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  • Application Stages and Timelines
  • Information and Documents Required for Filing
  • Fee
  • Amendments
  • Post-grant Requirements
  • Foreign Filing License
  • Prosecution and Opposition of Application
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  • 1. What are the various stages involved in the grant of an Indian patent?
     
    1. Filing:
      • This stage includes filing the application at the Indian Patent Office and complying with all the formal requirements.
    2. Filing a Request for Examination:
      • A request for examination is required to be filed by the applicant so that the application is taken up for examination. The request may be filed at the time of filing of the application or subsequently within 48 months from the earliest priority date. If the request for examination is not filed within said time limit, the application is irrevocably terminated.
    3. Publication:
      • After the application has been filed, the application is published by the Indian Patent Office for public inspection in an official journal.
      • Upon the publication of the application, the applicant has like privileges and rights as if the invention has been granted a patent on the date of the publication. Damages can be claimed from the date of publication of application in India. However, the applicant can file an infringement suit only after the grant of the patent.
      • Any person can file a pre-grant opposition at the Indian Patent Office in order to challenge the grant of the application, any time after the publication of the application but before the grant of the patent.
    4. Examination:
      • An application is taken up for examination, only after it has been published and a request for examination has been filed.
      • Additionally, in case of a national phase application the application will be taken up for examination only after the expiry of 31 months’ period from the priority date.
      • Once examination begins, the Controller issues a First Examination Report (FER), a response to which is required to be submitted within 6 months from the date of issuance of FER. An extension of 3 months is available to submit the response. Failure to submit the response within said time limit shall result in abandonment of the application.
      • The Indian Patent Office typically offers a hearing to the applicant after the response to the FER has been filed, to address any pending objections. It is therefore advisable to file the response to the FER at the earliest so as to leave sufficient time for such a hearing.
      • Once all objections have been addressed, the application is placed in order for grant.
    5. Grant:
      • If all objections have been addressed, the application proceeds to grant within a couple of months of the hearing mentioned above.
      • After the patent has been granted, the patentee is required to pay a renewal fee every year to keep the patent in force. This renewal fee is applicable from the third year onwards. However, the renewal fee is payable only after the grant of the patent.
  • 2. What are various timelines involved in the grant of an Indian Patent?
     

    The timelines associated with the stages mentioned above and the actions involved therein have been summarized below:

    1. Filing:
      • The timeline for different types of applications are as follows:

        For National Phase application:

        Within 31 months of the priority date

        For convention application:

        Within 12 months of the priority date

        For a divisional application:

        Any time before the grant of parent application

        For a patent of addition:

        Any time before or after the grant of parent application

        For a Complete Specification after Provisional Specification:

        12 months from the date of filing of the Provisional Specification.

    2. Request for Examination:

      • A request for examination may be filed at the time of filing the application. Alternatively, the request may be deferred to anytime within 48 months of the earliest priority date.
    3. Publication of application by the Indian Patent Office:

      • Every patent application is published on or after 18 months from the earliest priority date.

    4. First Examination Report (FER) by the Indian Patent Office:

      • The date of issuance of the FER depends on the date on which the request for examination is filed. The earlier the request for examination is filed, the earlier the FER may be expected.

    5. Response to the FER by the applicant:

      • The applicant is allowed 6 months from the date of issuance of FER to respond to the objections raised in the FER.

      • An extension of a maximum of 3 months is available upon payment of prescribed fee. Such a request for extension of time however must be filed prior to the expiry of the 6 months’ period.

    6. Grant:

      • If all objections have been met, then the application proceeds to grant within a couple of months of the hearing mentioned above.

    7. Payment of renewal fee:

      • Upon grant of the patent, accumulated renewal fee for the third year onwards is required to be paid within 3 months of date of grant.

      • An extension of 6 months is available upon payment of prescribed fee, for payment of accumulated renewal fee.

      • Thereafter, every year renewal fee falls due on the anniversary of the filing date of the application.

  • 3. Is there any extension available for filing a national phase/ convention application beyond 31 months’/ 12 months’ time limit respectively?
     

    No extensions are available for filing a national phase application or a convention application beyond the 31 months’ and 12 months’ time period respectively.

  • 4. Can an un-published PCT application be entered in India?
     

    Yes, it is possible to file the national phase of an unpublished application in India.

  • 5. Can the publication of an application be expedited in India?
     

