Filing Patents in India

What is the process for getting a patent in India?

An Indian patent application goes through the following stages, till grant:

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.

How long does it take to get a patent in India?

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.

What is the last date for filing an application 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

By when should a request for examination be filed?

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.

When is a patent application published by the Indian Patent Office?

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

When will the Patent Office examine the patent application?

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.

When is the due date for filing a response to the examination report in India?

A response to examination report must be filed within 6 months from the date of issuance of the examination report.

Is there any extension of time available for filing response to 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.

What happens after filing the response to the First Examination Report (FER)?

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.

When is the patent granted in India?

A patent is granted after examination of the patent application by the patent office and after considering any oppositions to the patent application.

When are renewal fees/annuities fees to be paid in India?

1. Renewal fees are payable only after the grant of the patent. Within 3 months of date of the grant of patent, accumulated renewal fee for the third year onwards is to be paid.
2. An extension of up to 6 months may be requested for paying the arrear renewal fees.
3. Thereafter, every year renewal fee falls due on the anniversary of the filing date of the patent application.

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

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

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

Yes, it is possible to enter the national phase of an un-published application in India.

Can the publication of a patent 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.

Can the examination of a patent 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:

1. The patent applicant is a start-up, or was a start-up at the time of filing the patent application; or
2. 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.

Can a foreign company 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.

Can a national phase application be examined 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.

How can an applicant expedite the grant of a patent application in India?

One or more of the following steps can be taken by the applicant 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 is a start-up or has elected India as the ISA, the applicant may file a request for expedited examination.
5. File a response to the examination reportat the earliest and avoid filing responses at the last minute.

Can a patent application be withdrawn in India?

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.

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)

What are the documents and information required for filing a national phase/ convention application in India?

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

What 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:

1. 1. 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/continuation in part applications.

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

      1. 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. 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 foreign 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 but does not require him to update the details of corresponding foreign applications every six months.

   2. 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 the request.

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

1. 1. Examination reports;
   2. Any claim amendments made in corresponding applications, and
   3. Claims as allowed/ granted in corresponding foreign applications.

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

What happens if an applicant fails to submit the information or 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.

What can be done if an inventor is not available to sign the assignment deed or Form 1 due to change in employment or 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,.

What is to be done if an application/ patent is re-assigned at a later stage?

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.

What is to be done if a patent is licensed?

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.

What is the fee payable for a patent application?

Following fees are payable for a patent application:

1. Application filing fee
2. Extra claim fee for each claim above 10
3. Extra page fee for each page above 30
4. Extra Priority claim fee for each priority claim above 1
5. Fee for Requesting Examination

Can extra claim fee and/or extra sheet fee be paid subsequent to the filing of the 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.

Can fee for Request for Examination be paid subsequent to the filing of the patent 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.

Is there any way to reduce the fees payable?

Yes. It is possible to reduce the fee as the same depends on the type of applicant, enlisted below:

1. 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.
   • No fee reduction
2. Individuals or Start up
   • For further details, please see Section 6 below
   • 80% reduction of fee is available, compared to that applicable for “other than small entity”
3. Small entity
   • For further details, please see Section 9 below
   • 50% reduction of fee is available, compared to that applicable for “other than small entity”

What fee will be applicable if a patent application is jointly filed by different types of applicant?

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.

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

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

1. Has not been registered or incorporated for more than 5 years;
2. Has a turnover for any of the financial years of not more than Rs. 25 crores (approx 4.2 million US Dollars); and
3. 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.

Can a non-Indian or foreign company be a start-up?

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.

What are the documents required for claiming a start-up status?

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:

• Incorporation certificate;
• CA statement, etc.

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.

Can a non-Indian or foreign company be a small entity?

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

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 requiredat the time of filing of the applicationor at the time of submission of any document which is accompanied by official fee.

What happens when an application filed by a natural person, is transferred to a small entity or other than small entity?

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.

Can a refund of examination fee be obtained 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.

What are the types of amendments which can be made under the Patents Act?

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

Which claim amendments are 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.

Can the applicant delete certain claims at the time of national phase entry?

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.

What is to be done once a patent has been granted?

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.

Is there a requirement of paying a separate sealing fee or 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.

When is renewal fee/annuities 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.

What information is required to be stated 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.

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.

When would a patent applicant be required to seek 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 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; and the Controller has not issued directions in the application stating that the application is relevant for defense purposes and that the application shall not be published.

Can a foreign filing license be obtained after filing the application outside India?

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

Would a foreign filing license be required even if all inventors are not residents of India?

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

Who is a “resident in India” for the purposes of obtaining a 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:

1. 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:

2. 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.

What documents and information are 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.

Can a telephonic hearing be conducted 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 been introduced, though this is also subject to the Controller’s discretion.

Can a Controller’s decision be appealed or challenged when a patent is refused?

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.

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:

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.