Posted On: April 4, 2022

PATENT GRANTING PROCESS AND PATENT DOCUMENTATION IN INDIA

Patent

INTRODUCTION

A Patent is a statutory right granted to an inventor or the applicant by the government authorities for any novel product or a process. It is a territorial right and in India granted for a period of 20 years from the date of filing of application. The owner can prevent third parties from making or manufacturing, using, offering for sale, importing, distributing, assigning and licensing his technology. Before granting a patent, it is seen whether the invention fulfils the criteria of novelty, non-obviousness and industrial application. At Knowledgentia Consultants, we have one of the best patent consultants in India and offer global IPR protection services. Filing of a patent application is an intricate process that requires specialized knowledge of patent laws which in itself are dynamic in nature . There are different stages from filing to the grant of the patent, accompanied by fees related to the specific forms / documents that need to be filed. This is the reason why Knowledgentia is the most trusted partner when it comes to patent filing or getting one’s rights over one’s rightful invention enforced.

 

PATENT GRANTING PROCESS IN INDIA

This process basically begins from conceptualising the invention.  After the same, application is filed , published and examined.  Granting of patents is broadly divided into following stages under ordinary circumstances:

  1. Filing of application
  2. Publication of application
  3. Examination of application
  4. Prosecution

FILING OF APPLICATION

The application for a grant of patent is initiated once the application is filed along with the requisite documents and forms applicable at the time of filing of the application. The initial application consists of Form-1, Form-2, Form-3, Form-5. Another form i.e., Form-26 is for the authorisation of the agent which is required to be filed within 3 months from the date of filing of the application. However, if Form-26 is not filed within the prescribed time, the application does not get published and is not proceeded further until the deficiency is overcome.  Form-1 is an application  for grant of patent, filed under Section 7, 54 and 135 and rule 20(i); Form-2 contains the specification (applicable for both Provisional/Complete specification), filed under Section 10 and rule 13; Form-3 is for Statement and Undertakings of the applications (i.e., furnishing of the details related to filing of the application outside the country), filed under Section 8 and rule 12; Form-5 is for the declaration as to inventorship, filed under Section 10(6) and rule 13(6); Form-26 is for the authorization of a Patent Agent/or any person in a matter or proceeding, filed under Section 127, 132 and rule 135.

If the applicant files a provisional specification at the beginning of the application, the applicant will have 12 months’ time to file the complete specification, provided that both the applications are filed via Form-2 under the act. A ‘Proof of Right’ is also required at the time of application of patent or within 6 months’ from the date of filing; however, in practice the Form-1 contains a declaration that is signed by both inventor and the assignee of the patent application and act as a ‘Proof of Right’. Form-3 can be filed within 6 months from the filing date of application, while Form-5 has to be submitted along with the application or the applicant can ask for 1 month time via Form-4 from the controller, if not submitted during the initial filing of the application.

Further, if the applicant claims the status of small entity, startup or educational institution, filing of relevant documents affirming the same is also required.

  1. For claiming the status of a small entity:
    1. For an Indian applicant: Evidence of registration under the Micro, Small and Medium Enterprises Development Act, 2006(27 of 2006).
    2. In case of a foreign entity: Any other document.
  2. For claiming the status of a startup:
    1. For an Indian applicant: Any document as evidence of eligibility, as defined in rule 2(fb).
    2. In case of a foreign entity: Any other document.
  • For claiming the status of an educational institution:
    1. For an Indian applicant: Any document as evidence of eligibility, as defined in rule 2(ca).
    2. In case of a foreign educational institution: Any other document.

For claiming the status of Small entity/Startup, the applicant is required to file Form-28 under rules 2(fa), 2(fb) and 7 along with the relevant document.

PUBLICATION OF APPLICATION

After filing of the application, it is ordinarily published after 18 months from filing of the application  The application is published in the official journal. Once the application is published it becomes open for pre-grant opposition and any person can file for representation for opposition to grant of patent by filing Form-7A under rule 55 of the relevant statute.

 

EXAMINATION OF APPLICATION

 Unlike the case of publication of application where an application is published itself by the patent office after the eighteen months period is over, an application is examined only after the applicant or any other person interested files a request for examination via Form-18 within 48 months’ from the date of filing of patent application. If no request is made by the applicant or any other person interested, the application is treated as withdrawn by the applicant. The examiner publishes a report generated by the examiner while searching for patent application(s) disclosing or claiming similar subject-matter and the is communicated to the applicant as expeditiously as possible as per Section 14 of the act. This report is known as the ‘First Statement of Objection’ or ‘First Examination Report’ (FER).

The applicant may file for the ‘Expedited Examination of Application of Patent’ via Form-18A under Section 11B and rule 24C, provided that the applicant is a startup, a small entity, a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female, a department of the Government, an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government, a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013), an institution wholly or substantially financed by the Government, or in application where India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application.

 

PROSECUTION

The prosecution of application starts once the examination report (FER) is published. The applicant is given 6 months’ time to file a response to this report. If an applicant or his agent is unable to file a reply within the prescribed time, they may ask for 3 months’ extension via Form-4 to the controller. If the controller is satisfied with the response and there is no pending objection on the side of the applicant, the controller is required to grant the patent as expeditiously as possible under Section 43 of the Patents Act.

Whereas, in case the controller is not satisfied by the response from the applicant, a hearing (according to the procedure specified under rule 28) may be scheduled that can be concluded in person or via video conferencing, before taking the final decision, the written submissions and the relevant documents are required to be filed within fifteen days from the date of hearing in case of outstanding objections.

After hearing the controller may refuse to grant the patent if not satisfied by the applicant, or grant the patent. After the grant of patent, it is published by the patent office and is registered in the “Register of patents”. The Controller is required to publish the fact that the patent has been granted and the documents related to the patent like application, specification and other documents are opened for public inspection.

After the grant of patent any person interested can file for post grant opposition via Form-7 under Section 25(2) and rule 55A.

 

 

DOCUMENTS REQUIRED FOR FILING A PATENT IN INDIA :-

 

Form No. Section and Rule Title of Form
1 Section 7, 54 and Rule 20(i) Application for grant of a patent
2 Section 10; Rule 13 Provisional/Complete Specification
3 Section 8 and Rule 12 Statement and undertaking
5 Section 10(6) and rule 13(6) Declaration as to inventorship
7 Section 25(2) and Rule 55A Notice of Opposition
7A Rule 55 Representation for opposition to grant of patent
9 Section 11A(2) and rule 24A Request for publication
18 Section 11B and rules 20(4)(ii) and 24B(1)(i) Request for examination of application for patent
18A Section 11B and rule 24C Request for expedited examination of application for patent
26 Sections 127, 132 and rule 135 Form of authorization of a Patent Agent/ or any person in a matter or proceeding under the act
28 Rules 2(fa), 2(fb) and 7 To be submitted by a Small entity/Startup

 

 

CONCLUSION        

At Knowledgentia Consultants, we have one of the best patent consultants in India, who offer advice regarding filing and procedure with respect to patent applications. We are your one-stop solution for all kinds of legal, compliance and supplemental matters concerning patents. In case of any query regarding this matter you may email us at info@knowledgentia.com or visit our website -https://knowledgentia.com/.

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