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.
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| 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.
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| 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, small entity or educational institution 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.
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Furnish examination reports, claim amendments and granted claims, Notice of allowance/rejection.
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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.
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