Patent Opposition Cost in India
The official fees for filing of post grant opposition by natural person or start-up* is INR 2400/-, INR 6000/- for small entity# either alone or with natural person or with start-up and INR 12000/- for others, alone or with natural person or with start-up or with small entity.
The patent opposition cost for pre grant and post grant opposition in India is as under:
|S.no.||On what Payable||Official government fee for e-filing(INR)|
|Natural person(s) and/ or Startup*||Small entity#, alone or with natural person(s) and/ or Startup||Others, alone or with natural person(s) and/ or Startup and/ or small entity|
|1||Filing representation opposing grant of patent (Pre-grant opposition)||No fee||No fee||No fee|
|2||Filing notice of opposition against grant of patent (Post-grant opposition)||2400||6000||12000|
Stages Patent Opposition in India
The Indian Patent Office provides for a period during which third parties may oppose the grant of patent. Opposition proceedings may be pre-grant or post-grant and may be initiated within specified time limits.
Pre-grant Opposition- Under Section 25(1) of the Patent Act, 1970, where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent. The “First Schedule” appended to the Patent Amendment Rules, 2019 provides that there is no fee for filing a pre-grant opposition in India.
Post-grant Opposition- Under Section 25(2) of the Patent Act, 1970, any person interested may give notice of opposition to the Controller in the prescribed manner at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent.
Official fee for filing patent opposition in India can be accessed here.
*The Official fees for filing patent opposition in India depends on the type of opponent/applicant. Professional fees not included.
- Filing Patent Opposition in India?
- Post grant patent opposition in India
- Pre grant patent opposition in India?
- Patent Flow Chart
For more information on Patent opposition cost and Patent opposition procedure in India, please write to us at email@example.com .
Patent Application Filing Cost
The official cost or official government fees for Patent filing in India is calculated on the basis of the type of applicant, no. of pages; no. of claims; and no. of priorities.
The official fee for filing a patent application in India by natural person(s) / individuals and/or Startup is INR 1600/-* for upto 30 pages, 10 claims, and single priority. Extra fees is payable for each additional priority, extra claims and extra pages.
Government official fees for filing a patent application in India by a Small entity alone or with a natural person(s) and/ or with a Startup, is INR 4000/-* for upto 30 pages, 10 claims, and single priority. Extra fees is payable for each additional priority, extra claims and extra pages.
Official fee for filing the patent application in India by a Large entity INR 8000/-*, for upto 30 pages, 10 claims, and single priority. Extra fees is payable for each additional priority, extra claims and extra pages.
|S. No.||On what payable||Official government fee for e-filing (INR)||Official government fee for physical filing (INR)|
|Natural person(s) and/ or Startup*||Small entity#, alone or with natural person(s) and/ or Startup||Others, alone or with natural person(s) and/ or Startup* and/ or small entity||Natural person(s) and/ or Startup*||Small entity#, alone or with natural person(s) and/ or Startup*||Others, alone or with natural person(s) and/ or Startup* and/ or small entity#|
|1||For Preparing and Filing Application for grant of patent (within 30 pages, 10 claims), (as per the requirements of the Indian Patents Act), Statement and Undertaking and Declaration as to Inventorship with the Indian Patent Office (IPO).||1600||4000||8000||1750||4400||8800|
|2||Towards official fee per extra page above 30 pages.||160||400||800||180||480||880|
|3||Towards official fee per extra claim above 10 claims.||320||800||1600||350||880||1750|
Stages Of Patent Applications From Filing Till Grant In India
The various stages involved from filing till grant of patent applications in India are as follows
- Annuity / Renewal
An inventor or applicant can apply for a patent at the head office of the Indian Patent Office or its branches depending upon the jurisdiction i.e. where the applicant resides or has a domicile or has a principle office of business. For foreign applicants, patent applications can be filed at the appropriate office, in whose jurisdiction the address for service or patent attorney’s office is situated.
Publication of Patent Application
Once a patent application is filed, it is published 18 months after the date of filing or the date of priority, (whichever is earlier).
Examination of Patent Application
To initiate examination proceedings the applicant is required to file a request with the Patent Office. If the examination report is adverse to the grant of Patent, the same is communicated to the applicant by issuance of a First Examination Report (FER). The applicant has to overcome the objections raised raised by the controller in the FER within a period of six months from the date of receipt which objections were forwarded to him, or else the application is deemed to be abandoned by the Patent Office.
Grant of Patent Application in India
Post examination after all objections are successfully overcome and the Patent is found in order for grant, the patent is granted as expeditiously as possible with the seal of the Patent Office. Grant of patent is published in the Patent Journal and Letters Patent is issued.
Patent Renewal / Patent Annuity India
A patent is granted for a term for 20 years from the date of earliest priority. Upon grant of patent, the annual patent renewal fees or patent annuity fees has to be paid for each year from the third year onwards. The patent annual renewal fee may be paid for 2 or more years in advance.
The Official Fees for filing for renewal of a patent in India is as follows:
- Natural Person/Startup – INR 800/-
- Small entity – INR 2,000/-
- Large entities / all other entities – INR 4,000/-
Term of Patent In India
Patents in India is 20 years (twenty years) from the date of application or priority date, whichever is earlier.
