Patent Application Filing in India
In accordance with the provisions of the Patent Act, the inventor, his assignee, or legal representative of a 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 the 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 the 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?
- Declaration as to inventorship
- Statement and undertaking
- Proof of right to make an application
- The authorization of an agent
Types of Patent Applications:
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:
- A 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.
- Description of the invention beginning with a title sufficiently indicating the subject-matter to which the invention relates.
- Drawings, wherever required.
- Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date.
- 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.
- 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:
- 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;
- 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.
- 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.
- 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.
- An applicant must file Form 3 either along with the application or within 6 months from the date of application.
- 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.
Applying for a patent in India – Who can file and How?
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person.
The legal representative of any deceased person, who immediately before his death was entitled to file an application for patent, can also apply for the same with the Patent Office.
The application for patent can also be made by virtue of an assignment of the right to apply for a patent for the invention.
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.
The patent application can be accompanied either with complete specification or with provisional specification.
In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application or else the application will be deemed to be abandoned.
There is no extension of time to file complete specification after expiry of the said period.
|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|
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.
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.
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