Do you need more information?
Fill out the details below and we shall get in touch with you at the earliest.
A detailed overview of the various application stages and timelines involved in obtaining a patent in India, right from documents, post grant requirements to also the possible prosecution and oppositions. This also has the India Patent Fee Calculator.
Fill out the details below and we shall get in touch with you at the earliest.
Overview of process and time required for registering a patent in India
An Indian patent application goes through the following stages, till grant:
– This stage includes filing the application at the Indian Patent Office and complying with all the formal requirements.
– 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.
– 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.
– 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.
– 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.
An application for a patent goes through various steps before it is granted, as listed in answer to 1. (link to question above for process). On an average it currently takes between 4 to 6 years from filing an application in India to getting a patent in India.
– The last date for filing an application in India depends on the type of application, 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
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.
Every patent application is published on or after 18 months from the earliest priority date.
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.
A response to examination report must be filed within 6 months from the date of issuance of the examination report.
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.
If all the objections have been addressed, then the application proceeds to grant within a couple of months. If all or some objections remain pending, a second examination report or hearing notice may be issued.
A patent is granted after examination of the patent application by the patent office and after considering any oppositions to the patent application.
No extensions are available for filing a national phase application or a convention application after the 31 months’ and 12 months’ time period respectively.
Yes, it is possible to enter the national phase of an un-published application 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.
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:
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.
A foreign entity shall be considered as a Start-up if it is incorporated or registered for not more than seven years, (for entities in the biotechnology sector not more than ten years), and has an annual turnover not exceeding INR 25 crore (approx. 4 million USD) in any preceding financial year.
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.
One or more of the following steps can be taken by the applicant to expedite the grant of 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:
Documents and details required for filing a Patent in India
A patent application can be filed by one or more of the following:
The documents and information which are required for filing a national phase or a convention application are summarized in the table below:
|S. No.||Document/ Information||When is it required||Can it be submitted later?|
|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 applicants)||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 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 or Application Form endorsed by the inventor (if the inventors are not the applicants)||Within 6 months of the application date||Yes, an extension may be obtained by 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 and 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
(required for convention applications)
|Within 3 months of priority date||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, if requested by the Controller (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 the Controller||No extensions are available|
|11||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|
|12||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 of the patent application but before grant.|
|13||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.|
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:
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/continuation in part applications.
Briefly, the obligation to file details under Section 8 (1) can be divided into three stages-
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 but does not require him to update the details of corresponding foreign applications every six months.
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 the request.
Briefly, the requirement under Section 8 (2) can be met by submitting:
Where these documents are not in English, appropriate translation should also be filed.
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.
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:
If an application/ patent is re-assigned at a later stage, the new assignment is required to be recorded at the Indian Patent Office. 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.
If a patent is licensed, it is mandatory to record this license 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.
Fees for filing a Patent in India based on type of applicant
Following fees are payable for a patent application:
No, all extra fees including fees for extra claims, pages or priorities are required to be paid at the time of filing of the application.
Yes. The fee for Request for Examination can be paid at any time within 48 months from the earliest filing (priority date) along with such request. However, it is generally advisable to file the request for examination along with the application for faster examination of the patent application.
Yes. It is possible to reduce the fee as the same depends on the type of applicant, enlisted below:
If the application is jointly filed by different category of applicants, then the fee for the highest category is applicable. For example, if the application is jointly filed by an individual and a company then the fee payable by such a company will be applicable.
Similarly, if a “small entity” and “other than small entity” jointly file an application, the fee payable by “other than small entity” will be applicable.
Patent Rules define “Start-up” as an entity that satisfies the following criteria:
‘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.
Yes, a non-Indian or foreign company can be a start-up. A foreign entity shall be considered as a Start-up if it is incorporated or registered for not more than seven years, (for entities in the biotechnology sector not more than ten years), and has an annual turnover not exceeding INR 25 crore (approx. 4 million USD) in any preceding financial year.
Indian Companies are required to submit a certificate from Department of Industrial Policy & Promotion (DIPP) for claiming a start-up status.
Foreign companies may submit any document evidencing the above stated criteria to claim a start-up status. Typically, such a document is:
The Patents Act defines “Small Entity” as a company/ firm which has:
Yes, if a non-Indian company/ organization meets afore-said criterion, the same may be considered as a small entity.
Clear documentary evidence such as annual report, accountant certificate is required to be submitted for claiming a small entity status. This document is requiredat the time of filing of the applicationor at the time of submission of any document which is accompanied by official fee.
When an application is transferred from a natural person to a small entity or other than small entity, all the pendingfee 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.
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.
Calculate the Official fees for filing Patents in India
What amendments does the Indian Patent Act permit
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;||A documentary evidence will be required to change/ correct the name/ address of the inventor(s)/ applicant(s)|
|– After grant|
|Complete Specification including claims, description||– Anytime during the pendency of application;||Post-grant amendments will be published.|
|– To overcome Controller’s objections;|
|– After grant;|
|– In an invalidation proceeding|
|Priority date of a claim||– Anytime during the pendency of application;||Post-grant amendments will be published|
|– To overcome Controller’s objections:|
|– After grant;|
|– In an invalidation proceeding|
|Any document for the amendment of which no special provision is made in the Patents Act||– Anytime during the pendency of application;||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.|
|– After grant|
Only those claim amendments which fall in either of the category stated below, are considered allowable:
Yes, the applicant can delete the claims at the time of national phase entry.
Yes. Some claims of the PCT application may be deleted and fees for only those claims that are filed is to be paid. However, any amendment to the claims will need to be made by filing a separate request for amendment.
Requirements to be fulfilled after grant of a patent in India
After the grant of the patent, the patentee is required to pay the renewal fee accumulated from 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.
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.
There is no requirement of paying any separate sealing fee/issue fee, other than renewal fees which becomes due upon grant of the patent.
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.
The patentee is required to furnish the following information in the “Statement of Working”:
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.
Procedure for getting a foreign filing license in 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 if the patent applicant/ inventor(s):
No, the foreign filing license must be obtained before filing the application outside India.
Yes, the foreign filing license must be obtained even if a single inventor resides in India.
An individual is said to be a resident in India in any previous year (April 1 – March 31), if he—
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:
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:
Following documents and information are required for obtaining the foreign filing license:
Prosecution of a patent application before the India Patent Office
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 been introduced, though this is also subject to the Controller’s discretion.
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:
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:
|S. No.||Type of challenge||Where||When||By whom|
|1||Pre-grant Representation||Indian Patent Office||Any time during pendency of the application, and 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|
|4||Revocation proceeding in a counterclaim||High Court||After a suit for infringement has been filed||Defendant|
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 field as that to which the invention relates.
Sign up to get notified about latest articles and delivered to your inbox.