Annuity fee or renewal fee is required to be paid every year to keep the patent in force.
The First Schedule of Patent Rules provides for the official government fees for patent filing registration cost in India and can be accessed here.
Know more about patent filing registration in India click here.
*The amount mentioned is for online application filing, based on minimum official government fees on the type of applicant, for upto 10 claims, 30 pages and single priority. Professional charges or fees is not included.
For more information on Patent Filing Cost, fees / charges, process and procedure in India please write to us at: firstname.lastname@example.org
The Official Fees for application for revocation of a patent in India is as follows:
- For Natural Person/Startup – INR 2400
- For a small entity – INR 6,000
- For anyone other than small entity – INR 12,000.
The Official Fees for application for compulsory license for a patent is as follows:
- For Natural Person/Startup – INR 2400
- For a small entity – INR 6,000
- For anyone other than small entity – INR 12,000.
The Official Fees for restoration of a patent in India is as follows:
- For Natural Person/Startup – INR 2400
- For a small entity – INR 6,000
- For anyone other than small entity – INR 12,000.
The Official Fees for renewing a patent or filing a patent renewal in India is as follows:
- For Natural Person/Startup – INR 800
- For a small entity – INR 2,000
- For anyone other than a small entity – INR 4,000.
The Official Fees for filing a patent opposition to grant of patent is as follows:
- For Natural Person/Startup – INR 2400
- For a small entity – INR 6,000
- For anyone other than a small entity – INR 12,000.
The Official Fees for amending the address in a patent application in India is as follows:
- For Natural Person/Startup – INR 320
- For a small entity – INR 800
- For anyone other than small entity – INR 1600
The Official Fees for making pre-grant amendment in a patent application in India is as follows:
- For Natural Person/Startup – INR 800
- For a small entity – INR 2,000
- For anyone other than a small entity – INR 4,000.
The Official Fees for requesting for an expedited examination of patent application in India is as follows:
- For Natural Person/Startup – INR 8,000
- For a small entity – INR 25,000
- For anyone other than small entity – INR 60,000.
The Official Fees for every extra sheet over 10 claims during the patent application process in India is as follows:
- For Natural Person/Startup – INR 320 per claim
- For a small entity – INR 800 per claim
- For anyone other than a small entity – INR 1600 per claim
The Official Fees for every extra sheet over 30 sheets during the patent application process in India is as follows:
- For Natural Person/Startup – INR 160 per sheet
- For a small entity – INR 140 per sheet
- For anyone other than small entity – INR 800 per sheet
The Official Fees for requesting for an ordinary examination of patent application in India is as follows:
- For Natural Person/Startup – INR 4,000
- For a small entity – INR 10,000
- For anyone other than small entity – INR 20,000.
The Official Fees for an early publication of a patent application in India is as follows:
- For Natural Person/Startup – INR 2500
- For a small entity – INR 6250
- For anyone other than small entity – INR 12,500.
The Official fees for filing a patent in India is as follows:
- For Natural Person/Startup – INR 1600
- For a small entity – INR 4,000
- For anyone other than a small entity – INR 8000.
The Indian Patent Office has been empowered as an International Search Authority and International Preliminary Examining Authority as on October 15, 2013.
With effect from October 15, 2013, India Patent Office has started functioning as International Search Authority (ISA) and International Preliminary Examining Authority under the PCT.
PCT International Patent Application has to be filed within 12 months from the date of filing in India.
A patent application filed under the Patent Cooperation Treaty (PCT), which is a multilateral treaty and administered by International Bureau (IB), of World Intellectual Property Organization (WIPO) is called an international application, or PCT application.
Section 118 of the Indian Patents Act of 1970 states that if the patent applicant (Indian resident) fails to comply with the clauses of Section 39, “he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.”
PCT International Patent Application along with request form should be accompanied with description; one or more claims, one or more drawings (if any), sequence listing (if any), an abstract and the required fee.
Rule 71 (2) of the Indian Patents Act provides that the Controller ordinarily disposes of the request (except in case of inventions relating to defense and atomic energy applications) within a period of twenty-one days from the date of filing of such request.
The Patent Office, at Kolkata, New Delhi, Mumbai, and Chennai (RO/IN)
It provides for the filing of one patent application (“the international application”), with effect in several States though the grant as per local/regional laws.
Use of the PCT saves effort, time, and work of the applicant seeking protection for an invention in a number of countries.
Use of the PCT also helps the applicant to make decisions about the prosecution of the application before the various national Patent Offices in the national phase of processing.
The time limit provided by PCT for entering the national phase in various countries is 30/31 months from the priority date.
In order to obtain “a preliminary and non-binding opinion on the novelty, inventive step (non-obviousness), and industrial applicability” of the claimed invention, a demand for IPE of an international application may be filed by the applicant with International Preliminary Examining Authority (IPEA).
If no international preliminary examination report has been or will be established, the WO of the ISA will form the basis for the issuance by the IB, of the IPRP (under Chapter I of the PCT), on behalf of the ISA.
The nonbinding written opinion is established along with ISR mainly questions whether the claimed invention appears to be novel, involves inventive step and have industrially applicability.
