What is the process for getting a patent in India?
An Indian patent application goes through the following stages, till grant:
– This stage includes filing the application at the Indian Patent Office and complying with all the formal requirements.
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.
– After the application has been filed, the application is published by the Indian Patent Office for public inspection in an official journal.
– Upon the publication of the application, the applicant has like privileges and rights as if the invention has been granted a patent on the date of the publication. Damages can be claimed from the date of publication of application in India. However, the applicant can file an infringement suit only after the grant of the patent.
– Any person can file a pre-grant opposition at the Indian Patent Office in order to challenge the grant of the application, any time after the publication of the application but before the grant of the patent.
– An application is taken up for examination, only after it has been published and a request for examination has been filed.
– Additionally, in case of a national phase application the application will be taken up for examination only after the expiry of 31 months’ period from the priority date.
– Once examination begins, the Controller issues a First Examination Report (FER), a response to which is required to be submitted within 6 months from the date of issuance of FER. An extension of 3 months is available to submit the response. Failure to submit the response within said time limit shall result in abandonment of the application.
– The Indian Patent Office typically offers a hearing to the applicant after the response to the FER has been filed, to address any pending objections. It is therefore advisable to file the response to the FER at the earliest so as to leave sufficient time for such a hearing.
– Once all objections have been addressed, the application is placed in order for grant.
– If all objections have been addressed, the application proceeds to grant within a couple of months of the hearing mentioned above.
– After the patent has been granted, the patentee is required to pay a renewal fee every year to keep the patent in force. This renewal fee is applicable from the third year onwards. However, the renewal fee is payable only after the grant of the patent.
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?
- 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.
- An extension of up to 6 months may be requested for paying the arrear renewal fees.
- 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:
- The patent applicant is a start-up, or was a start-up at the time of filing the patent application; or
- 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:
- File a request for examination at the time of filing of application.
- 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.
- 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.
- In case the applicant is a start-up or has elected India as the ISA, the applicant may file a request for expedited examination.
- 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:
- 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;
- By not filing the request for examination; and
- By not filing a response to the first examination report.