What is the fee payable for a patent application?
Following fees are payable for a patent application:
- Application filing fee
- Extra claim fee for each claim above 10
- Extra page fee for each page above 30
- Extra Priority claim fee for each priority claim above 1
- 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:
- 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
- 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”
- 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”
- 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:
- Has not been registered or incorporated for more than 5 years;
- Has a turnover for any of the financial years of not more than Rs. 25 crores (approx 4.2 million US Dollars); and
- 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.