A competent International Searching Authority (ISA) conducts an international search for the purpose to discover relevant prior art and set out an International Search Report (ISR) along with written opinion (WO) regarding patentability of the Invention.
Filing of the International Application
Supplementary International Search (Optional)
International Preliminary Examination (Optional)
A Foreign filing license can be obtained by disclosing to the Indian Patent Office the subject matter on which patent application is sought to be filed.
Section 39 of the Indian Patents Act, 1970 describes the requirements pertaining to Foreign Filing License (FFL) in India.
To protect national security, IPO requires patent inventors/applicants who are Indian residents to obtain an FFL or a clearance prior to filing a patent application abroad.
By granting Foreign Filing License, the IPO waives off the mandatory requirement of first filing a patent application in India, allowing Indian residents to directly file a patent application outside India for an invention.
As per Section 39 of the Indian Patents Act, 1970, in cases where the person is an Indian resident and he/she decides to directly file a patent application in a foreign country without first filing in India, it is obligatory for him to obtain Foreign Filing License (FFL) from the Indian Patent Office (IPO).
The Indian Limitation Act governs the period of limitation for bringing a suit for infringement of a patent, which is three years from the date of infringement.
The Indian Patent Act under section 109 provides rights alike to the exclusive license holder as that of patentee to institute a patent infringement suit if the act of infringement is committed after the date of the license. The court considers any loss suffered or likely to be suffered by the exclusive licensee before awarding damages or an account of profits or granting any other relief and considers the profits earned by means of infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.
A patent holder can file a suit for infringement in the District Court or High Court.
The Indian Patents Act, 1970, however, is silent as to which courts will have the jurisdiction to hear the case.
The defenses in suits for patent infringement are given under Section 107 of the Indian Patents Act, 1970.
As per the Patents Act, 1970 u/s107A (a), any act of making, constructing, using or selling a patented invention solely for uses reasonably relating to the development and submission of information required under any law for the time being in force, in India, or in a country other than India that regulates the manufacture, construction, use or sale of any product, is not to be considered as infringement.
- Government Use
- Research Exemption
- Supply of Patented Drugs to Health Institutions
- Use of Patented Invention on Foreign Vessels
- Parallel Import
The Patent Act of 1970 (IPA) provides for the enforcement of patents by way of suits for infringement.
The Indian Patents Act 1970 does not specifically define activities that constitute infringement of patents. Section 48 of the Indian Patents Act 1970, however, confers exclusive rights upon the patentee to exclude third parties from making, importing, using, offering for sale or selling the patented invention, patented product or patented process.
On March 9, 2012, India’s first compulsory license (CL) was granted by the Patent Office to Natco Pharma Ltd. for producing generic version of Bayer Corporation’s patented medicine Nexavar, used in the treatment of Liver and Kidney cancer.
The Indian Patent Act was amended on January 1, 2005 and Section 92 (A) was incorporated for grant of CL for export of pharmaceutical products in certain exceptional circumstances.
The Compulsory Licensing of Patent is granted in India under Section 84 of Indian Patent Act, 1970.
The Patent Act provides measures by way of compulsory licensing (CL) to ensure that the patents do not impede the protection of public health and nutrition and the Patent Rights are not abused by the Patentee.
Grant of Compulsory License due to “Non-Working/Unaffordable Prices of Patented Article” (Section 84):
Section 84 of Indian Patent Act pertains to the grant of Compulsory Licences.
Compulsory Licences are granted in order to:
- Prevent the abuse of patent as a monopoly;
- Make a way for commercial exploitation of the patented invention by an interested person; and
- Address the public health concern in India.
Any person interested or already the holder of the licence under the patent can make request to the Controller for grant of Compulsory Licence on patent after three years from the “date of grant” of that patent, on the following grounds:
- reasonable requirements of public have not been satisfied; or
- patented invention is not available to the public at affordable price; or
- patented invention is not worked in the territory of India.
The Controller takes following aspects into consideration while granting Compulsory Licence:
- Nature of the invention, i.e complexity of the technology;
- Time which has elapsed since the grant of the patent i.e. despite of the best efforts by the patentee or licensee since the grant of patent, it was difficult to work out the invention at commercial scale to its fullest before the application of the compulsory licence was filed to the Patent Office;
- The measures already taken by the patentees or any licensee to make full use of the invention;
- Ability of the applicant to work the invention to the public advantage;
- Capacity of the applicant to undertake the risk in providing capital and working the invention, if application were granted;
- Applicant has made full efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period construed as a period not ordinarily exceeding a period of 6 months.
Grant of Compulsory License for the Export of Pharmaceutical Products:
Article 31(f) of the TRIPS agreement undermined the need for availability of medicines to the countries having less or no manufacturing capacity through importation from other countries. WTO adopted a mechanism to resolve this problem by implementing para 6 of the Doha Declaration on the TRIPS Agreement and Public Health on August 30, 2003.
Obligation under Art 31(f) of the TRIPS agreement was thus waived off in case of export of pharmaceutical product to the countries having least or no manufacturing capacity provided the eligible importing members has made a notification to the Council for TRIPS.
