Frequently Asked Questions

Filing Patents in India

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.

Do you need more information?

Fill out the details below and we shall get in touch with you at the earliest.

1Filing a Patents in India

Filing a Patents in India

1. What are the stages of filing a patent in India?

The stages of filing a patent in India are as follows:

a) Filing a patent application in India: This stage includes filing an application for a patent in the prescribed format along with the necessary documents at the Indian Patent Office (IPO). On receipt of the application, the IPO accords a date and application number to it.

b) Publication of the application: After the application has been filed, the IPO publishes the application in the official Patent Journal making it available for public inspection. A patent application is published after 18 months from the date of filing, or date of priority, whichever is earlier.

c) Examination of the Application: The IPO examines the application only after the application is published and a request for examination is filed along with the prescribed fee. After a request for examination is filed, the application is substantively examined to ensure that all the requirements under the Patents Act, (the Act) are met. Based on the examination, the Controller issues a First Examination Report (FER).

The applicant is required to file a response to the FER within six months.

If the response or amendment filed by the applicant does not satisfy the requirements laid down by the Act, the Controller offers the applicant a hearing (if requested by the applicant) and decides the case on merits. The applicant is required to file the written submissions with any proposed amendments within fifteen days. After hearing the applicant and reviewing the written submissions, the Controller may specify or permit such amendments as they think fit and grant the patent. The Controller may refuse to grant the patent if any requirements of the Act are not complied with.

d) Grant of Patent: If all objections have been addressed, the application proceeds to be granted. A patent is normally granted within a few months of the filing of the response to the FER or the hearing if all the requirements under the Act have been met.

e) Maintenance of Patent: After the grant of the patent, the patentee must pay a renewal fee every year to keep the patent in force. This renewal fee starts from the expiration of the second year from the date of filing. However, the renewal fee is payable (along with the arrears) only after the grant of the patent.

2. When is a patent application published in India?

A patent application is published after 18 months from the date of filing, or date of priority, whichever is earlier.

3. Is it possible to expedite the publication of a patent application in India?

Yes, the publication can be expedited by filing a request for an early publication. The request will be considered if the subject matter disclosed in the patent application is not relevant for defence purposes or atomic energy. Once such a request is filed, the IPO generally publishes the application within one month of filing the request.

4. What happens after publication of a patent application in India?

Upon publication, the patent application along with the complete specification and any other documents filed in respect of the application is also made available on the IPO’s website. One may obtain certified copies of the documents from the IPO for a fee. Upon publication, any biological material submitted at the International Depository in respect of the application is also made available to the public.

After the publication of the application, the applicant enjoys the privileges and rights of a granted patent. Although the applicant can file an infringement suit only after the grant of the patent, they can claim damages from the date of publication of the application in India.

Any person can file a pre-grant representation at the IPO against the published application opposing the grant of a patent.

Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence, it is recommended that a person who is involved in the field of technology of the Patent files a pre-grant opposition.

The application can now be considered for the examination by the IPO, provided a Request for Examination has been filed.

5. Who can file a request for examination of a patent application in India?

A request for examination can be filed by the applicant or a person interested in the patent application.

6. When can a request for examination be filed in India?

A request for examination of a patent application in India may be filed any time within forty-eight months from the date of filing or the date of priority, whichever is earlier. In a case where secrecy direction has been issued under the the Act, the request for examination may be made within forty-eight months from the date of priority or from the date of filing of the patent application, or within six months from the date of revocation of the secrecy direction, whichever is later.

In the case of a national phase application, the application is taken up for examination 31 months after the priority date. However, a request for express examination may be filed to initiate the examination of such an application before 31 months along with a request for early publication.

7. Can a request for examination of a patent application in India be filed after the due date?

No, this timeline is not extendable. If the request for examination is not filed within the time limit, the application is irrevocably terminated.

8. What is the timeline for filing a response to patent examination report in India? Can this timeline be extended?

The response to an examination report in India is required to be filed within 6 months from the date of issuance of the examination report. An extension of a maximum period of 3 months is available, provided a request for extension is filed within the 6 months period. Failure to submit the response within this time limit results in abandonment of the application.

9. What is the timeline for filing written submissions after the patent examination hearing in India? Can this timeline be extended?

The written submissions are required to be filed within 15 days from the date of hearing. This timeline can be extended for 1 month by filing a request for extension before the expiry of said 15 days.

2Indian Patent Offices

Indian Patent Offices

1. How many patent offices are there in India and where are they located?

There are four patent offices in India located in Chennai, Delhi, Kolkata, and Mumbai.

2. Where can an application for a patent be filed in India?

An application for a patent can be filed before the patent office having appropriate jurisdiction, which is decided as follows:

a) The place of residence, domicile or business of the applicant (the first mentioned applicant, in case of joint applicants) or,

b) The place from where an invention actually originated or,

c) For foreign applicants: The address for service in India given by the applicant, or the address of the patent agent on record.

3. Does one get to choose the patent office for examining a patent application?

Once an application for a patent is filed, it is allocated to a patent office based on a centralized system of allocation. Therefore, it is not possible to choose a particular patent office for examination.

