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.