The Indian Patent Act was thus amended on January 1, 2005 and Section 92 (A) was incorporated for grant of CL for export of pharmaceutical products in certain exceptional circumstances.
The CL under the said section can only be granted if the importing country has also granted CL or has, by notification or otherwise, allowed importation of the patented pharmaceutical product from India. This condition is not applicable for least developing countries (LCD) having no patent regime. The LCDs is only required to notify the Council of WTO about their willingness to import the pharma product subject to para 6 of Doha Declaration.
India’s First Compulsory License of Patent:
The Controller decided against Bayer on all the three grounds enlisted in the Patents Act for the grant of CL (reasonable requirements of the public not being satisfied; non-availability to the public at a reasonably affordable price, and the patented invention not being worked in the territory of India). While the multinational giant was selling the drug at INR 2.80 lakh for a month’s course, Natco promised to make available the same at a price of about 3 % (INR 8800) of what was charged by Bayer. Natco was directed to pay 6 percent of the net sales of the drug as royalty to Bayer. Among other important terms and condition of the non assignable, non exclusive license were directions to Natco to manufacture the patented drug only at their own manufacturing facility, selling the drug only within the Indian Territory and supplying the patented drug to at least 600 needy and deserving patients per year free of cost.
Aggrieved by the Controller’s decision, Bayer immediately moved to the Intellectual Property Appellate Board (IPAB) alleging that the grant of CL was illegal and unsustainable. The Board rejected Bayer’s appeal holding that if stay was granted, it would definitely jeopardize the interest of the public who need the drug at the later stage of the disease.It further held that the right of access to affordable medicine was as much a matter of right to dignity of the patients and to grant stay at this juncture would really affect them.
The Board’s chief Prabha Sridevan in an open court on March 4, 2013 dictated the order upholding the Controller’s decision for grant of compulsory license on Bayer’s patented drug, Sorafenib Tosylate.
For more information on Compulsory Licensing of Patents in India please write to us at: email@example.com
A patent may be revoked for non-working as per section 85 of Patents Act, 1970, if even after two year from the date of grant of first compulsory license.
As per section 66 of the Patents Act, where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or prejudicial to the public, the patent may be revoked.
The grounds for patent revocation in India are given under Section 64 of the Patent Act, 1970.
A patent can be revoked on petition of any person interested or of the Central Government or on a counter claim in a suit for infringement of the patent by the High Court.
Patent revocation means cancellation of the rights granted to a person by the grant of a patent.
Such statements are required to be submitted to Indian Patent Office in respect of every calendar year within three months of end of each year.
Penalty for non-filing of patent working statements in India
Failure to submit information on statement of working is punishable with fine which may extend up to INR 1million (~ 16291.960 USD).
Further providing false information regarding working of an invention is considered as an offence and is punishable with imprisonment up to six months and a fine, or both.
It is obligatory on the part of the patentee and licensee to submit a statement of commercial working (Form 27) of the patented invention in India to the Controller.
Patents in India are not granted merely to enable patentees to enjoy a monopoly on a patented article, but to encourage inventions and secure that the inventions are worked in India on a commercial scale without undue delay.
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
Indian Patents Act allows the payment of renewal in respect of 2 or more years in advance.
As per the Indian Patents Act and related rules, in order to keep the patent in force, prescribed renewal fee is required to be paid in respect of each year (3rd year onwards) in advance (i.e before the expiration of the succeeding year) to the Indian Patent Office.
In case the patent is granted later than two years from the date of filing of the application, the renewal fee that becomes due in the meantime has to be paid within three months from the date of recording of the patent.
At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of patent, any ‘person interested’ may give notice of opposition to the Controller.
Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent, by way of opposition to the Controller against the grant of patent.
The decision/order of the Controller in respect of the post grant opposition can be appealed before the Appellate board.
The Controller constitutes an Opposition Board and the Board conducts the examination of the patent and submits their recommendation to the Controller. The Controller then fixes a date of hearing and notifies both the parties. After hearing the parties and upon consideration of the recommendations submitted by the Opposition Board, the Controller decides upon the opposition and notifies his decision to the parties giving reasons thereof.
At any time after the grant of patent but before the expiry of period of one year from the date of publication of grant of patent, any ‘person interested’ may give notice of post grant opposition to the Controller.
The Indian Patent Office provides a period during which third parties may oppose the grant of patent.
The term of patents in India is twenty years from the date of application or priority date, whichever is earlier.
When the application for Patent is found in order of grant, the patent is granted as expeditiously as possible with the seal of the Patent Office.
To initiate the examination proceedings the applicant is required to file a request with the Patent Office.
India follows deferred examination system according so the application for patent is not examined unless a request for examination is filed with the Patent Office to initiate examination proceedings.
Once the application for patent is filed, it is published 18 months after the date of filing or the date of priority, (whichever is earlier).
- Filing of the patent application
- Publication of Patent Application
- Examination of Patent Application
- Grant of Patent Application
With the introduction of e-filing, the process became easier, flexible for all user’s- and its relatively faster than manual filing.
