An application for Patent in India for an invention can be filed by:
1. True and first inventor
2. True and first inventor‘s assignee
3. Legal representative of deceased true and first inventor or his/her assignee.
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Steps for filing an application for Patent in India
An application for a patent in India must contain:
1. An Application to the Patent Office of India for grant of patent made out in Form 01.
2. If the inventor is not making the application for grant of Patent then applicant has to obtain a proof of right from the inventor to file the application. The Proof of Right is either an endorsement at the end of Form 01 or a separate document in the form of an assignment.
3. Provisional/Complete specification in filed made out in Form 02. A Complete specification must indicate the technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Complete specification are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. Complete specification must contains at least one claim that is, information which determines the extent of protection sought by the applicant. See a sample of Complete Specification here.
4. Statement and undertaking under Section 8 is made on Form 03, if applicable. This statement is a document providing information to the Indian Patent Office about applications for grant of Patents made in other jurisdictions for the same invention and the status of these cases.
Under Section 08 for Indian Patents Act, 1970, an applicant must file Form 3 either along with the application or within six months of the date of application.
5. Declaration as to inventorship shall be filed in Form 05 for applications accompanying a Complete Specification or a Convention Application or a PCT application designating India.
6. A Power of authority (POA) made out on Form 26, shall be filed within three months of filing the case in India if the applicant is filing the application for grant of patent through a patent attorney or a Patent agent. If a general power of authority has already been filed for another application, a self attested copy of it may be filed by the patent 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.
7. Priority documents, certified by the Patent office of the jurisdiction where the application for same invention was first filed, are required in the following cases:
a. Convention Application
b. PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made under the PCT have not been fulfilled.
The priority document may be filed along with the application or before the expiry of eighteen months from the date of priority, so as to enable publication of the application. In case of a request for early publication, the priority document shall be filed before/along with such request.
8. Every application for a patent in India shall bear the signature of the applicant or authorized person/Patent Agent along with name and date in the appropriate space provided in the forms.
9. The Specification shall be signed by the agent/applicant with date on the last page of the Specification. The drawing sheets should bear the signature of the applicant or his agent in the right hand bottom corner.
10. If the application for patent in India pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent.
11. The application form shall also indicate clearly the source of geographical origin of any biological material used in the specification, wherever applicable.
12. A request for examination is filed as given in Form 18.
What is the process of prosecuting an application for patent in India?
The process starts after filing an application for Ordinary Patent or PCT National Phase Patent in India.
The applicant may request an immediate publication of his application.
Do note that the application would be examined only after it is published, so filing an early publication request helps in expediting the patent examination process.
If an early publication is requested, then the patent application will be published by the Indian Patent Office, generally, within about 10 days from the date of receiving the request.
If the early publication is not requested, then the Indian Patent Office publishes the patent application after 18 months from the priority date.
Filing a request for examination. The request for examination can be filed within 48 months from the priority date. If no request for examination is filed within the 48 months of priority then the application is ABANDONED by the Patent office. Note that the Indian Patent Office will not examine the patent application, unless this request is filed. Hence, if you wish to expedite the patent process, early filing of the examination request is advised. The request for examination can be filed during the entry in to the Indian National Phase.
Once the Indian Patent Office receives your request for examination, the application would be examined. During the examination of the application, if the Indian Patent Office is of the opinion that your patent application satisfies all the requirement of patentability, then a patent is granted to your invention.
If the Indian Patent Office is of the opinion that the patent application does not satisfies all the requirement of patentability, then a First Examination Report (FER) would be issued.
The applicant needs to respond to the FER within 6 months from the date of the FER. This period may be extended by further three months by making a specific request. After the response is filed, the Patent Office may issue further examination report to overcome still outstanding objections if any.
Do note that issuance of subsequent examination reports by the Patent Office and responding to the same by the applicant must occur within 12 months from the date of the FER.
The applicant may request a hearing with the examiner to overcome the objections of the Patent Office.
After submitting the arguments for showing patentability, filing amendments as required, arguing the case in a hearing with the examiner, the Patent Office can either grant a patent or reject granting of a patent.
If the Patent Office does not grant a patent, then the applicant may appeal against the decision of the patent Office to the Intellectual Property Appellate Board set up for this purpose.
You may directly call on +91.9860588440 or write mail to email@example.com for further information and discussions.
Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.