4. Can a patent application be transferred from one Patent Office to another?

No, once an application has been filed at a patent office, it cannot be transferred to another patent office.

5. Is it required to change the Patent Office if there is a change in address of Applicant of Agent to another jurisdiction during the pendency of the patent application?

No, it is not required to change the Patent Office if there is a change in address of Applicant of Agent to another jurisdiction during the pendency of the patent application?

3Patent Applicants in India

Patent Applicants in India

 1. Who can file a patent application in India?

A patent application can be filed by any of the following, either alone or jointly:

a) any person claiming to be the true and first inventor of the invention,

b) the assignee of the person claiming to be the true and first inventor,

c) the legal representative of any deceased person who immediately before their death was entitled to make such an application.

2. What are different categories of applicants?

The different categories of applicants are:

a) one or more natural person(s),
b) one or more start-up(s)
c) one or more small entity(ies);
d) one or more large entity(ies) or company(ies) either alone or with one or more natural person(s) or start-up(s) or small entity(ies).

Natural persons, start-ups, and small entities are eligible for a 75% reduction in the official fee.

3. What type of entity is considered a start-up in India?

a) An Indian entity is considered a start-up under the Act if it:
– is incorporated as a Private Limited Company, a Registered Partnership Firm or a Limited Liability Partnership;
– is incorporated or registered for not more than ten years;
– has a turnover under INR one hundred crores (approximately USD 14.5 million) for any of the financial years since incorporation or registration;
– is not formed by splitting up or reconstruction of a business already in existence;
– is working towards innovation, development or improvement of products or processes or services, or is a scalable business model with a high potential of employment generation or wealth creation; and
– is recognized by the Department for Promotion of Industry and Internal Trade (DPIIT) as a start-up.

b) A foreign entity is considered a start-up if it fulfils the above criteria for turnover and period of incorporation or registration.

4. What documents are required to claim start-up status in India?

a) Indian Entity: Certificate of recognition as a start-up from the Department for Promotion of Industry and Internal Trade (DPIIT);

b) Foreign Entity: The following documents are required:

– A document showing that the company is incorporated or registered for not more than ten years. (A notarized or certified copy of the incorporation certificate, in original).

– A document showing that the annual turnover did not exceed INR one hundred crores (approximately USD 14.5 million) in any preceding financial year. For example, financial documents or accountant certificate (on the letter head of the accountant who will sign the document)

– A brief write-up of the company in either word or a pdf format

– A self-declaration, that the applicant is a start-up.

5. What documents and information is required for recognition as a start-up by the DPIIT?

The following are required to register an entity as a start-up:

a) Incorporation or registration certificate

b) Details of the director(s)

c) Proof of concept like pitch deck/website link/video (in case of a validation/ early traction/scaling stage start-up) respectively. If the entity is still at the idea stage, then the proof of concept may be submitted at a later stage as well.

d) Patent and trademark details (optional)

e) Permanent Account Number (PAN)

6. What is a small entity patent applicant in India?

A small entity patent applicant in India is an entity whose investment in plant and machinery or equipment does not exceed INR 50 crores (approximately USD 6.8 million) and turnover does not exceed INR 250 crores (approximately USD 34 million).

7. What documents are required to claim small entity status in India?

a) Indian Entity: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006.

b) Foreign Entity: Any documentary evidence that shows that the company fulfils the required criteria i.e., the investment in plant and machinery or equipment by the entity does not exceed approximately USD 6.8 million and turnover does not exceed approx. USD 34 million. Examples of such documentary evidence include annual reports or accountant’s certificates. A declaration, that the applicant is a small entity may also be submitted.

4Official Fee

Official Fee

1. How is the official fee for a patent application in India calculated?

The official fee is calculated based on:
– the type of applicant,
– number of priorities (additional fee for each priority above 1),
– the total number of pages (additional fee for each age above 30) and
– the number of claims in the application (additional fee for each claim above 30)

To calculate the applicable official fee, please check the Patent Fee Calculator provided on our website www.obhanandassociates.com.

2. Can extra claim fee or extra sheet fee be paid subsequent to the filing of the patent application in India?

No, all extra fees including fees for extra claims, pages or priorities are required to be paid at the time of filing of the patent application in India.

3. Can fee for Request for Examination be paid after filing of the patent application in India?

Yes. The fee for Request for Examination can be paid at any time within 48 months from the earliest filing date (priority date). However, it is generally advisable to file the request for examination along with the application for faster examination of the patent application.

4. Are there any fee reductions for filing a patent application in India?

An applicant can claim 75% reduction in official fee if the applicant falls in any of the following category:
a) one or more natural person(s)
b) one or more a start-up(s)
c) one of more small entity(ies).

To calculate the applicable official fee, please check the Patent Fee Calculator provided on our website, www.obhanandassociates.com.

5. Can the fee reduction be claimed if an application, originally filed by one or more natural person(s) or a start-up(s) or a small entity(ies), is subsequently transferred to a large entity?
No, the fee must be paid in accordance with the entity status of the new assignee. Additionally, the difference in official fee chargeable from the new assignee and that charged earlier, if any, must also be paid.