- Web based filing system
- Dual way login (Digital Signature as well as Password based) and password regeneration procedure
- Provision for filing of all entries as per Schedule 1 of the Patents Rules, 2003
The Patent (Amendment) Rules 2016 obligate all applicants to file patent application and other subsequent filing online trough comprehensive E-Filing portal.
The online filing of patent services was introduced in India in the year of 2007, which was later updated as the Comprehensive Online Patent Filing Services in the year of 2012.
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 along with the required documents.
Every convention application shall be accompanied by some documents like-
- a complete specification;
- an abstract;
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 application has to be filed in accordance with Section 10 of the Indian Patents Act, 1970. Power of authority in Form 26 is required if the patent application is filed through a Patent Agent. An applicant must file Form 3 either along with the application or within 6 months from the date of application.
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.
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 ordinary application can be provisional application or non-provisional application (not preceded by a provisional application).
There are several documents required for filing a patent application in India. Some of them are:
- Declaration as to inventorship
- Statement and undertaking
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. 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 applicant, at any time before the grant of a patent can file a further application, if he so desires or if an objection is raised by the Controller on the ground that claims of the complete specification relate to more than one invention. The date of filing of a divisional application is same as that of the main application, from which it has been divided.
Under section 16 of the Patents Act, a divisional patent application is one which has been “divided” from an existing application.
The date of filing patent of addition shall be either same or later than the date of filing main patent application.
As per section 54 of the Patents Act, Patent of addition is an application where the invention is a mere modification or improvement of an already filed patent application.
The applicant has a time limit of 30/31 months from the date of earliest priority to file National Phase Entry Application in the designated countries. PCT National Phase Patent application designation India can be filed within 31 months from the date of the earliest priority.
PCT National Phase Patent Application in India is an international filing system in which the applicant gets an international filing date in all the designated countries.
As per Section 135 of Indian Patents Act when an applicant files the application for a patent – claiming – priority date based on the same or substantially similar application(s) for patent filed in one or more of the convention countries, is called as convention application.
A provisional application is filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting complete description of the invention.
An application for patent filed with the Patent Office without claiming priority from any application or without reference to any other application under process in the Patent Office is called an ordinary application.
- Ordinary Application
- Provisional and Complete Application
- Convention Patent Application
- PCT National Phase Patent Application in India
- Application for Patent of Addition
- Divisional Application
Section 10 of the Indian Patents Act, 1970 specifies that:
- Fully and particularly describe the invention and its operation;
- Disclose the best method of performing the invention;
- Define the scope of invention; and
- Provide technical information on the invention.
Patent drafting is a process of writing of patent claims, specifications, and drawings which plays a pivotal role during the course of its prosecution, management and maintenance.
Patent Landscape helps to get an overview of a particular technology or domain, its evolution, the competitors or chronological development in the domain and provide details on latest trends and specific developments in the industry.
Once a Prior Art search is conducted, it will clearly mention the technical problems associated with the existing technology and the solution for that, bringing out the differences between the claimed invention and prior art.
Prior Art search is conducted so as to determine the status of a technology in reference to development in the field and to bring out the necessity of the current invention.
In Novelty & Patentability Search, it is necessary that all the features of the independent claims should be described within a single document.
Patent Novelty & Patentability Search is a prior art search often conducted to determine if an invention meets the criterion of patentability in terms of novelty and non-obviousness.
FTO includes a comprehensive search and analysis of patent literature i.e. un-expired patents and published patent applications.
Freedom to Operate (FTO) search is also known as Right to Use search. The companies prior to making huge investments perform FTO search in order to ensure that the commercial production, marketing and use of their new product, process or service does not infringe the intellectual property rights of others.
The application queued for Expedited Examination is allotted to an examiner, the procedure to be followed is illustrated in the flow chart below.
What is the Fee for Filing Conversion from Request for Ordinary Examination to Request for Expedited Examination of Patent in India?
The fees for conversion from request for ordinary examination to request for ExpeditedExamination is listed in the table below:
|S. No.||Entity||Official Fee (INR)|
|1||Natural person(s) and/or Startup||4000|
|3||Other than small Entity||40,000|
The fees for filing for an Expedited Examination is listed in the table below:
|S. No.||Entity||Official Fee (INR)|
|1||Natural person(s) and/or Startup||8000|
|3||Other than small Entity||60,000|
Is Publication of Patent Application Mandatory before Requesting Expedited Examination of Patent in India?
According to Rule 24C (3) of the Patent (Amendment) Rules, 2016, a request for Expedited Examination must be accompanied by a request for publication, unless the application has already been published or the request for publication has already been filed.
Hence, in order to file a request for expedited examination, the application must be published or a request for publication must have been filed or it can be filed along with the request for expedited examination.
Conversion of Ordinary Examination Request to an Expedited Examination Request for Patents in India
If a qualifying applicant has already requested for ordinary examination even before Expedited Examination option was made available, such request can also be converted into request for Expedited Examination by paying the relevant balance fees and submitting requisite documents as required to qualify the criteria of applicant as mentioned above.
The primary advantage of Expedited Examination of patent is that the applications for which Expedited Examination is requested are allotted to a separate queue, which is different from the ordinary examination queue, which contains huge number of applications awaiting examination.
