Patent Registration Process in India

12th August, 2014 - 7:18 am Categories: India IP Practice in India News & Updates Patents 0 Comments

With a significantly increasing number of Individual Inventors and Small/Medium Sized Clients regularly asking on Patent Registration Process in India, this article is an effort by our Intern, Ananya Singh, to come up with a quick article on Patent Registration Process in India. We hope that a link to the article can give desired clarity on the procedure.

A patent is an exclusive right granted by a Government for a limited period of time within a particular territory to an inventor or assignee to exclude others from making, using, offering to sell, selling, or importing an invention, in exchange for detailed public disclosure of an invention. An invention is said to be patentable if it satisfies the following three criteria:

• Novelty: The invention has to be new and cannot be part of the “prior state of art”. This prior art refers to everything that has been published, presented or disclosed to the public (example on a website, newspaper or in any research article), as on the date of filing for the patent.
• Inventiveness (Non-obviousness): An Inventive step means a feature of an invention that involves technical advancement as compared to the existing knowledge and that makes the invention not obvious to a person skilled in the art.

An invention cannot be considered to have an inventive step if a non-inventive mind would have thought of the invention by combining the teachings of different documents that are available to the public.

• Utility/Industrial Application: An invention must be capable of being produced or used in some kind of industry. It has to take the form of device or apparatus, a product such as some new material or an industrial process. An invention is certified for patentability, if it:
  • Can be manufactured
  • Can be used in at least one field of activity
  • Can be reproduced with the same features/ properties as many times as necessary

TYPES OF PATENT APPLICATIONS 

1. Provisional Application

Provisional Application is a temporary application filed with a Patent      Office to claim a “Priority Date” and when an invention is not complete in all aspects. This application is extremely helpful since it is relatively inexpensive to prepare and file, enables the inventor to study the feasibility of the invention in terms of potential markets, distributors, licensees. However the complete application needs to be filed within 12 months or else it will be treated as abandoned.

2. Complete Application

  A patent application containing the complete specification and claims of the invention is called a complete application and this can be filed directly if the invention is complete in all aspects.

3. Convention Application

When an applicant files the application for a patent, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within twelve months from the date of first filing of a similar application in the convention country.  

4. Patent Cooperation Treaty (PCT) – International Application

  It is an international agreement for filing patent applications having effect in up to 138 countries. PCT does not provide grant of an international patent, the treaty:

• Simplifies and delays the process and expenses of filing patent applications if one wishes to file in multiple countries.

• Also the applicant needs to file just a single application with one receiving patent office in order to simultaneously seek a patent in multiple (up to 138 countries) across the globe.

The application is to be filed in English language within 12 months from the date of filing in India.

5. PCT-National Phase Application

An international application made according to the Patent Cooperation Treaty (PCT) being the first application, can enter the national phase in India within 31 months from the international filing date or priority date (whichever is earlier). This application filed before the Controller in the Indian Patent Office claiming the priority and international filing date is called PCT National Phase application. The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty.

FILING

A patent application shall be filed on Form-1 along with Provisional/ Complete Specification, with the prescribed fee as given in First Schedule at an appropriate Patent office in India in accordance with the jurisdiction. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority by the applicant. The provisional application must be followed by a complete application otherwise the application gets abandoned.   Patent (Amendment) Rules 2014 has introduced a new category of applicant as “small entity”. Small entity, for Indian applicant, is defined as an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under Micro, Small and Medium Enterprise Development Act, 2006. A new Form 28 has been introduced which needs to be filed by a small entity applicant and must be accompanied by proof of registration under The Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006). The prescribed fees under different heads are given below:

(a) E-filing

(b) Physical Filing  

Documents can be e-filed through the online portal of the patent office or manually in the patent office having jurisdiction selected from Kolkata (head office), Delhi, Mumbai, or Chennai. More information for filing online application is available on the website of Patent Office i.e. www.ipindia.nic.in

PUBLICATION

A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application(whichever is earlier) containing title, abstract, application no, and name of applicant and inventor. The Patent office Journal is freely available on patent office site i.e. www.ipindia.nic.in.   There is also a provision for early publication of an Indian patent application by filing a formal request. The prescribed fees for early publication are as follows:      

(a) E-filing

 (b) Physical Filing

Pre- Grant OPPOSITION

The Pre-Grant opposition can be filed by any person contesting the matter disclosed in the patent application. There is no fees applicable for filing pre-grant opposition.

EXAMINATION

The Process of examination starts with filing a request for examination. The request for examination has to be made within 48 months from the date of priority or filing whichever is earlier. Once the request is filed, the Patent Office will issue the First Examination Report (FER). The Applicant must respond to the objections (if any) raised by the Examiner and place the application in order for grant within 12 months from the date of issue of the FER. The prescribed fees under different heads are given below:  

(a) E-filing

(b) Physical Filing

Post-Grant Opposition

Post grant opposition may be filed at any time after the grant of patent within one year from the date of publication of the patent. Under this provision any person having any interest in the related field. The post grant opposition has to be filed in the prescribed form 7 along with prescribed fees of Rs. 2400 for natural person, Rs.6000 for small entity and 12,000 for large entity.

(a) E-filing

(b) Physical Filing

GRANT

The order of grant is given if all the requirements of the Patent Act are complied. Term of every patent in India is 20 years from the date of first filing of patent application (it can be either from date of filling or priority date, whichever is earlier). However, in case of PCT National phase applications, the term of 20 years begins from International filing date.

RENEWAL

After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee.  The renewal fee is payable from 3^rd year onwards.  In case the renewal fee is not paid the patent will be cease.