PATENT FILING REQUIREMENTS IN INDIA
A patent is a statutory right for an invention granted by the government to the patentee for a limited period of time in exchange for full disclosure of invention. The patentee has a right to exclude third parties from making, selling, importing the patented product or process. In India, a patent is usually granted for a time period of 20 years. Patent protection is a territorial right and needs to be filed in each country wherever the applicant seeks protection. At Knowledgentia, we have one of the best patent consultants in India who can support in smooth and effective filing of patents locally as well as globally.
CRITERIA FOR FILING PATENTS IN INDIA
In India following criteria need to be considered before filing an application for patents :-
- Non –obviousness
- Industrial application
- Should not fall within the ambit of non-patentability within India Patents Act.
FILING SPECIFICS IN INDIA
- A patent application in India can be filed by true and first inventor or his assignee either alone or jointly.
- An application can be filed either with provisional specification or complete specification along with the fee prescribed as per the Indian Patents Act.
- In case where provisional specification is filed, complete specification needs to be filed within 12 months from the date of filing provisional.
TYPES OF PATENT APPLICATIONS THAT CAN BE FILED IN INDIA
- PROVISIONAL APPLICATION
In India, first to file system is usually followed. We advise our clients to file provisional application when the invention is still on experimentation stage. This application helps in establishing a priority date and inventor gets 12 months to investigate the market potential.
- ORDINARY APPLICATION
This refers to an application which is filed without claiming any priority in any convention country.
- CONVENTION APPLICATION
This kind of application involves claiming priority date based on same or substantially similar application filed in one or more convention countries. In order to claim convention status, the application needs to be filed in the Indian Patent office within 12 months from the date of first filing of application in any convention country.
- PCT INTERNATIONAL APPLICATION
This refers to a single application filed in India under Patent Cooperation Treaty with an option to file in 150 countries with the same single application. Here India is the receiving office.
- PCT NATIONAL PHASE APPLICATION
National phase application is filed in India within 31 months from international filing date or priority date whichever is earlier. This application is made according to PCT designating India.
- PATENT OF ADDITION
This application is filed in cases where there is a slight modification in the invention for which one has already obtained a patent. In this case, there is no requirement for paying separate renewal fee during the term of main patent and the patent expires with the expiry of main patent.
- DIVISIONAL APPLICATION
When an application claims more than one invention, the applicant may divide the application and file two or more applications as the case may be for each of the inventions. This kind of application which is branched out of parent application is known as divisional application. The priority date for all divisional applications is the same as that of parent application.
REQUISITE FORMS TO BE FILED IN INDIA FOR A PATENT APPLICATION:-
- Form 1 needs to be filed which is a form for request for filing the patent application
- Form 2 needs to be filed which is either a provisional or complete specification along with drawings if any.
- An abstract of the invention needs to be submitted as well.
- For examination of application, a form filing a request for examination needs to be submitted.
TIMELINES FOR PATENT FILING
|FILING OF COMPLETE SPECIFICATION FOLLOWING PROVISIONAL SPECIFICATION (FORM 2)||WITHIN 12 MONTHS OF FILING PROVISIONAL SPECIFICATION|
|STATEMENT AND UNDERTAKING REGARDING FOREIGN APPLICATIONS (FORM 3)||WITHIN 6 MONTHS FROM THE DATE OF FILING APPLICATION|
|REQUEST FOR EXAMINATION (FORM 18)||48 MONTHS FROM THE DATE OF FILING OR PRIORITY WHICH EVER IS EARLIER|
|DECLARATION OF INVENTORSHIP (FORM 5)||WITH THE COMPLETE SPECIFICATION OR WITHIN ONE MONTH FROM THE DATE OF FILING OF COMPLETE SPECIFICATION|
|TIME FOR REPLYING TO THE FIRST EXAMINATION REPORT (FER)||6 MONTHS FROM THE DATE OF ISSUANCE OF THE FER , EXTENDABLE UPTO 3 MONTHS, TOTAL 9 MONTHS|
|PRE-GRANT OPPOSITION (FORM 7A)||ANY TIME BEFORE GRANT OF PATENT|
|POST GRANT OPPOSITION (FORM 7)||ONE YEAR FROM DATE OF PUBLICATION OF GRANT OF PATENT|
|REFERENCE TO DEPOSIT OF BIOLOGICAL MATERIAL||WITHIN 3 MONTHS FROM THE DATE OF FILING OF APPLICATION|
|FURNISHING INFORMATION RELATING TO WORKING OF PATENT (FORM 27)||31ST MARCH OF EVERY YEAR|
BENEFITS TO START UPS FOR FILING PATENT APPLICATIONS
A scheme for facilitating Start ups Intellectual Property Protection has been launched by government of India for encouraging innovation and creativity of start ups. Start ups are provided a rebate of 80% on patent fees as compared to the fees paid by other legal entities. The government also reimburses the expenditure to the facilitators who assist the start up for filing and prosecuting patent application.
ROUTE FOR FILING PATENT APPLICATION IN FOREIGN COUNTRIES
- PARIS CONVENTION
Applicant is allotted 12 months time to file the patent application in the member countries from the date of filing earliest application.
- PATENT COOPERATION TREATY SYSTEM
This system allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. This system simplifies the procedure of filing through single application. Under this system, provisions are made for publication of application, International search and international preliminary examination before entering national phase.
Before Filing a patent, at Knowledgentia, we check whether invention is patentable or not. For this we perform a patentability search and advise our clients regarding any existing similar technology across the world. Conducting worldwide patent prior art search is advisable as it helps in saving time and resources.
After conducting patentability search, based upon the results we draft patent application depending on stage of invention. One can choose between filing a complete and a provisional application. Latter is usually filed in the initial stages and after filing provisional patent application, one is granted a period of atleast 12 months to file complete specification.
After drafting and filing of the application, the patent is published in a journal. It takes around 18 months for the same but one can also file a request for early publication by making a special request which if granted, patent gets published within just 1 month of making request. Patent is further examined by patent examiners on making a request by filing requisite documents in order to ensure the invention fulfills all patentability requirements. In case of objections, the same are communicated through First Examination Report. Once there are no objections, the patent is granted for a period of 20 years from the date of application and is then published in official gazette. The patent needs to be maintained and renewed every year by paying a certain amount of fees.
At Knowledgentia, with expert and foremost patent consultants in India, we assist our clients in making patent searches, drafting, filing, prosecution, technology transfers and commercialization of research activities a smooth process. Being renowned start up facilitators in India, we are trusted by many start ups for their patent filing and publication. You may visit our website https://knowledgentia.com/ or email us at firstname.lastname@example.org for any related queries.