    Yes, a request for early publication can be filed at the Indian Patent Office. Request for early publication enables publication of the patent application before the 18 months’ period from the priority date. Once a request for publication is filed, the Indian Patent Office ordinarily publishes the application within 1 month from the date of request.

  • 6. Can the examination of an application be expedited in India?
     

    Yes, it is possible to expedite the examination of an Indian patent application. Following two provisions are available. This provision is available to a patent applicant only if one or more of the following conditions are met:

    • The patent applicant is a start-up, or was a start-up at the time of filing the patent application; or
    • The patent applicant chose India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

    It is to be noted that a limited number of requests for expedited examination requests may be entertained every year. This number will be intimated at the start of the year and once the limit is exhausted, no more requests for expedited examination may be entertained. It is thus recommended that in case the patent applicant wishes to file a request for expedited examination, the request should be filed at the starting of the year.

    For the applications in which a normal request for examination has already been filed, if the applicant meets one of the conditions mentioned above, the applicant may convert the normal request for examination to an expedited request for examination by paying the prescribed fee.

  • 7. Can a foreign entity be considered as a start-up for filing the request for expedited examination?
     

    The Patent Rules define “Start-up” as an entity that satisfies the following criteria:

    • has not been registered or incorporated for more than 5 years;
    • has a turnover for any of the financial years of not more than Rs. 25 crores (approx 4.2 million US Dollars); and
    • is working towards innovation, development of products and services driven by technology or intellectual property.

    ‘Entity’ means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002. 8

    Any entity that is formed by splitting up or reconstruction of a business already in existence will not be considered as a start-up.

    ‘Turnover’ means the aggregate value of the realisation of amount made from the sale, supply or distribution of goods or on account of services rendered, or both, by the company during a financial year.

    Although no clarity has been provided by the Indian Patent Office as to whether or not a non-Indian company can be considered as a start-up, it appears from the definition of start-up provided in the Patent Rules that a non-Indian company may not be considered as a start-up.

  • 8. Is it possible to initiate examination of a national phase application before the expiry of 31 months’ period?
     

    Yes, an express request for examination may be filed so that the Indian Patent Office takes up the national phase application for examination without waiting for the expiry of 31 months’ period. This request must be filed within 31 months from the priority date.

  • 9. What steps can be taken to expedite the grant of a patent application?
     

    Following steps can be taken to expedite the grant of an application:

    1. File a request for examination at the time of filing of application.
    2. File a request for publication of application in case the 18 months’ period from priority date has not lapsed, as an application will be taken up for examination only after it has been published.
    3. In case of a national phase application, an express request for examination may be filed so that the Indian Patent Office may process the application before the expiry of 31 months from the priority date.
    4. In case the applicant meets any of the criterion for filing a request for expedited examination, the applicant may file a request for expedited examination.
    5. File a response to the FER at the earliest.
    6. The applicant may choose to voluntarily amend the claims (before receiving the FER) on the basis of the claims granted in the corresponding foreign patent applications. However, doing so is not advisable in all the cases as this may also result in adding unnecessary limitations to the claims.
  • 10. Can an application be withdrawn? If yes, what steps will be required to be taken to withdraw an application?
     

    Yes, it is possible to withdraw a patent application. An application may be withdrawn by taking one or more of the following steps:

    1. by filing a request at the Indian Patent Office any time before the grant of the patent. If the applicant intends to also prevent the publication of the application, the request for withdrawal must be filed three months prior to the 18 months’ period from the priority date;
    2. by not filing the request for examination; and
    3. by not filing a response to the first examination report.
  • 1. Who can file a patent application in India?
     

    A patent application can be filed by one or more of the following:

    1. true and first inventor,
    2. assignee of the inventor, or
    3. legal representative (in case of a deceased inventor)
  • 2. What are the minimum documents/information required for filing a national phase/ convention application in India?
     

    The minimum documents and information which are required for filing a national phase or a convention application have been summarized in the table below:

    S. No.

    Document/ Information

    Stage of Submission

    Extensions

    1.

    Complete specification

    (in English)

    Along with the application

    No extensions are available for filing the complete specification at a later date

    2.

    Drawing(s)

    Along with the application

    No extensions are available for filing the drawings at a later date

    3.

    Name, address and nationality of inventors’

    Along with the application

    No; although inventor(s) may be added/ removed subsequently by filing a request

    4.

    Name, address and nationality of applicant(s)

    Along with the application

    No; although applicant(s) may be added/ amended subsequently by filing a request

    5.

