Who can file a patent application in India?
A patent application can be filed by one or more of the following:
- True and first inventor
- Assignee of the inventor, or
- 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:
S. No. Document/ Information When is it required Can it be submitted later? 1 Complete specification (in English) Along with the application No extensions are available for filing the complete specification at a later date 2 Drawing(s) Along with the application No extensions are available for filing the drawings at a later date 3 Name, address and nationality of inventors’ Along with the application No; although inventor(s) may be added/ removed subsequently by filing a request 4 Name, address and nationality of applicants) Along with the application No; although applicant(s) may be added/ amended subsequently by filing a request 5 Power of Attorney (To be filed in case the application is filed by a patent agent) Within 3 months of the application date Yes, 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 time limit. 6 Assignment Deed or Application Form endorsed by the inventor (if the inventors are not the applicants) Within 6 months of the application date Yes, 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 time limit. 7 Details of corresponding applications filed in other countries (Information and undertaking under Section 8) Within 6 months of the application date Yes, an extension may be obtained by a filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit. 8 Verified English translation of the
(required for convention applications)
Within 3 months of priority date No extensions are available 9 Verified English translation of the PCT application (required only for national phase applications) Agent can verify the English translation of PCT application on behalf of the applicant. Within 31 months of priority date No extensions are available 10 Certified copy of the priority application, if requested by the Controller (required usually for convention applications, but may also be requested for national phase application in case the priority document was not submitted with the International Bureau) Within 3 months of request by the Controller No extensions are available 11 Sequence listing in computer readable text format (if any) (no print form is required to be submitted) Along with the application No extensions are available 12 Permission from National Biodiversity Authority (in case any Biological material used in the invention is from India) Permission must be requested for before applying for the patent The permission may be submitted after filing of the patent application but before grant. 13 Microorganisms must be deposited with International Depository Authority (In case microorganisms are used that are not available to public and cannot be appropriately described) Before filing of the application The accession number (identification number) may be included in the specification within 3 months from the date of filing of the application. In case a request for publication is filed, then accession number must be included before filing of such a request for publication.
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:
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-
- 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.
- 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.
- 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.
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:
- Examination reports;
- Any claim amendments made in corresponding applications, and
- 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:
- 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.
- 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.
- 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.