6. Is the difference in official fee payable if the applicant ceases to be a start-up or a small entity?

Where a start-up or small entity, having filed an application for a patent, ceases to be a start-up or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.

5Various Types of Patent Applications

Various Types of Patent Applications

1. What are the different types of patent applications that may be filed at the IPO?

The various types of patent applications that may be filed at the IPO are as follows:

a) Provisional patent application application

b) Complete patent application
– Ordinary patent application
– Convention patent application
– National Phase patent application
– Divisional patent application
– Application for a patent of addition

2. What is a provisional application?
It is an optional interim patent application, which is filed with a provisional specification. The provisional specification sufficiently covers the subject matter of the invention but need not contain all the sections or portions required in a regular patent application. It is usually filed when the inventor(s) have developed the invention but are still in the process of generating extensive experimental data or additional information to support the disclosure. It is filed to establish a priority date for the invention and to show that the applicant adequately possessed the invention described in the provisional application at the date of filing of such application. It also gives the applicant sufficient time to evaluate the market potential of the disclosed invention before filing complete specification.

3. Is it required to include claims in a provisional application?
It is not required to include claims in the provisional application.

4. Does the patent office publish or examine a provisional patent application in India?
A provisional patent application in India is not published or examined.

5. What is the timeline for filing a complete application after a provisional patent application in India?
A complete patent application must be filed within 12 months of filing the provisional patent application in India.

6. Can a complete patent application in India be submitted after 12 months from the filing of the provisional application?
No, the timeline for filing a complete application after a provisional application is not extendable. If an applicant does not file non-provisional or complete application within 12 months, the provisional application is deemed abandoned.

7. Is it possible to file multiple complete patent applications based on a single provisional patent application?

Yes, a single provisional application can be a basis to file more than one complete application so long as the provisional application includes support for the said complete applications.

8. What is a complete application?

It is an application filed with a complete specification describing the invention fully and particularly including the best mode of working the invention. It can be filed directly or within 12 months of filing the provisional patent application.

9. What is a convention application?

It is an application that claims a priority date based on the same or substantially similar applications filed in one or more convention countries (parties to the Paris Convention for the Protection of Industrial Property). It must be filed within 12 months from the date of the first filing of a similar application in the convention country. For example, if an application for a patent is filed in the US, a corresponding convention application can be filed in India within 12 months of filing in the US.

10. What is a National Phase application?

It is an application arising out of a PCT application. A national phase application in India can be filed within 31 months of the filing or priority date of the PCT application, whichever is earlier.

11. What is the timeline for filing a National Phase patent application in India?

A National Phase patent application is required to be filed within 31 months from the priority date of the PCT application.

12. Can a National Phase patent application be filed in India after 31 months from the priority date?

No, the 31 month timeline is not extendable.

13. Is it possible to file a National Phase patent application in India before the publication of the corresponding PCT application?

Yes, it is possible to file a National Phase application in India even if the corresponding PCT application has not been published.

14. What is a Divisional application?

A divisional application is an application that has been divided out of a pending Indian patent application (referred to as “parent application”).

15. When can one file a divisional application?

A divisional application can be filed any time before the grant of the parent application. The grant or refusal of a patent may take place at any time after filing a response to the First Examination Report. Therefore, the divisional application should be filed as soon as possible.

16. What is the criteria for filing a divisional application?

If the claims of a patent application relate to more than one invention, then the applicant may file a divisional application either suo moto or in response to the objection raised on the ground of plurality of distinct inventions in the claims by the IPO.

If a divisional application is voluntarily filed, the Examiner will assess whether the parent application relates to plurality of inventions or not, during examination.

17. What is the term of patent granted on a divisional application?

The term of patent for a divisional application is the same as the term of the parent i.e. 20 years from the filing date or priority date of the parent application.

18. Is a separate renewal fee (other than that payable for the parent patent) payable for a patent granted on divisional patent application in India?

A divisional application is treated as a substantive application, and all the fees applicable to a regular application are payable in case of a divisional application as well.

19. What is a patent of addition?

It is an application made for an improvement or modification of an earlier invention for which the applicant has already applied for or has obtained a patent. A patent of addition is granted only after the grant of the parent patent. However, if the parent patent is revoked, the patent of addition may be converted into an independent patent, if so requested by the patentee.

20. When can one file an application for a patent of addition in India?

An application for a patent of addition can be filed at any time after the filing of the parent application. It can even be filed after the grant of the parent patent.

21. Is a separate renewal fee (other than that payable for parent application) payable for a patent of addition, upon grant?

No separate renewal fee is required to be paid for a patent of addition.

22. What is the term of patent of addition?

A patent of addition expires along with the parent application.

23. What is a PCT application?

A PCT application is an application filed under the Patent Cooperation Treaty (“PCT”). It is filed at one of the receiving offices under the said treaty. The applicant may then file a national phase application corresponding to the PCT application in any of the member states of the treaty within the prescribed time.

A PCT patent application allows the applicant to postpone the expense of filing individual national patent applications in each of the countries where protection is desired. This also provides the applicant time to assess the value of the invention and analyse the potential markets throughout the world before making more significant investments in securing patent rights in multiple jurisdictions.