    Power of Attorney

    (To be filed in case the application is filed by a patent agent)

    Within 3 months of the application date

    Yes, an extension may be obtained by a filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit.

    6.

    Assignment Deed/ Form 1 endorsed by the inventor(s) (To be filed if the inventors are not the applicants)

    Within 6 months of the application date

    Yes, an extension may be obtained by a filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit.

    7.

    Details of corresponding applications filed in other countries (Information & undertaking under Section 8)

    Within 6 months of the application date

    Yes, an extension may be obtained by a filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit,

    8.

    Verified English translation of the Priority application (required for both national phase as well as convention applications)

    Within 3 months of request by the Controller

    No extensions are available

    9.

    Verified English translation of the PCT application (required only for national phase applications)

    Agent can verify the English translation of PCT application on behalf of the applicant.

    Within 31 months of priority date

    No extensions are available

    10.

    Certified copy of the Priority application

    (required usually for convention applications, but may also be requested for national phase application in case the priority document was not submitted with the International Bureau)

    Within 3 months of request by Controller

    No extensions are available

  • 3. What are the other documents which may be required when filing a national phase or a convention application?
     

    Other documents which may be required when filing a national phase or a convention application have be

    S. No.

    Document/ Information

    Stage of Submission

    Extensions

    1.

    Sequence listing in computer readable text format (if any)

    (no print form is required to be submitted)

    Along with the application

    No extensions are available

    2.

    Permission from National Biodiversity Authority (in case any Biological material used in the invention is from India)

    Permission must be requested for before applying for the patent

    The permission may be submitted after filing but before grant.

    3.

    Microorganisms must be deposited with International Depository Authority (In case microorganisms are used that are not available to public and cannot be appropriately described)

    Before filing of the application

    The accession number (identification number) may be included in the specification within 3 months from the date of filing of the application. In case a request for publication is filed, then accession number must be included before filing of such a request for publication.

  • 4. Which information and documents are required to be submitted under Section 8 of the Patents Act?
     

    Section 8 of the Patents Act together with Rule 12 of the Patents Rules requires the applicant to furnish the details of corresponding foreign applications at the Indian Patent Office. Under this requirement, two types of information are required to be submitted at the Indian Patent Office, as stated below:

    i. Information under Section 8 (1):

    Section 8 (1) of the Patents Act requires an applicant to voluntarily submit the details of all the corresponding foreign applications at the Indian Patent Office and keep the Indian Patent Office informed from time to time of the updated status of these applications. The required details include name of country, application number, filing date, status and patent number and date of grant, if available. This information is required in respect of all applications for the same or substantially the same invention as that of the Indian Application and includes divisional/CIP applications. 12

    Briefly, the obligation to file details under Section 8 (1) can be divided into three stages-

    1. Submission of details of corresponding foreign applications filed on or before the filing date in India: As per Rule 12, the period within which the applicant is required to file this information is six months from the date of filing the application in India.

    2. Submission of details of corresponding foreign applications filed after filing the application in India: The period within which the applicant shall keep the Controller informed of the details of such applications is six months from the date of such filing.

    3. Updating the status of all the corresponding foreign applications

    Under Section 8(1), it is pertinent to highlight that the Patents Act prescribes the time limit only for submitting the details of corresponding foreign applications at the Indian Patent Office. While the Patents Act does require the applicant to keep the Controller informed of updated status of all the corresponding applications from “time to time” till grant, it does not prescribe a time limit for the same. The Act accordingly requires the applicant to inform the Controller as and when there is any change in the status / details of the corresponding foreign application(s) but does not require him to update the details of corresponding foreign applications every six months.

    ii. Information under Section 8(2):

    If requested by the Controller, details of prosecution of a corresponding application in a foreign country may have to be provided. Such a request is generally made in the examination report. When requested by the Controller, this information must be submitted within six months of date of request.

    Briefly, the requirement under Section 8 (2) can be met by submitting:

    1. examination reports (both adverse and favourable);

    2. any claim amendments made, and

    3. claims as allowed/ granted in corresponding foreign applications if available.

    Where these documents are not in English, appropriate translation should also be filed.

  • 5. What are the consequences of failure in submitting information/ document required under Section 8?
     

    Failure to submit information regarding corresponding foreign applications and details of processing when requested is a ground for both pre- grant and post-grant opposition proceedings before the Indian Patent Office and revocation proceeding before the Courts and the Intellectual Property Appellate Board.

  • 6. How can an applicant comply with the requirement of submitting assignment deed/ form 1 if the inventors are not available to sign the same due to change in employment/ death?
     