Hence, the applications for which Expedited Examination is requested undergo faster examination process than the applications that have been queued for ordinary examination.
A request for Expedited Examination of patent may be filed by:
- Patent Co-operation Treaty (“PCT”) applicant nominating the IPO as its International Searching Authority (“ISA”) or as an International Preliminary Examining Authority (“IPEA”) in the corresponding international application; or
- A Startup
With the amendment to the Patents Rule, 2003 of the Indian Patents Act, 1970 on May 16, 2016 by Patent (amendment) rules, 2016), provision of Expedited Examination was introduced in the Patent system of India.
Meaning: An Expedited Examination is a faster process of examination of patent application than the ordinary examination.
Process: A request for Expedited Examination may be filed by an applicant, requesting the Indian Patent Office (IPO) to expedite the examination of the relevant patent application.
As per Rule 24C of the Patent Rules as amended in 2016, a request for Expedited Examination can be filed only by electronic transmission duly authenticated with the prescribed fees in Form 18A within 48 months of the date of priority of the application or the date of filing the patent application, whichever is earlier.
In order to claim the fee benefit under the Small Entity category, an official form -Form 28 prior to submitting any other form /fee in case of subsequent filing or along with the Application for Grant of Patent in case of New Application is required to be filed with the Indian Patent Office (IPO). However, no official fee is required to be paid in respect of filing the Form 28 for claiming Small Entity status.
The criteria for “Small Entity” as specified under Micro, Small and Medium Enterprises (MSME) Development Act, 2006 is as follows:
– in the case of enterprises engaged in the manufacture or production of goods, the investment in plant and machinery does not exceed Rupees One Hundred Million i.e. INR 100,000,000;
– in the case of enterprises engaged in providing or rendering of services, the investment in equipment does not exceed Rupees Fifty Million i.e. INR 50,000,000.
For calculating the investment in plant and machinery, the cost of pollution control, research and development, industrial safety devices and such other items as may be specified, by notification, shall be excluded.
The evidence/supporting documents is required to be filed along with the Form 28 with the Indian Patent Office to claim the benefit under the Small Entity status:
As far as Indian entities are concerned, it would be required for them to furnish the evidence of registration under the Micro, Small and Medium Enterprises Act. That is the document substantiating that the company is registered as MSME with the Government of India shall be required to be filed as evidence.
However, in case if in countries outside India, the government provides such provisions of registration as the Small Entity, then the Certified Copy of the said registration shall suffice in this regard. Otherwise the company may be required to furnish its Financial Statements to substantiate that it meets the criteria as specified under Micro, Small and Medium Enterprises Development Act, 2006.
The International Patent Application through PCT, designating countries of interest can directly be filed at the Indian Patent Office with India as the receiving office. Four copies of the International Application is required to be filed with the Patent Office.
The Patent Office prepares the certified copy of the priority documents and the same is transmitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
A search copy is also sent to the International Searching Authority (ISA). The ISAs conduct and issue search report on the patentability of the invention. The applicant may also consider examination of his application by the International Preliminary Examination Authority.
Depending upon the favorability of International search report and International Preliminary Examination report on Patentability the patent application may enter the national phase of the designated countries.
The benefit of delayed processing is enumerated below:
- By the end of the 20th to 31st month the applicant is in a better position to assess the quality of the invention being protected as a detailed search report or an examination report or both would be available to help making an assessment.
- Applicants can re-evaluate their decision about filing applications in all the designated countries
- The applicants may decide to drop a few countries from the list depending upon the changing market conditions.
- Applicants can delay their investment in respect of the national phase or the regional phase applications by 20 to 31 months without the risk of sacrificing priority.
A search report on the patent application filed with a receiving office is received by the applicant/inventor 16 months after the priority date.
The International Bureau (IB) of the WIPO publishes the application and the search report 18 months after the priority date.
The original application is then sent to the designated offices indicated in the application. Within two months of this i.e. by the 20th month, the applicant will have to formally apply to the patent offices of these countries for grant of patents by paying official fees and completing other formalities stipulated by these offices. In case translated copies of the application are required, the same has to be furnished by the applicant.
Inspite of submitting the request for grant of patents in designated countries in the 20th month after the priority date, the priority in these countries is the same as the date of filing the original PCT application.
If applicant/inventor has requested for an examination report, the report is usually received by the applicant /inventor about 28 months after the priority date. Within two months of this, the applicant/inventor will have to formally apply for grant of patents in designated countries .The priority of the application is maintained in the designated countries.
The patent office designated by the contracting state becomes a receiving office for receiving patent applications. These applications are referred to International Searching Authorities (ISA) to carry out the patent search on a global basis.
In case the receiving office is also an ISA, a separate referral is not required. There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA.
In order to protect the invention in other countries, an applicant is required to file an independent patent application in each country of interest within a stipulated time to obtain priority in these countries. This entails a large investment to meet costs towards filing fees, translation, attorney charges etc.
Additionally due to the short time available, the decision of filing the patent application in other countries is generally not well founded.
Applicants of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest; thus saving the initial investments towards filing fees, translation etc.