India is a member of the PCT. For a full list of the PCT members, please refer to https://www.wipo.int/pct/en/pct_contracting_states.html.

6Information and Documents Required for Filing a Patent Application in India

Information and Documents Required for Filing a Patent Application in India

  1. What are the documents and information required for filing a patent application in India?

S. No. Document/ Information Timeline for Submission Extensions
a) Provisional or Complete specification

(in English or Hindi)

Along with the application No extensions available
b) Complete Specification after provisional specification

(in English or Hindi)

Within 12 months of the date of filing the provisional application No extensions available
c) Drawing(s) (if available) Along with the application No extensions available
d) Name, address, and nationality of the inventor(s) Along with the application No extensions available.  Inventor(s) may be added/ amended subsequently by filing a request
e) Name, address, and nationality of the applicant(s) Along with the application No extensions available.  Applicant(s) may be added/ amended subsequently by filing a request
f) Power of Attorney

(If the application is filed by a patent agent)

Within 3 months of the application date An extension may be obtained by filing a request for extension before the expiry of the time limit or by filing a petition for condonation of delay after the expiry of the time limit. The grant of an extension is at the discretion of the Controller.
g) Proof of Right to file the application Within 6 months of the application date An extension may be obtained by filing a request for extension before the expiry of the time limit or by filing a petition for condonation of delay after the expiry of the time limit. The grant of an extension is at the discretion of the Controller.
h) Details of corresponding applications filed in other countries (Information & undertaking under Section 8) Within 6 months of the date of filing in India, and/or within 6 months of the date of filing the corresponding application in the other country 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 the time limit. The grant of an extension is at the discretion of the Controller.
i) Verified English translation of the PCT application (required only for national phase applications)

 

The patent agent can verify the English translation of the PCT application on behalf of the applicant (upon confirmation by the Applicant).

Within 31 months of the priority date No extensions available
j) Certified copy of priority document for a National Phase application. (If not filed at the International Bureau) Within 31 months of the date of priority.

 

 

 

 

k) English translation (verified by a translator) of the non-English priority document  for the National Phase application in the following cases:

 

–          when the validity of the priority claim is necessary to determine if the invention concerned is patentable; or

 

–          when the international application filed was incomplete and the applicant claims that the missing information was fully contained in the priority document

Within 3 months from the date of communication by the IPO of  such requirement.

 

l) Certified copy of the priority document in case of convention applications

 

or

 

DAS Code

If the IPO requires, may be filed within 3 months from the date of communication by the IPO of such requirement. No extensions available
m) An English translation (verified by a translator) of the non-English priority document in case of convention application. If the IPO requires, within 3 months from the date of communication by the IPO of such requirement.
n) Proof of a Start-up or small entity status (if claimed). Along with the application No extensions available

 

2. Do we have to file the sequence listings mentioned in the patent application in India?

If the application discloses any amino acid and/or nucleic acid sequence(s), the sequence listing is required to be submitted.

3. Is there a format for submitting the sequence listings for patent application in India?

Yes, the sequence listing is required to be submitted in a computer-readable text format along with the application. It is preferred that any sequence listing in the electronic document format is created by a dedicated software such as PatentIn (WIPO STANDARD ST.25). The prescribed format for a sequence listing is as follows:

a. A nucleotide sequence to be listed with a maximum of 60 bases per line, with a space between each group of 10 bases.

b. The bases of a nucleotide sequence (including introns) to be listed in groups of 10 bases, except in the coding parts of the sequence.

c. Leftover bases, fewer than 10 in number at the end of non-coding parts of a sequence, to be grouped together and separated from adjacent groups by a space. The bases of the coding parts of a nucleotide sequence to be listed as triplets (codons).

4. Do I need to deposit the biological material mentioned in the patent application filed in India?

In case a biological material described in the specification is not available to the public and cannot be described adequately as per the provisions of the Act, such material must be deposited with the International Depository Authority (IDA) under the Budapest Treaty, on or before the date of filing of the application.

Further, a reference to such biological material must be made in the specification within three months from the date of filing. The reference must include the name, address of the depository institution and the date and number of the deposit of the material at the institution and any other available characteristics of the material required for it to be correctly identified or indicated.

If there is any request for early publication, then the said reference must be given on or before the date of filing of such request.

5. Do I need to mention the source and geographical origin of the biological material in the patent application filed in India?

The source and geographical origin of the biological material used in the invention must also be disclosed in the specification.

6. When is the approval from National Biodiversity Authority (NBA) required for filing a patent application in India?

The permission from the NBA is required if the invention as disclosed in the patent specification uses a biological material obtained from India.

7. Is there an International Depository Authority (IDA) in India?

Yes, the following two institutes in India act as IDAs:

a) Microbial Type Culture Collection and Gene Bank (MTCC) Chandigarh

b) Microbial Culture Collection (MCC), Pune

8. Are WIPO Digital Access Service (WIPO DAS) and WIPO Centralized Access to Search and Examination (WIPO CASE) available in India?