    In case of unavailability of inventor(s) for signing the assignment deed/ form 1, one of the following documents may be submitted to comply with the requirement:

    1. Notarized/ certified copy of an existing assignment submitted in the priority application/ corresponding application. Also, such existing assignment deed must indicate that the inventor(s) have assigned their rights worldwide.

    2. Notarized/ certified copy of the employment agreement executed by the inventor with the applicant wherein the inventor would have transferred all the rights arising in an invention to the applicant.

    3. A copy of Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent submitted in the PCT application in accordance with Rule 4.17(ii) of the PCT Regulations.

  • 7. Is it mandatory to record an assignment deed at the Indian Patent Office in case an application/ patent is assigned at a later stage?
     

    It is mandatory to record any partial/ complete transfer in ownership of an application/ patent at the Indian Patent Office.

    If an assignment is not recorded at the Indian Patent Office, the Patent Office or the Court may not admit the same to be a proof of ownership at a later stage.

  • 8. Is it mandatory to record license at the Indian Patent Office in case a patent is licensed?
     

    Yes, it is mandatory to record any license awarded in any patent, at the Indian Patent Office.

    If a license is not recorded at the Indian Patent Office, the Patent Office or the Court may not admit the same to be a proof of share/ interest in the patent, at a later stage.

  • 1. Can an applicant claim a reduction in official fee?
     

    Yes, the applicant can claim a reduction in official fee if at least one of the following conditions is satisfied:

    1. The applicant is one or more natural person(s);

    2. The applicant is a start up;or

    3. The applicant is a small entity

    However, such a reduction in fee will not be available if an eligible applicant jointly files a patent application with an applicant which is “other than small entity”. “Other than small entity” herein refers to a company/ organization which does not fall under the category of a start-up or a small entity.

  • 2. What is a start-up according to the Patents Act?
     

    Patent Rules define “Start-up” as an entity that satisfies the following criteria:

    • Has not been registered or incorporated for more than 5 years;
    • Has a turnover for any of the financial years of not more than Rs. 25 crores (approx 4.2 million US Dollars); and
    • Is working towards innovation, development of products and services driven by technology or intellectual property.

     

    ‘Entity’ means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

    Any entity that is formed by splitting up or reconstruction of a business already in existence will not be considered as a start-up.

    ‘Turnover’ means the aggregate value of the realisation of amount made from the sale, supply or distribution of goods or on account of services rendered, or both, by the company during a financial year.

  • 3. Can a non-Indian company be considered as a start-up?
     

    Although no clarity has been provided by the Indian Patent Office as to whether a non-Indian company can be considered as a start-up, it appears from the definition of start-up provided in the amended Patent Rules that a non-Indian company may not be considered as a start-up.

  • 4. What are the documents required for claiming fee reduction applicable for a start-up?
     

    Any document evidencing the above stated criteria can be submitted to claim the fee reduction. Typically, such a document is:

    • incorporation certificate
    • CA statement, etc.
  • 5. Who is a small entity according to the Patents Act?
     

    The Patents Act defines “Small Entity” as a company/ firm which has:

    • an investment of less than INR 100 million (approximately USD 1.6 million) in plant and machinery when engaged in manufacture of goods; or
    • an investment of less than INR 50 million (approximately USD 0.8 million) in equipment when engaged in providing services.
  • 6. Can a non-Indian company be considered as a small entity?
     

    Yes, if a non-Indian company/ organization meets afore-said criterion, the same may be considered as a small entity.

  • 7. What are the documents required for claiming a small entity status?
     

    Clear documentary evidence such as annual report, accountant certificate is required to be submitted for claiming a small entity status. This document is required to filed at the time of filing of the application or at the time of submission of any document which is accompanied by official fee.

  • 8. Can the fee reduction be claimed if an application, originally filed by a natural person, is subsequently transferred to a small entity or other than small entity respectively?
     

    No, the fee shall be paid in accordance with the entity status of the new assignee. Additionally, difference in official fee chargeable from the new assignee and that charged from the natural person must be paid for all the official fee paid at the Indian Patent Office till the date of transfer of application or patent.

    Same conditions would be applicable if an application/ patent is transferred from a small entity to an assignee which is other than small entity, or from a start up to a small entity or other than small entity.

  • 9. Is it possible to obtain a refund of examination fee, if an applicant withdraws a patent application before examination?
     

