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Patent application in India

Ordinary Patent filing in India:Ordinary patent application can be filed in India along with a provisional or complete specification. It is further distinguishable from other patents that it does not claim any priority from any other application. Specification is a technical disclosure statement that enables a person ordinarily skilled in the art to perform the invention. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. Provisional application has to be followed by a complete specification within 12 months.

The basic mandatory requirements for filing an ordinary patent application in India are as follows:

1.     Name, address, particulars and nationality of applicant/s for patent

2.     Name, address and nationality of inventor/s of patent

3.     Provisional specification or complete specification with description, claims, abstract, drawings

Other filing requirements for Ordinary Patents India:

1.     Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification.

2.     Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application.

3.     Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.

Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.

 

Conventional Patent filing in India:Convention Patent Application in India claims priority from a convention application and has to be filed in India within 12 months from date of priority and accompanied by a complete specification. The basic mandatory requirements are same as for ordinary patent application in India except that here complete specification needs to be filed.

 

Other requirements for filing Conventional Patent Applications in India:

1.     Declaration as to inventorship within 1 month of filing application

2.     Certified copy of priority document, within 3 months from date of requisition by Controller

3.     English translation of Complete Specification, Priority document along with verification in support within 3 months from date of requisition by the Controller

4.     Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.

5.     Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.

6.     Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.

PCT National Phase Patent filing in India:PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within 31 months from date of priority and accompanied by a complete specification in English. The English translation of the priority documents (if filed in language other than English) should be filed within 31 months from the date of earliest priority or within 3 months of requisition made by the Controller. Where PCT/IB/304 is not issued by WIPO, certified copy of the priority documents should be filed within 31 months from the date of earliest priority.

 

The basic mandatory requirements for filing a PCT National Phase Patent Application in India are as follows:

1.     PCT Application no. & International filing date

2.     Earliest Priority date

3.     Title of the invention

4.     English Translation of PCT Complete specification with claims, abstract and drawings in English or English translation

Other requirements for filing PCT National phase Patents in India:

1.     Declaration as to inventorship within 1 month of filing application

2.     Certified copy of priority document where PCT/IB/304 not issued by WIPO within 31 months from date of priority

3.     English translation of Complete Specification, Priority document along with verification in support within 31 months from date of priority or within 3 months of requisition made by the Controller.

4.     Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.

5.     Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.

6.     Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.

Provisional Specification: While filing ordinary application in India it is advisable to file provisional specification to claim priority as to the content/disclosure, as the drafting to completer specification in a particular format along with claims may take time. There is no specific format for provisional specification and it can be filed without any claims. Within 12 months of filing of provisional specification, the complete specification has to be filed or within such extended time as may be allowed on specific request to Controller.

 

Complete Specification: Unlike provisional specification complete specification must be filed in a particular format along with claims. The conventional and PCT national phase application has to be filed with the complete specification.

 

Divisional Patent: Where the patent disclosure contains more than one invention, it is possible to file a divisional application in respect of distinct invention lacking unity. The divisional Application can either be filed at direction of the Controller of Patent or voluntarily.

 

Divisional Patent: Where the patent disclosure relates to any development/ modification of the same invention earlier filed by the Applicant. It is possible to file a Patent of Addition. No annuity fee is payable after a Patent has been declared as Patent of addition and it terms coincides with the term of original Patent.

 

Categories of Applicant in India:There are 4 categories of Applicant in India

(1) Natural Person/s;

(2) Start up

(3) Small Entity and

(4) Other Entity.

 

All non-natural person fall under either other entity by default. To claim “start up” status a certificate from DIPP is required and the start up status is valid for 5 years only. However to claim small entity Form 28 along with evidence in support of small entity status has to be filed. In case of Indian Applicants, such document is Registration certificate under Small Scale Industries. While for applicants based in other countries they need to submit document that verifies or establishes that Applicant's whose investment in plants/ machines in case indulged in manufacturing/ production of goods is less than 10 crores and in case indulged in service industry the investment in equipment is less than 5 crores. It is to be noted that while calculating investment in plants and machinery, the cost of pollution control, research and development, industrial safety devices, and such other things specified under THE MICRO, SMALL AND MEDIUM ENTERPRISES DEVELOPMENT ACT, 2006 is to be excluded. Foreign entity could file a duly notarised affidavit to that effect to claim small entity status.

 

Discount in Official Fee: India allows discount in official fee to natural person, start up as well as small entity. When the patent application is assigned to non-natural person (small entity, start up or other than small entity), the entire discounted fee has to be paid at the time of registration of assignment. 

 

Patent Prosecution in India includes the following stages:

1.     Filing of patent application

2.     Publication of patent application on request or after 18 months from date of filing or priority whichever earlier

3.     Filing of request for Examination within 48 months from date of application or priority whichever is earlier

4.     Issuance if First Examination Report containing all the objections to grant of patent for complying within 6 months from date of issuance of same

5.     Responding to the examination report and compliance

6.     Issuance of further Examination report/s till all objections are complied as per satisfaction of the Examiner

7.     Responding to further Examination reports till all objections are complied or objections are contested.

8.     Interviewing the Examiner

9.     Hearing with Controller, if requested within prescribed time and objections are contested

10.   Acceptance of patent application on or before final date of acceptance i.e. 6 months from date of issuance of first examination report or within further extended time frame of 3 months

11.   Grant of Letter Patent Document by Patent office within 7 days of acceptance of application

Publication: The Patent applications in India are ordinarily published after 18 months from date of filing or priority whichever earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by Controller of Patents or Central Government. From the date of publication the applicant for patent has same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication of application subject to Indian Limitation Act.

Pre- Grant Opposition: From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application provided a request for examination has been filed. Thereupon, the patent shall not be granted until the opposition is set aside.

 

Examination:For substantive examination of the patent application in India a request for examination has to be filed within 48 months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction whichever is later. In case of divisional applications the request has to be made within periods stated above or within 6 months from date of filing of divisional application whichever is later.

Now-onwards the Examination report shall be issued by email in respect of application having the email address in address of service furnished along with Application form. The complete specification shall not be forwarded along with the application, but in exceptional cases, the pages where some amendment or correction is required, only those pages of the specification would be send by email. Where no email id is provided, the examination report etc. shall be dispatched by post.

 

It is possible to expedite examination of Patent Application in India where either applicant is a “start up” or in case of PCT national phase India was chosen as ISA or IPEA.

 

Patent Grant:Once the applicant satisfies all the objections of the Examiner and complies with all the requirements under the Indian Patents Act and the Patents Rules, the Patent Office issues an intimation regarding acceptance of application and within 7 days of acceptance of the application the Letters Patent Documents is issued to the applicant. Now onwards the Grant certificate is issued vide email.

 

Post Grant Opposition:In India patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.

 

Duration of Patent and Renewal:Duration of Patent in India is 20 years from date of filing in India for ordinary as well as conventional patent applications and for PCT national phase patent applications 20 years from date of filing of International PCT application. After grant of patent renewal fee has to be paid in respect of 3rd year onwards till the 20th year and must be paid before the expiration of respective years. The Pending Annuity as on date of Grant shall be paid within 3 months from the date of Grant. The patent shall be revoked if renewal fee is not paid in prescribed time and during the period between the revocation of patent till it is restored, the patentee cannot take any action against any infringement of patent by anyone.