Yes, the IPO is both an accessing office and a depositing office for the WIPO DAS and WIPO CASE.

9. What information and documents are required to be submitted in respect of the corresponding foreign applications?

Section 8 of the Act along with Rule 12 of the Patent Rules, 2003 (as amended) requires the applicant to submit the details of the corresponding foreign applications for ‘the same or substantially the same invention’ at the IPO. The requirement is a follows

Section The obligation on the Applicant Timeline How to Meet the Obligation
8(1)(a) Submission of details of corresponding foreign applications filed on or before the filing date in India Within six months from the date of filing the application in India.

 

Furnish the details including the name of the country, the patent application number, filing date, status and patent number and date of grant (if available).
8(1)(b) Filing of an undertaking that, the applicant would keep the IPO informed in writing, from time to time, of detailed particulars as mentioned above in respect of every such corresponding foreign patent application As and when there is an update

 

Furnish above mentioned details for any new corresponding foreign patent applications.

 

Update the status of the patent applications, including patent number and date of grant as and when available

8(2) Submission of the prosecution details relating to such corresponding foreign application(s) when requested by the Controller

 

Within six months from the date of request by the IPO.

 

Furnish examination reports, claim amendments and granted claims, Notice of allowance/rejection.

 

 

10. What is considered as an application relating to ‘same or substantially same invention’ for the purpose of Section 8 in India?

The expression ‘same or substantially same invention’ is not defined in the Act or the Patents Rules. All patent applications sharing a common priority or derived from the same PCT application, continuation applications, continuation-in-part applications, and divisional applications may be considered as applications relating to the same or substantially same invention for the purpose of Section 8.

11. What are the consequences of non-compliance with the obligation under Section 8 in India?

Non-compliance with the obligation under Section 8 of the Act is a ground for:

a) pre-grant and post-grant opposition proceedings before the IPO

b) revocation of a patent.

However, Indian Courts have clarified that the revocation on this ground should not be automatic but based on the specific facts and circumstances of the case. The courts are expected to enquire into whether there was a deliberate or wilful suppression and whether the undisclosed information was in fact material to the grant of the patent.

12. How can a patent applicant in India comply with the requirement of submitting proof of right if one or more of the inventors are not available to sign the assignment deed or endorse Form 1 due to change in employment or death?

In such cases, any of the following documents may be submitted to comply with the requirement:

a) A notarized or a certified copy of an assignment deed submitted in the priority application or a corresponding application. The assignment deed must indicate that the inventor(s) have assigned their rights to the applicant worldwide.

b) A notarized or a certified copy of the employment agreement, or similar contract executed by the inventor with the applicant, indicating that the inventor has transferred all the rights arising in an invention to the applicant.

c) A copy of declaration as to the applicant’s entitlement to apply for and be granted a patent submitted with the PCT application in accordance with Rule 4.17(ii) of the PCT Regulations.

13. What documents are required to be submitted if one of the inventors is deceased?

Any one of the following may be submitted at the Indian Patent Office (IPO):

a) a notarized or certified copy of an existing assignment deed from the inventors to the applicant, along with its English translation if applicable; or

b) Form 1 signed by the legal heir of the inventor: The legal heir is required to execute the Form 1 in column 12 (i) above the deceased inventor’s name. No modification of Form 1 is required. Form 1 executed by the legal heir is required in original. Further, please note that a document identifying the legal heir as well as relationship with the deceased inventor (along with English translation, if applicable) and Death Certificate (along with English translation) would be mandatorily required if it is chosen to have the document executed by legal heir; or

c) an employment agreement/ contract executed between the deceased inventor and the applicant. Please note that this document should clearly indicate that the inventor had assigned all the rights of invention claimed in this application to the applicant. Alternatively said document may indicate that the inventor is under an obligation to assign any/all invention made by him to the applicant. A notarized/certified copy of such a document will suffice this requirement. In addition, if the document is not in English, please also send the English translation of the contract along with a Certificate of Translation for submission at the IPO.

14. Is it mandatory to register an assignment deed or a license at the IPO?

Yes, it is mandatory to register an assignment deed, a license, a mortgage deed or any other document that indicates transmission of any partial or complete interest in a patent application or a patent as the case may be at the IPO. If not registered, the court may not admit such a document as evidence during proceedings.

7Timelines

Timelines

1. What are the various timelines involved in the grant of an Indian patent?
The timelines for completing various tasks or submitting various documents are as follows:

S. No. Task Timeline Extensions

 

a) Filing a ‘Complete Specification’ after a ‘Provisional Specification’ Within 12 months of the date of filing of the Provisional Specification. No
b) Filing a National Phase application Within 31 months of the priority date No
c) Filing a convention application Within 12 months of the priority date No
d) Filing a divisional application Any time before the grant of the parent application No
e) Filing an application for a patent of addition Any time during the term of the parent application No
f) Publication of an application by the IPO On or after the expiry of 18 months from the filing date or the priority date, whichever is earlier.
g) Filing a request for early publication Any time after the filing of the complete specification but before the expiry of 18 months from the filing date or the priority date.
h) Publication of an application after a request for early publication is filed Within one month of the filing of the request
i) Filing a request for examination Within 48 months from the filing date or the priority date, whichever is earlier.