    Prior to The Patent Rules, 2003 as amended by (Amendment) Rules, 2016, it was not possible to obtain a refund of examination fee paid at the Indian Patent Office, irrespective of whether or not the examination has taken place. However, under the amended Rules, an applicant can claim a refund of upto 90% of examination fee, if the applicant withdraws the application before the issuance of the First Examination Report. Also, there is no fee for withdrawing the application.

  • 1. What are the permissible amendments under the Patents Act?
     

    The amendment of the following documents and information is considered permissible under the Patents Act:

    Document/ information which could be amended

    When

    Comments

    Name, address of applicant/inventor,

    • Anytime during the pendency of application;
    • after grant

    A documentary evidence will be required to change/ correct the name/ address of the inventor(s)/ applicant(s)

    Complete Specification including claims, description

    • Anytime during the pendency of application;
    • To overcome Controller’s objections;
    • after grant;
    • in an invalidation proceeding

    Post–grant amendments will be published.

    priority date of a claim

    • Anytime during the pendency of application;
    • To overcome Controller’s objections;
    • after grant;
    • in an invalidation proceeding

    Post–grant amendments will be published

    Filing date

    • Any time after filing the application, but before the grant of the patent.

    This section may also be invoked in case the Controller requires that amendments be made to the specification and if such amendments cannot be allowed without post-dating the application to a later date.

    Any document for the amendment of which no special provision is made in the Patents Act

    • Anytime during the pendency of application;
    • after grant

    The amendment of such document must not cause detriment to the interests of any person. Also, the

    Controller may direct terms as he thinks fit.

  • 2. Which claim amendments may be considered allowable by the Indian Patent Office?
     

    Only those claim amendments which fall in either of the category stated below, are considered allowable:

    1. Correction: If the amendment is made in order to correct a mistake made during preparation of the specification and not an error of judgement.
    2. Explanation: If the amendment is made to clarify the invention. This however should not result in addition of new matter or alteration of the scope of claims.
    3. Disclaimer: If the amendment is made to limit the scope of the invention or remove doubts.
  • 3. Can the applicant delete the claims at the time of national phase entry?
     

    Yes, the applicant can delete the claims at the time of national phase entry.

    Prior to The Patent Rules, 2003 as amended by (Amendment)Rules, 2016, it was required that the claim fee shall be paid in accordance with the number of claims in the PCT application. Further, the deletion of claims was permitted only by filing a separate request for amendment along with applicable official fee. Said provision has now been revoked. The applicant can now delete claims without paying said claim fee.

  • 1. What are the immediate steps required to be taken once a patent has been granted?
     

    After the grant of the patent, the patentee is required to pay the renewal fee accumulated third year onwards till the date of grant of the patent. This accumulated renewal fee must be paid within three months of date of grant of the patent. Extension of six months is also available for payment of accumulated renewal fee.

  • 2. Is there requirement of paying a separate sealing fee/issue fee in India?
     

    There is no requirement of paying any separate sealing fee/issue fee, other than renewal fees which becomes due upon grant of the patent.

  • 3. When is renewal fee payable in India?
     

    The renewal fee becomes due on the anniversary of the patent’s filing date. The patentee may pay the renewal fee every year or may pay renewal fee for 2 or more years in advance.

  • 4. Are there any post-grant requirements which are to be fulfilled by the patentee?
     

    Other than renewal fees, the patentee is required to furnish a “Statement of Working” every year till the expiry of the patent. This requirement may be met by the patentee or the licensee of the patentee. This statement is required to be submitted in respect of every calendar year, by 31st of March of the subsequent year. Failure to submit this information may result in penalty including a heavy fine which may extend up to USD 20,000.

  • 5. What information is required to be furnished in the “Statement of Working”?
     

    The patentee is required to furnish the following information in the “Statement of Working”:

    • Whether or not the invention has been worked on a commercial scale in India.
    • If worked, the quantum and value of the patented product in India.
    • If not worked, reasons for not working the patented product in India.
    • The licenses and sub-licenses granted during the year.
  • 6. Can a patent be restored if it has expired due to non- payment of renewal fee?
     

    In case a patent expires due to non-payment of renewal fee, the patentee may file a request for restoration of the patent. The request for restoration must be filed within 18 months of expiry of the patent. Also, the patentee will be required to demonstrate that the failure in payment of renewal fee was unintentional and the request for restoration has been filed without any undue delay. The Controller, if satisfied, may allow the request for restoration. Also, the Controller may impose certain conditions on the restored patent in order to safeguard the interest of those who would have started working the invention owing to the lapse of the patent.

