who was entitled to apply for a patent
The aforementioned persons can file the application individually or jointly with someone else.
Types of patent applications
1. Convention application- As provided under Section 135 of the Act, it is an application wherein the date on which a basic patent application for the same invention was filed in a convention country is claimed to be the priority date of the patent in India.
2. Divisional application- As per Section 16 of the Act, it is an application filed after filing the provisional or complete specification but before obtaining the patent. It is filed as a remedy for the objection raised on the ground that the claims are similar to that of another invention.
3. International application- These are the applications filed under the Patent Cooperation Treaty (PCT).
4. Application for patent of addition- As per Section 54 of the Patents Act, it is an application filed after obtaining the patent or filing the complete specification. It is filed when the applicant or patentee seeks to improve the patent and the claims thereunder.
5. Provisional application- This kind of application is filed when an invention is in its initial stage of research and development. It is valid for 12 months, following which a complete patent application must be filed.
6. Complete application- This kind of application contains the complete specification of the invention and the claims thereunder.
Location of filing a patent application
One can file a patent application at an appropriate Indian Patent Office, which depends on the applicant’s residence, his place or the place where the invention originated. Currently, the offices are in Chennai, Mumbai, Kolkata, and New Delhi. The appropriate office cannot be changed once the application is filed.
In case the applicant has neither residence, business, etc., in India, then his agent’s place of business will decide the place of filing.
Alternatively, the application can be filed online by registering on the “E-Filing of Patent Applications” portal of the Office of Controller General of Patents, Designs & Trademarks.
Documents required for filing a patent application
The documents required for filing a patent application in India are as follows-
1. FORM 1- Application for Grant of Patent along with necessary drawing or sketches of the invention
2. FORM 2- For Provisional or Complete Specification
3. FORM 3- State and Undertaking under Section 8 (for international applications)
4. FORM 5- Declaration of Inventorship
5. FORM 9- Request for early publication
6. FORM 18- Request/Express Request for Examination of Application for Patent
7. FORM 26- Authorisation of a Patent Agent/Or any Person in a Matter or Proceeding Under The Act (in case the application is filed by an agent)
These Forms are available in the portal of the Office of Controller General of Patents, Designs & Trademarks . Along with these documents, the statutorily prescribed fees should also be paid. If priority is claimed, then a certified copy of the priority document should be also filed.
Patent application filing
The process of applying for a patent begins when the application and other documents enumerated above are filed before the Controller. The application can be filed by physically submitting the documents at any of the offices having the jurisdiction. Otherwise, it can be submitted in PDF format via the patent filing portal as well.
Publication of application
The publication of the application is done under Section 11A of the Act after it is filed. It is a step which involves the showcase of the application to the public so that anyone can raise an objection against the grant of a patent for the invention. Generally, the publication is not published before the expiry of a term specified by the Controller, which is usually 18 months from the date of filing. However, the applicant can request early publication by submitting FORM 9, in which case the publication is done within a month from the request.
Within 48 months of filing the application, the applicant must file FORM 18 (request for examination) under Section 11B of the Act to initiate the examination process. Then the Controller sends the application to the examiner under Section 12 of the Act; the examiner makes a report of the invention. He investigates whether-
1. The claim in the complete specification was anticipated by any other publication;
2. The claim in the complete specification was anticipated by any other publication after the applicant filed his application.
3. The invention has been already ascertained by a publication before the applicant filed the complete specification.
The Controller may raise objections as to the application, which the applicant must resolve within six months of the release of the examination report. If the applicant fails to do so, the Controller may reject the application.
Once the application is published and FORM 18 is filed, any public entity may raise a pre-grant objection in writing under Section 25(1) of the Patents Act. Additionally, within one year from the grant of the patent, any interested person may raise a post-grant opposition under Section 25(2) of the Act.
If objections are raised under Section 25, the Controller sets up an Opposition Board to examine the objections and the application. Then, the applicant will be given an opportunity to respond to the objections. Based on that, the Controller can order to either maintain, amend, or revoke the patent.
Grant of Patent
When the examination is finished and the objections are resolved, the Controller grants the patent under Section 43 of the Act. A patent certificate is issued in a week. The patent is also published in the patent gazette.
As per Section 53 of the Patents Act, the term of a patent is twenty years. However, it should be renewed at the end of the second year from the date of the patent grant or any succeeding year. The annual fees for multiple years can be paid in advance. All the fees payable in each step of the patent filing process are provided under the First Schedule of the Patent Rules 2003 .
Patent filing is a lengthy process and demands the expertise of a specialized patent attorney in India. Such experts have knowledge about the complexities of patent filing. They can help any applicant with preparing the application and manoeuvre through the intricacies of the process. So, it is also advised to seek the guidance of an expert patent attorney to file patent applications in India.
Author : J Jerusha Melanie, A Student at of SRM School of Law, in case of any query, contact us at Global Patent Filing or write back us via email at firstname.lastname@example.org.
1. Patent Procedure in India with steps, timeline and costs - (patentinindia.com)
2. Official website of Intellectual Property India (ipindia.gov.in)
3. 1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf (ipindia.gov.in)
4. The Patents Act, 1970, as amended by Act No. 15 of 2005 (ipindia.gov.in)