 

No
j) Filing a request for expedited examination Within 48 months from the filing date or the priority date, whichever is earlier.

 

No
k) Filing a response to the examination report. Within 6 months from the date of issuance of the examination report.

 

 

An extension of up to  3 months is available provided a request for extension is filed before the expiry of the 6 months’ period.
l) Filing written submissions pursuant to a hearing of a patent application in India Within 15 days of the hearing An extension of up to 1 month is available provided a request for extension is filed before the expiry of 15 days. The extension is available on discretion of the Controller.
m) Payment of renewal fee The renewal fee is payable only after the grant of the patent. The schedule is as follows:

 

–          Within 3 months of grant: All annuity payments that are due, calculated from the third year from the filing date.

 

–          Before each subsequent anniversary of the filing date: Annuity payments.

 

Note: For a PCT National Phase application, the international filing date is the filing date in India.

 

For a complete application filed after provisional, the filing date is the filing date of the provisional application.

An extension of 6 months is available upon payment of the prescribed fee.

8Prosecution and Opposition

Prosecution and Opposition

1. Can the examination of a patent application in India be expedited?

An applicant may file a request for expedited examination at any time within 48 months of the date of filing or date of priority, whichever is earlier if:

a) the applicant is any one of the following:
– a start-up;
– a small entity;
– a female applicant;
– in case of joint applicants, all the applicants are natural persons, and at least one of the those applicants is a female;
– a department of the Government;
– an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
– a Government company;
– an institution wholly or substantially financed by the Government;
or

b) the application pertains to a sector, which is notified by the Central Government

or

c) in the case of a National Phase application, India is chosen as the competent ‘International Searching Authority’ or elected as an ‘International Preliminary Examining Authority’ in the corresponding PCT application,
or

d) the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the IPO and a foreign Patent Office.

Additionally, a request for early publication is required to be filed, in case the application has not already been published.

2. Is there a limit on the number of requests for an expedited examination that are taken up by the IPO?

Yes, the IPO entertains a limited number of requests for expedited examination in a year. This number is publicly notified at the start of the calendar year, and once the limit is met, no more requests for expedited examination are entertained. Therefore, it is recommended that the request should be filed at the start of the calendar year.

3. Is it possible to file a request for expedited examination after filing a regular request for examination?

Yes, if the conditions for filing an expedited examination are met, the applicant may convert a regular request for an examination into a request for expedited examination by making a request in the prescribed format and paying the difference in the prescribed fee.

4. How can a patent application expedite the grant of a patent application in India?

The following may expedite the grant of an application:

a) Filing a request for an early publication of the application (as an application is taken up for examination only after it has been published).

b) Filing a request for examination along with the application itself.

c) In case of a National Phase application, filing an express request for examination before the expiry of 31 months.

d) Filing a request for expedited examination, if the patent applicant qualifies.

e) Filing a response to the First Examination Report at the earliest.

f) Filing all the necessary formal documents at the earliest.

5. Is it possible to initiate an examination of a National Phase application before the expiry of the 31 months’ period?

Yes, an express request for examination may be filed to initiate the examination of a National Phase application before the expiry of the 31 month period.

6. Is India part of any Patent Prosecution Highway (PPH) program?

The IPO has entered into a bilateral PPH pilot program with the Japanese Patent Office (JPO) for a trial period of three years starting from November 2019.

Under this program, the IPO will receive patent applications only in the technical fields of electrical engineering, electronics, computer science, information technology, physics, civil engineering, mechanical engineering, textiles, automobiles, and metallurgy.

The JPO may receive applications in all fields of technology. A request for expedited examination is required to be filed by the applicant under the program along with necessary information and documents.

The number of requests for the PPH filed at the IPO will be limited to 100 cases per year and entertained on a first come first serve basis.

An applicant who has filed a patent application, either alone or jointly with any other applicant, can file up to 10 PPH requests at the IPO in a year.

7. Can a patent application be withdrawn in India? If yes, how?

a) An applicant may withdraw a patent application by filing a request for withdrawal at the IPO any time before the grant of the patent. If the applicant also intends to prevent the publication of the application, the request must be filed three months prior to the 18 month period from the date of filing or the priority date; or

b) An application shall be deemed to be withdrawn if:
– a request for examination is not filed; or
– a response to the examination report issued by the IPO is not filed.

8. Is there any fee for withdrawal of application?

There is no fee for withdrawal of a patent application.

9. Is it possible to obtain a refund of the application and/or examination fee, if an applicant withdraws a patent application before the examination?
An applicant can claim a refund of up to 90% of the examination fee if the applicant withdraws the application before the issuance of the examination report. The application fee is not refundable.

10. Can a Controller’s decision be appealed or challenged when a patent is refused in India?
Yes, it is possible to appeal/ challenge a Controller’s decision refusing the grant of a patent in India. In this regard, following options are available to the applicant:
a) 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.

b) The applicant may make an appeal at the High Court. This appeal must be made within three months from the date of the decision.
11. Can a patent application or a patent be challenged in India?