  • 1. Under what circumstances, would a patent applicant be required to seek a permission from the Indian Patent Office (commonly referred to as “foreign filing license”) for filing an application outside India?
     

    A request for foreign filing license has to be filed by the inventor(s) of the claimed invention. An inventor(s) would be required to seek a foreign filing license if he/she qualifies as a “person resident in India” while developing the invention, and the if the patent applicant/ inventor(s):

    1. intends to file a first patent application outside India; or
    2. has filed a first application in India and intends to file a patent application outside India before the expiry of six weeks from the date of filing of the Indian patent application; or
    3. has filed a first application in India, and the Controller has issued directions in the application stating that the application is relevant for defense purposes and that the application shall not be published.
  • 2. Can a patent applicant obtain the foreign filing license after filing the application outside India?
     

    No, the foreign filing license must be obtained before filing the application outside India.

  • 3. Would a foreign filing license be required even in case all inventors are not residents of India?
     

    Yes, the foreign filing license must be obtained even if a single inventor resides in India.

  • 4. Who is considered as a “resident in India” for the purposes of obtaining a foreign filing license?
     

    Foreign Filing License

    An individual is said to be a resident in India in any previous year (April 1- March 31), if he—

    • is in India in that year for a period amounting in all to one hundred and eighty-two days or more; or
    • is in India for a period of at least 60 days during the relevant year and at least 365 days during the four years preceding that previous year.

    In other words, if the person is eligible to pay taxes for the previous financial year, then he is a “person resident in India’ for that previous financial year.

    Even if a person resides in India for more than one hundred and eighty-two days during the course of the preceding financial year, he may not be considered a person resident in India if he satisfies one of the conditions below:

    (A) A person who has gone out of India or who stays outside India, in either case –

    • for or on taking up employment outside India, or
    • for carrying on outside India a business or vocation outside India, or
    • for any other purpose, in such circumstances as would indicate his intention to stay outside India for an uncertain period.

    Even if a person resides in India for less than one hundred and eighty-two days during the course of the preceding financial year, he may be considered a person resident in India if he satisfies one of the conditions below: 20

    (B) a person who has come to India or who stays in India, in either case,–

    • for or on taking up employment in India, or
    • for carrying on in India a business or vocation in India, or
    • for any other purpose, in such circumstances as would indicate his intention to stay in India for an uncertain period.
  • 5. What documents and information would be required to obtain the foreign filing license?
     

    Following documents and information are required for obtaining the foreign filing license:

    1. Power of Authority from the inventor(s) residing in India
    2. A brief write-up of the invention
    3. In case inventors who are not residing in India are also part of the invention, their details including name and address
    4. In case the inventor has assigned the invention, details of the assignee including name, address
    5. The countries in which the inventor(s)/assignee intends to file the application
  • 1. Is it possible to conduct a telephonic hearing with the Controller?
     

    Yes, it is possible to have a telephonic hearing with the Controller. However, it is subject to discretion of the Controller.

    Also, the provision of video conferencing with the Controller has recently been introduced. This is expected to nullify the requirement of visiting the Indian Patent Office and enable conducting hearings with the Controller over video conference

  • 2. Can a Controller’s decision refusing the grant of a patent passed in respect of an application be appealed/ challenged?
     

    Yes, it is possible to appeal/ challenge a Controller’s decision refusing the grant of a patent. In this regard, following options are available to the applicant:

    1. The applicant may make an application to the Controller for the review of his decision. This application must be made within one month from the date of communication of the decision to the applicant.
    2. The applicant may make an appeal at the Intellectual Property Appellate Board (IPAB). This appeal must be made within three months from the date of decision.
  • 3. Can a patent application/ patent be challenged by a third party?
     

    Yes, a patent application/ patent may be challenged by a third party. The provisions available for challenging a patent application/ patent have been summarized in the table below:

    No.

    Type of challenge

    Where

    When

    By whom

    1.

    Pre-grant Representation

    Indian Patent Office

    Any time during pendency of application after publication

    Any person

    2.

    Post-grant Opposition

    Indian Patent Office

    Within one year of date of publication of grant of patent

    Any person interested

    3.

    Revocation proceedings

    Intellectual Property Appellate Board(IPAB)

    Any time after the grant of the patent

    Any person interested

    Note: Section 2(1)(t) of the Patents Act defines “person interested” as including a person engaged in, or in promoting, research in the same filed as that to which the invention relates