What are the types of patent applications that can be filed in India?

• Ordinary Application: First filed application in India. It could be a provisional application followed by a complete specification within 12 months of filing of the provisional application. Otherwise, directly a complete specification may be filed.
• Convention Application: It is an application under Paris Convention taking priority of a patent application filed in a foreign country and filed within twelve months of the said foreign application.
• PCT National Phase Application: A national phase application in India can be filed within 31 months of the priority date or the international filing date, whichever is earlier.

I want to file a patent application outside India and I am an Indian resident. What are my obligations?

For invention by Indian residents, any patent application can be first filed outside India:

• If a foreign filing permission is obtained from the Patent Office under Section 39, or
• after expiry of six weeks from filing of a patent application for the invention before the Indian Patent Office.

Who can apply for patent in India?

• Natural person(s) and/or Startup
• Small entity, alone or with natural person(s) and/or Startup
• Large Entity, alone or with natural person(s) and/ or Startup and/or small entity

The patent application may be filed by the patent applicant himself or by duly authorized Registered Patent agent.

What “Startup” can claim IP benefits provided by Patent Office?

As per the Patents Rules, “Startup” means
(a) an entity in India recognised as a startup by the competent authority under Startup India initiative.
(b) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/registration as per Startup India Initiative and submitting declaration to that effect.
An Indian Startup must obtain registration as startup from DIPP by following the procedure prescribed under the Startup India campaign.

What all do I need to file while submitting a patent application?

• Provisional/Complete specification in English, claims (if applicable) and drawings. In case of PCT National phase application, verified English translation of the PCT application is required if the PCT International application is not in English. The application being filed must be same as that filed/amended before the WIPO. The Patent Amendment Rules, 2016 allow for deletion of claims from the PCT International application while entering the Indian national phase.
• Power of Authority, if application is being filed through Patent Agent. Power can be filed within three months of filing the application
• Proof of right to make the application in India, if inventors are not the applicant for patent application. Proof of Right is to be filed within six months of filing the application.
• In case of PCT National phase applications, copy of PCT/IB/304 or priority document and verified English translation thereof, if applicable.
• Declaration of inventorship.
• Details of all foreign applications filed for same or substantially the same invention, under Section 8(1) of the Patents Act
• Official fee

What is Publication of patent application?

A patent application is published under section 11A of the Patents Act after 18 months from the priority date or the filing date. Also, there is a provision for early publication upon request being made under Section 11A(2).

What is Request for Examination?

An application would not be considered for examination if a request for examination is not filed within the prescribed period of 48 months from priority date or filing date of the application, whichever is earlier. If the request is not filed, the application is considered as deemed to be withdrawn.

Is any expedited examination process available?

Rule 24C of the Patents Rules provide for filing a request for expedited examination for the following categories of applicant(s):

• Who have filed a PCT application and selected India as the competent International Searching Authority or International Preliminary Authority;
• A Startup
• If all applicants are natural persons and at least one of the applicants is a female
• Government department or a Government company
• An institution owned or controlled by the Government or wholly or substantially financed by the Government

Under the expedited examination route, an exclusive serial order of patent applications is created, which is different from those under normal examination route, thereby resulting in a shortened processing time period. In our experience, applications have proceeded towards grant within 8-9 months of filing of the applications.

What happens under examination of application?

Patent applications are examined under section 12 of the Patents Act. The Patent Office basically checks if the claimed invention satisfies the basic criteria of novelty, inventiveness and industrial applicability. The Patent Office also checks that the claimed invention does not lie within the subject matter not considered as patentable and defined under section 3 of the Patents Act. Also, compliance of other provisions of the Patents Act is checked. A first statement of objections i.e. First Examination report (FER) is issued after complete examination.

I have received a First Examination Report, what next?

A reply to the FER is required to be filed by applicant within six months from the date of issuance of FER. This period may be further extended by a period of three months on a request for extension accompanied by prescribed fee.

What is a “Hearing”?

Before deciding adversely on any application, the Patent Office generally provides applicant with an opportunity of being heard. The outstanding objections are indicated to the applicant by way of a notice of hearing. The applicant (himself or through his agent) is required to settle all outstanding objections and file a written submission of the arguments within fifteen days of the hearing.

What entails grant of a Patent?

If all requirements stand met, the application is placed in order for grant and a Patent Certificate is issued after making all relevant entries in the Register of Patents. An annual maintenance fee accrues from third year (of filing) onwards but is payable only after grant of patent. Once a patent is granted, depending on the number of years surpassed from filing date, the Patent Office informs about the accumulated annual maintenance fees that is due and same is to be filed within the prescribed period. Thereafter, maintenance fee is due every year until completion of twenty years from filing.

What is statement of working?

The Indian patents act, under Section 146, requires details of commercial exploitation or “working” of patents to be furnished to the Controller of Patents on an annual basis. This detail is required to be furnished by the patentee and licensee of a patent, and must include information about the approximate revenue / value accrued in India pertaining to the patented product. If a patented invention has not been worked, the patentee must still submit a statement of non-working specifying the reason why the patent could not be worked in India.