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 Forum When By Whom
a) Pre-grant Representation IPO Any time during pendency of the application, and after publication Any person*
b) Post-grant Opposition IPO Within one year of date of publication of grant of patent Any person interested**
c) Revocation proceedings High Court Any time after the grant of the patent Any person interested**
d) Revocation proceeding in a counterclaim High Court After a suit for infringement has been filed Defendant

 

* Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence, it is recommended that a person who is involved in the field of technology of the Patent files a pre-grant opposition.

** Section 2(1)(t) of the 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.

9Amendments

Amendments

  1. What types of amendments to a patent application can be made in India?

Document/ information which could be amended When Comments
Name, address of applicant/inventor –          Anytime during the pendency of application;

–          After grant

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

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. What amendments can be made to a specification of claims of patent application in India?

Only the following amendments to the specification or claims are allowable:

a) Correction: An amendment made to correct a mistake made during the preparation of the specification and not an error of judgment.

b) Explanation: An amendment made to clarify the invention. This, however, should not result in the addition of new matter or broadening of the scope of claims.

c) Disclaimer: An amendment made to limit the scope of the invention or remove doubts.

3. Can an applicant amend the claims at the time of National Phase entry into India?

The applicant is only allowed to delete claim(s) at the time of the National Phase entry. No other amendment can be made at the time of the National Phase entry. The claim fee is calculated on the basis of the number of claims present on record at the time of National Phase entry.

4. Is it possible to add or remove inventor(s) from a patent application in India?

Yes, it is possible to add or remove inventor(s) from an application by filing a request in a prescribed format along with affidavits from the inventor(s) already on record.

5. Is it possible to amend the name or address of a patent applicant or an inventor in India?

Yes, the name and/or address of an applicant or an inventor may be amended at any time during the pendency of the application or even after the grant of a patent. A request in the prescribed format is required to be made along with documentary evidence in support of the change.

6. Is it possible to amend the priority date of a claim in India?

Yes, the priority date of a claim may be amended at any time during the pendency of the application or after the grant of a patent. The priority date may be amended suo moto by the applicant, or to overcome the objection raised by the Controller, or in an invalidation proceeding.

7. Is it possible to amend the filing date of a patent application in India?

Yes, an application may be post-dated any time after the filing of the application but before the grant of a patent on a request made to the Controller in the prescribed format. An application may also be post-dated if 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.

 

 

10Post Grant Requirements for Patent Applicant in India

Post Grant Requirements for Patent Applicant in India

1. What are the key things that a patent applicant is required to comply with after the grant of a patent in India?

There are three key things that a patent applicant must comply with after the grant of a patent in India, which are as follows:

– Pay renewal fees to maintain the patent
– File the annual statement of working of patent in India
– Update records in case of any change in the ownership.

2. What are the immediate steps required to be taken once a patent has been granted in India?

After the grant of the patent, the patentee is required to pay renewal fee accumulated till the date of grant of the patent to maintain the patent. The schedule for the payment of the renewal fee is as follows:

– Within 3 months of grant: All annuity payments that are due, calculated from the third year from the filing date.

– Before each subsequent anniversary of the filing date: Annuity payment.

Note: For a PCT National Phase application, the international filing date is the filing date in India. For a complete application filed after provisional, the filing date is the filing date of the provisional application.

This accumulated renewal fee is payable within three months of grant of patent. An extension of six months is available.

3. When is renewal fee/annuities for patent 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 two or more years in advance.

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

There is no requirement of paying any separate sealing fee or issue fee, other than the renewal fee.

5. What are the consequences of non-payment of renewal fee in India?

Non-payment of the renewal fee results in expiration of the patent.

6. Can a patent expired on account of non-payment of renewal fee be restored?

In case a patent expires due to the non-payment of the renewal fee, the patentee may file a request for the restoration of the patent. The request for restoration must be filed within 18 months of the expiry of the patent. 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.

7. What is a financial year for the purposes of Statement of Working?

A financial year is a period from 01 April of a given year to 31 March of the following year.

8. What is a Statement of Working of patent in India?

It is a statement as to the extent to which the patented invention has been worked on a commercial scale in India.

9. When is the first Statement of Working required to be filed?

The First Statement of Working is required to be filed from the financial year commencing immediately after the financial year in which the patent was granted. For example, for a patent that is granted between 01 April 2021 to 31 March 2022, the first working statement is required to be filed for the financial year 01 April 2022 – 31 March 2023 by 30 September 2023.

10. Who is required to file the Statement of Working?

It must be filed by the patentee and each licensee of the patentee.

11. Can the patentee file the working statement on behalf of the licensee?

No, the patentee cannot file the working statement on behalf of the licensee. The licensee is required to file a separate statement of working in his own name.

12. Is Statement of Working required to maintain a patent in India?

No. Not filing of a Statement of Working does not affect the legal status of a patent in India, as long as the necessary annuities, required for maintaining the patent, are paid within the prescribed period.