The PCT system also provides much longer time for filing patent application in member countries. Under the PCT, the time available could be as much as minimum 20 and maximum 31 months.
Further, an inventor is also benefited by the search report and preliminary examination report prepared under the PCT system to be sure about the novelty and patentability of the invention.
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970 and entered into force in 1978. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.
Thus an inventor of a member country can simultaneously obtain priority for his Invention in any or all of the member countries, without having to file a separate application in the countries of interest, by designating them in the PCT application. India joined the PCT on December 7, 1998.
The activities of the PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva.
Paris Convention ensures the following to its signatories:
Right of priority
Independence of patents
Protection against false indications and unfair competition
Additionally there are a number of international conventions and treaties, which are open only to the members of the Paris Convention. Some of these are enlisted below:
- Patent Cooperation Treaty (PCT)
- Budapest Treaty
- Madrid Agreement
- Madrid Protocol
- Hague Agreement
TheParis Convention for the Protection of Industrial Property, signed in Paris,France, on March 20, 1883, was one of the first intellectual property treaties. It is an international convention for promoting trade among the member countries and was devised to facilitate protection of industrial property simultaneously among member countries without any loss in the priority date.
All the member countries provide national treatment to all the applications from the other member countries.
The Convention has been revised several times since its inception. India became a member of the Paris Convention on December 7, 1998.
In India, does grant or refusal of a patent over here has implications on its grant or refusal in another country?
Grant of patent is governed by the territorial laws of each country, thereby implying that each country is free to grant or refuse a patent on the basis of their national laws. Granting a patent in one country does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated other countries.
Patents like other Intellectual Property Rights are territorial in nature and therefore are effective only within the territory of India.
However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India.
Separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.
Conditions necessary in India to deposit biological material in the international depository authority
If the invention, for which application for patent is filed, uses a new biological material it is essential to deposit the same in the International Depository Authority (IDA) in order to supplement the description. In India, the following two institutes have acquired the status of an international depositary authority:
The Institute of Microbial Technology (IMTECH) located at Chandigarh is the International Depository Authority in India.
International Depositary Authority, Microbial Culture Collection (MCC), National Centre for Cell Science (NCCS), University of Pune Campus, Ganeshkhind, Pune-411007, Maharashtra.
The Act provides that in any person resident in India who wishes to file an application for grant of patent outside India has to first file the application in India not less than six weeks before filing the application abroad. However he is required to take permission from the Controller (by filing request on Form 25) if he wishes to first file the application in any country outside India.
A patent can be maintained by paying renewal fee every year. If the annuity is not paid, the patent will cease to remain in force and the invention becomes open to public.
The term of every patent granted under the Patents Act is 20 years from the date of filing of the application for Patent.
The date of Patent is the date of filing the application for patent, accompanied either by provisional or complete specification. In case of a convention or PCT application the priority date is taken as the date of Patent.
The patent applicants usually mark their articles with such words after filing application for patent to make the public aware that a patent application has been filed in respect of that invention. The use of such words by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated. However the infringement action can be initiated only after the patent is granted.
The Patent office Journal comprises information pertaining to patent applications which are published under section 11A, post grant publication, restoration of patent, notifications, indexes, list of non-working patents and notices Issued by the Patent Office relating to Patents, etc.
Yes a post-grant opposition can be filed by person interest after the grant of Patent but before the expiry of one year from the date of publication of grant of Patent in the official journal of the Patent Office.
The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.
Yes a pre-grant opposition can be filed by any person anytime after the publication of the application under section 11A but before the grant of patent.
The grounds for filing pre-grant opposition are contained in section 25(1) of the Patents Act 1970.
Once the application for patent is examined, the Patent office generally issues an examination report to the applicant. Such examination report is known as First Examination Report (FER).
The applicant is given twelve months period from the date of issuance of the FER to comply with the objections raised in the FER. If the applicant is not able to meet the requirement within 12 months, or does not submit the documents which were sent to him for compliance within the said period, the application is deemed to have been abandoned.
If the application is found to be in order for grant, the patent is granted and the letters patent is issued to the applicant.
However if a pre-grant opposition is filed or pending, further action is taken after disposition of the pre-grant opposition.
An express request for examination before expiry of 31 months can be made in respect of the applications filed under Patent Cooperation Treaty known as National Phase applications by payment of the prescribed fee.
The patent application is examined only after receipt of the request of examination is made by the applicant or any other person interested. Such a request is made on Form 18 along with the fee specified in the first schedule of the Patents Act.
The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier. If the request is not made within the stipulated time, the application is deemed to be withdrawn by the applicant.
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. The Patent Office publishes the application after receiving such request within a period of one month provided the invention contained thereon does not relate to atomic energy or defense purpose.
The applicant of the patent has the like privileges and rights as if the patent for the invention has been granted on and from the date of publication of application.
However the applicant is not entitled to institute any proceedings for infringement until the patent has been granted.
Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published.
- Application in which secrecy direction is imposed
- Application which has been abandoned u/s 9(1) and
- Application which has been withdrawn 3 months prior to 18 months
The publication of every application includes the particulars of the date of application, number of application, name and address of the applicant and the abstract.
The Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in a exhibition organized by the Government or disclosure before any learned society or published by applicant. The details conditions are provided under Chapter VI of the Patents Act (Section 29-34)
Publication of an invention before filing of a patent application would disqualify the invention to be patentable as the disclosure of invention by way of publication is detrimental to novelty of the invention.
Hence, inventors should not disclose their inventions before filing the patent application. The invention should be considered for publication after a patent application has been filed.
However the Patents Act does specifies certain conditions under which a grace period of 12 months for filing application is given even after publication.
Right time for Filing a Patent Application
Filing should be completed at the earliest possible date and should not be delayed.
Delay in filing an application may entail following risks:
- Other inventors might forestall the first inventor by applying for a patent for the said invention
- There may be an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.
Therefore it is imperative that the application is filed before it is made public and used publicly.
If an applicant is negotiating with a company, it is advisable that Non-Disclosure Agreement (NDA) be executed so that the invention is kept confidential and its novelty is not destroyed.
Filing of patent application – Electronic or physical
With the introduction of online filing of patent applications in 2007 and its further upgradation to Comprehensive Patent filing services in 2012, a patent application can now be filed electronically. The Indian Patent Office has put in place an online system for this purpose. Amongst various features, the highlights of this system include:
- Digital Signature as well as Password based login
- Proper Validations with IPO Patent database
- Web based system
- Improved procedures to minimize transaction errors
- User Profile
More information related to online application is available on the website of Patent Office i.e. www.ipindia.nic.in
To read more about patent law in India, click on the links below:
There are two kinds of patent specifications in India
It is a patent document filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. It is a permanent and independent scientific cum legal document and no amendment is allowed in this. It is a document of record and it cannot be amended by adding new matter to it once it has been filed.
The document should contains the following:
- Written description
- Drawings, if necessary and
- Claims (optional.)
A patent is never granted on the basis of a provisional specification. It has to be a followed by a complete specification within 12 months from the date of its filing for obtaining a patent for the said invention. Filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance. If there aren’t any significant changes the applicant can also file the same provisional specification as complete specification within 12 months
It is a techno-legal document containing full scientific details of the invention and claims to the patent rights. In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed. The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention.
The contents would include the following
- Title of the invention.
- Field to which the invention belongs.
- Background of the invention including prior art giving drawbacks of the known inventions & practices.
- Complete description of the invention along with experimental results.
- Drawings etc. essential for understanding the invention.
Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore, the claims have to be drafted very carefully
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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.
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.
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.
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Sections 3 and 4 of the Patents Act 1970 specify the inventions that are not patentable in India. These are:
- An invention which is frivolous, or which claims anything obviously contrary to well established natural laws;
- An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
- The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
- The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
- A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
- The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
- A method of agriculture or horticulture;
- Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
- Plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
- A mathematical or business method or a computer programme per se or algorithms;
- A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
- A mere scheme or rule or method of performing mental act or method of playing game;
- A presentation of information;
- Topography of integrated circuits;
- An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components
- An invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962
Read more about inventions in India by clicking on the links below:
Indian Patents Act, 1970
In relation to an invention, industrial applicability means that the subject matter of the invention must be capable of being made or used in any kind of industry. Industry in this connection is understood not in the legal or economic meaning but in the primary signification of action or enterprise of fashioning and utilizing nature and matter for the production of goods or of technical results. Thus industry means any kind of activity including agriculture.
Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not-obvious to a person skilled in the art.
Patents Act, 1970 defines an invention under Section 2(j). It is defined as a new product or process involving an inventive step and capable of industrial application. Further it also defines new invention under Section 2(l) as any invention or technology in respect of a product or process which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of the patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.
An ‘inventive step’ can be understood as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not-obvious to a person skilled in the art. Further Industrial Applicability means that the subject matter of the invention must be capable of being made or used in any kind of industry.
Read more about filing a patent application in India by clicking on the links below:
Patent filing fees & forms
Patent Prosecution Flowchart
For more information on ‘Patentability Criteria under the Patents Act 1970 in India’, write to us at firstname.lastname@example.org
In order to be a patentable subject matter, the new invention is required to meet the following patentability criteria:
- It should be novel.
- It should have inventive step or it must be non-obvious
- It should be capable of Industrial application.
It should not fall within the provisions of sections 3 and 4 of the Patents Act 1970.
In simple words, Patents can be understood as ‘an exclusive statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention‘.
Patents are a type of statutory rights which give monopoly to exclude others, from making, using, selling, offering for sale or importing the patented product or process for producing that product for the aforementioned purposes without the consent of the patentee.
Further, the legal definition of Patents can be found under Section 2(1)(m) of the Indian Patents Act 1970 as ‘a patent for any invention granted under this Act’. Invention is also defined under Section 2(1)(j) of the Indian Patents Act 1970 as ‘ a new product or process involving an inventive step and capable of industrial application’.
In order to be a patentable subject matter, the invention is required to meet the following patentability criteria:
- It should be novel.
- It should have inventive step or it must be non-obvious
- It should be capable of Industrial application.
- It should not fall within the provisions of sections 3 and 4 of the Patents Act 1970.
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