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HOW TO FILE A PATENT IN INDIA

 

INDIAN IP LAWS

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How to file Patent Applications in India?

In accordance with the provisions of Patent Act, the inventor, his assignee or legal representative of deceased person, who before his death was either the inventor or assignee, can apply for patents at the head office of the Indian Patent Office or its branches depending upon in whose jurisdiction he resides or has a domicile or has a principle office of business.

 

In case of a foreign applicant, the application can be filed at the appropriate office, in whose jurisdiction the address for service or patent attorney’s office is situated.

 

Every application for a patent shall be made for one invention only or a group of inventions which are linked to each other by a single inventive concept.  

 

Along with application for grant of patent and specification, the applicant is required to submit the documents.

What are the Documents required for filing a Patent Application in India?

The documents required for filing a patent application in India are as under:

  • Declaration as to inventorship

  • Statement and undertaking

  • Proof of right to make an application

  • The authorization of an agent

Filing Requirements for Patent Applications:

 

Ordinary Application:

 

The first patent application filed in the Patent Office without claiming priority from any application or without any reference to any other application under process in the Patent office is called an ordinary application. The ordinary application can be provisional application or non-provisional application (not preceded by a provisional application).

 

Requirements for Provisional application:

  1. Provisional application is to be submitted in Form 2 along with the Application in Form 1 and other documents, in duplicate, along with the prescribed fee as given in the First Schedule. The first page of the Form 2 shall contain:

    • Title of the invention;

    • Name, address and nationality of each of the applicants for the Patent; and

    • Preamble to the description.

  2. Description of the invention beginning with a title sufficiently indicating the subject-matter to which the invention relates.

  3. Drawings, wherever required.

  4. Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date.

  5. It may be noted that a Provisional Specification cannot be filed in case of a Divisional, Convention or a PCT National Phase Application. In such cases, filing a Complete Specification is a mandatory requirement.

  6. The complete specification should be filed within 12 months from the date of filing of the provisional application. Failure to comply with this requirement, the application shall be deemed to be abandoned as per Section 9(1) of the Indian Patents Act, 1970.

 

Requirements for non-provisional application:

  1. The complete specification should fully and particularly describe the invention and its operation or use and the method by which it is to be performed;

  2. • Disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

    • End with a claim or claims defining the scope of the invention for which protection is claimed;

    • Be accompanied by an abstract to provide technical information on the invention.

    • If the specification mentions a biological material which is insufficiently described, and if such material is not available to the public, the application shall be completed by depositing the material to an International Depository Authority (IDA) under the Budapest Treaty.

  3. Unity of invention- Section 10(5) of the Indian Patents Act, 1970 states that the claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

  4. Power of authority in Form 26 is required if the patent application is filed through a Patent Agent. In case a general power of authority has already been filed in another application, a self attested copy of the same may be filed by the Agent. In case the original general power of authority has been filed in another jurisdiction, that fact may also be mentioned in the self attested copy.

  5. An applicant must file Form 3 either along with the application or within 6 months from the date of application.

  6. If the applicant is a small entity, he needs to submit Form 28 along with proof of small entity status at every stage where the fee applicable for a small entity is claimed.

Forms

 

Forms

Description

Form 1

Application for grant of patent

Form 2

Provisional/Complete Specification

Form 3

Statement and undertaking u/s 8

Form 5

Declaration as to inventorship

Form 26

Form for authorization of a patent agent/or any person in a matter or proceeding under the act

Form 18

Request for Examination

Form 9

Request for publication (if express publication is desired)

Form 28

To be submitted by a small entity

 

Convention Application:

 

An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is called a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country. The priority date of claims in such an application is the date on which the first application was filed in the Convention country.

 

Documents to be submitted

 

Every convention application shall be accompanied by -

  1. a complete specification;

  2. an abstract;

  3. a complete specification filed with a convention application includes claims in respect of developments or, additions to, the invention in respect of which the application for protection was made in a Convention country.

  4. specify the date on which and the convention country in which, the application for protection, or as the case may be, the first of such applications was made; and

  5. state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.

  6. a certified copy of the priority document has to be filed within 3 months from the date of communication by the Controller, of such requirement. If the priority document is in a language other than English, a verified English translation shall be submitted.

  7. If the applicant is a small entity, he needs to submit Form 28 along with proof of small entity status at every stage where the fee applicable for a small entity is claimed.

 

Forms

 

Forms

Description

Form 1

Application for grant of patent

Form 2

Provisional/Complete Specification

Form 3

Statement and undertaking u/s 8

Form 5

Declaration as to inventorship

Form 26

Form for authorization of a patent agent/or any person in a matter or proceeding under the act

Form 18

Request for Examination

Form 9

Request for publication (if express publication is desired)

Form 28

To be submitted by a small entity

 

PCT National Phase:

 

PCT is an international patent law treaty providing a simple and economical procedure for the applicants seeking protection for their invention in many countries. The PCT has two phases: International and National. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries.

It is necessary for an applicant to file a national phase application in each designated country, where protection is sought for, within the time prescribed under PCT, i.e., within 30/31 months from the priority date. However, this time limit may be increased through National Laws by each member Country. Indian Patent Law provides a time limit of 31 months from the earliest priority date.

 

Filing requirements for PCT National Phase Entry in India:

 

  1. Where the International Application has not been filed or published in one of the official languages (Hindi or English), a translation of the application, description, claims (if amended, both as originally filed and amended together with any statement), drawings, if any, and abstract should be submitted along with the Application.

  2. The title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification. However, if the applicant has amended the Complete Specification under Chapter-I and/or Chapter-II of the PCT, such amended specification shall be taken as the Complete Specification for the purpose of filing in India. The applicant may make a request to the Controller for amendment of the complete specification which was filed with the National Phase Application, as a separate request in Form 13, along with the application. The fee payable in respect of a National Phase Application is calculated as per the number of pages and claims as they stand in the PCT Application on the date of filing in India.

  3. If the applicant makes an amendment for an International Application before International Search Authority (ISA) and/or IPEA, it shall, if the applicant so desires, be taken as an amendment before the Patent Office.

  4. In case of a change in name of an applicant, if the change has occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306), the change may be effected by filing Form 6 and/or Form 13.

  5. Now the Patent Office can retrieve all the documents from WIPO website. You would have noticed that when we file the application online all the documents including RO101, IB304 etc. are instantly fetched.

  6. The applicant shall submit the priority document to the office before the expiry of thirty one months from the date of priority.

  7. Failing to do so, the Controller shall invite the applicant to file the priority document or the translation thereof within three months from the date of such invitation. If the applicant fails to furnish the priority document even after Controller’s invitation, the claim of the applicant for the priority shall be disregarded.

  8. All other formalities that are required for filing and processing an ordinary patent application shall apply to a National Phase Application.

  9. Processing of a national phase Application will not commence before the expiry of 31 months from the date of priority. However, the applicant may file an express request for processing before 31 months, in Form 18. References: Indian Patents Act, 1970

 

For more information on Patent Filing Services in India please write to us at: info@ssrana.com

 

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