13. 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”:

a) Whether or not the invention has been worked in India.

b) If worked, approximate revenue/value accrued in India to patentee(s)/licensee furnishing the statement from the patent(s) .

c) If not worked, reasons for not working the patented product in India reasons for not working and steps being taken for working of the invention.

14. What information is required to be provided in the Statement of Working if a patent is not being worked in India?

If a patent is not being worked in India, reasons for not working should be provided.

15. Is importation of a patented article considered as working of patent in India?

Yes, importation is considered as working of patent in India.

16. Can one Statement of working be filed for multiple patents?

Yes, a single statement can be filed for related patents where the approximate revenue or the value accrued cannot be derived separately for each related patent.

17. What are the consequences of not submitting the Statement of Working?

A failure to submit this information may result in a penalty including a fine which may extend up to INR 10,00,000 (approximately USD 14,000).

18. What are the consequences of submitting incorrect information in the Statement of Working?

If the patentee or the licensee furnishes information or statement which is false, they may be punished with imprisonment which may extend to six months, or with fine, or with both.

11Foreign Filing License

Foreign Filing License

 1. When is a Foreign Filing License (FFL) required in India?

An FFL is required when a patent application is proposed to be filed outside India in the following case:

a) the applicant or the inventor(s) is a resident of India; and

b) the applicant or the inventor does not wish to file a patent application in India prior to filing outside India or the applicant wishes to file a patent application outside India before the expiry of a period of 6 weeks from the filing of an application in India.

Here, the nationality of the person concerned is not relevant and only residential status is taken into consideration.

An FFL is only granted if either no secrecy direction (under Section 35) has been given by the Controller for an invention relating to or relevant for defence or atomic energy purposes, or the secrecy direction has been revoked. Also, if the invention is relevant for defence purposes or atomic energy, the Controller grants an FFL only after obtaining permission from the Central Government.

2. Can a patent applicant obtain Foreign Filing License (FFL) after filing the application outside India?
No, an FFL must be obtained before filing the application outside India.

3. Who is considered as a ‘person resident in India’ for the purposes of obtaining an Foreign Filing License (FFL)?

A ‘person resident in India’ is a person, who:

a) is in India in that financial year for a period amounting in all to one hundred and eighty-two days or more ; or

b) is in India for a period of at least 60 days during the relevant previous financial year and at least 365 days during the four years preceding that relevant year; or

c) is a citizen of India, and has an income from sources in India of more than INR 1.5 million during the previous year and is not liable to pay tax in any other country or territory by reason of his domicile or residence or any other criteria of similar nature.

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.

4. What documents and information are required for obtaining Foreign Filing License (FFL)?

The following documents and information are required for obtaining an FFL:

a) The name, address and nationality of the inventor(s) and/or applicant(s) that are resident of India

b) The name, address, and nationality of the other inventor(s) and applicant(s)

c) Power of Authority from the inventor(s) or the applicant(s) residing in India

d) A brief write-up of the invention including the title of the invention and drawings (if any)

e) A list of countries in which the inventor(s)/assignee intends to file the application.

5. Can multiple patent applications be filed using a single Foreign Filing License (FFL)?

Yes, as long as all the patent applications contain the invention for which the FFL was obtained.

6. How long does it take to get a Foreign Filing License (FFL) in India?

The FFL is generally given within 21 days from the date of filing the request.

7. What are the consequences of filing an application outside India without obtaining the Foreign Filing License (FFL)?

If an application is filed outside India without obtaining FFL then any subsequently filed Indian application shall be deemed to have been abandoned and the patent granted, if any shall be liable to be revoked.

Further, non-compliance with this requirement incurs a penalty that includes imprisonment for a term which may extend to two years, fine, or both.

12Enforcement of Patents in India

Enforcement of Patents in India

 1. What are the advantages or marking in your country and is it a legal requirement?

While practically, the Courts do not refuse enforcement of patent for non-marking, the legal provisions provide that in a suit for infringement of a patent, damages or an account of profits shall not be granted against a defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Thus, it is recommended to not only mention “Patented” but also the “Patent Number” to rebut any presumption of non-infringement in favour of any potential infringer.

2. What provisional protection can be obtained in your country and how?

Indian Patent law does not provide for provisional protection. Particularly, no action can be taken against infringement of a pending patent application. However, damages can be claimed from the date of publication of the application, in a suit for infringement filed after the grant of the patent application.

3. Is it best to give notice to potential infringers after the patent is granted or to do it once provisional protection for the application is in place?

It is generally advisable to wait for grant before giving notice so as to avoid any pre-grant oppositions. Such pre-grant oppositions tend to delay the matter. However, there may be circumstances that may warrant giving notice and would depend on the facts of each case.

4. What are the consequences of non-compliance with the obligation under Section 8 in India?

Non-compliance with the obligation under Section 8 of the Act is a ground for:

a) pre-grant and post-grant opposition proceedings before the IPO

b) revocation of a patent.

However, Indian Courts have clarified that the revocation on this ground should not be automatic but based on the specific facts and circumstances of the case. The courts are expected to enquire into whether there was a deliberate or wilful suppression and whether the undisclosed information was in fact material to the grant of the patent.



error: Content is protected !!