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Overview
What is Patent filing Application In India
Patent Application filing in India, the law and provisions related to Patents are governed under The Patents Act, 1970, and the Patents Rules, 2003, as may be amended from time to time.
A patent is an intellectual property (IP) right for a technical invention. It allows the owner to prevent others from using your invention for commercial purposes for up to 20 years. You decide who is allowed to produce, sell or import your invention in those countries in which you own a valid patent. You can also trade your patent, e.g. sell it or license the use of your invention.
You can patent products (e.g. Atmospheric Water Generator- Convert Air to Water) and processes (e.g. a method for producing Optic Fibre with Silica). However, the invention must solve a problem in a new, non-obvious, and technical way. In the example of the Atmospheric Water Generator, the problem of shortage of drinking water is solved by industrial application.
Where a Trademark expires in 10 years, a Patent registration expires after 20 years of its registration and the vital step to keep in mind is to ensure that it is renewed regularly and unceasingly. (Section 53, Rule 80 of the Indian Patents Act).
This can be done by the payment of Patent Renewal Fees diligently during the lifetime of the patent i.e. 20 years. The payment of the renewal fees is done to the Indian Patent Filing Office before the expiration of the relevant year.
For example, the renewal fee for the 5th year has to be paid before the expiration of the 4th year from the date of the patent. The renewal fee is payable at the expiration of the 2nd year from the date of the patent and each succeeding year. The patentee can even pay the advance renewal fee for 2 years or more as per the Indian Patents Act.
Advantages of Patent Application Filing In India:
Once approved by the respective country’s patent filing office, it provides the patent owner with the legal rights of monopoly/ right to exclude others from using, -selling, offering for sale, importing – the patented invention in that country, or exporting the patented invention from that country.
If however, a third party flouts the legal rights of the patent owner (infringement) he/she/they can be sued in the court of law for injunction and/or damages (compensation).
Few key advantages of patents are-
- Advantages to individuals/companies/industry over competitors due to monopolistic rights over a certain invention.
- The ability to sell/license the patent to another entity can help researchers to monetize their invention in case they won’t market the invention.
- Increased chances of investments and VC interest in patent-protected – inventions because of the advantage of the monopoly.
- Branding of new and unique technology with the patented status.
- A patented product is likely to improve brand perception and potentially enable your business to charge a premium.
Application Process for Patent Filing In India
The true and first inventor(s), his assignee, or their legal representative – can apply for a patent with a provisional or a complete specification either themselves or through an agent by duly submitting the application form – at the appropriate Patent Filing office In India, there are 4 offices, namely Delhi, Mumbai, Chennai & Kolkata, and depending on the address of the applicant where he resides, his domicile, or has a place of business or the place from where invention originated, the appropriate office will be applicable.
In the case of foreign applicants, who don’t have a domicile, place of business in India, in that case, the place of business, or address for service in India of the patent agent appointed by them is the determining factor for the appropriate office.
The date of the first filing of a patent application is called the priority date. In the patent system of first to file, this date becomes important, since if there are two patents/ patent applications with the same/substantially similar subject matter, the earlier priority date patent application/patent survives the other.
If a filing has to be done in other countries, the priority of the initially filed application (parent application) -can be taken and filed in respective countries/regions. The subsequent applications shall have the same priority date as the parent application and are referred to as family members of the initial application and each other.
The application process is generally similar but the format of application may differ from country to country and the applicant ordinarily cannot file without the professional assistance of a patent agent or attorney in that country/region.
Details Required
- Application form in duplicate (Form 1)
- The provisional or complete specification is in duplicate. After provisional specifications are filed, must be followed by the complete specification within 12 months (Form 2)
- Abstract of the invention in duplicate
- Information & undertaking listing the number, filing date, & current status of each foreign patent application (if such exist) in duplicate (Form 3)
- Priority document (if the priority date is claimed) in convention application, when directed by the Controller
- Declaration of inventor-ship where the provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5)
- Power of Attorney
- Fees (to be paid in cash/ by cheque/ by demand draft)
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Frequently Asked Questions
1. What is the difference between Provisional Patent and Complete Patent specifications?
A complete specification is the regular patent application that is prosecuted, examined, accepted, and granted by the patent office. The complete specification comprises full and sufficient disclosure of the invention along with the best mode of working of the invention and definitive claims enabling the legal boundary of the invention.
However, the patent lawmakers understood that sometimes when the invention is conceived but not fully developed, providing a complete specification is not practically possible and hence they introduced the option of a provisional specification. A provisional specification is required to give only the key novelty and inventive aspect of the invention in an abridged form and may not have claims provided.
Following are few key points concerning provisional and complete patent specification:
1. A complete specification has to be filed within 12 months from the date of filing of the provisional specification; else the patent application shall lapse. In some countries, like India, there is an option of post-dating the 12 months by pushing forward the application date of the provisional but the same is not recommended as the patent system follows the first-to-file priority of patents.
2. Provisional patent specification filing is optional and voluntary. An applicant can also file a complete specification directly without filing a provisional specification.
3. Even though the provisional specification does not have claims, it creates a legal boundary of the invention concerning novelty and inventiveness, and the complete specification cannot be broader in scope compared to the provisional. Hence, the provisional specification also requires careful drafting.
4. More than one provisional application can be combined to form a single complete specification – in case provisional specifications were filed in respect of cognate inventions or where one was a modification of another.
2. What are Steps and Timelines involved in Patent Filing/Patent Registration in India?
Following are the steps involved in patent Application Filing/ Patent registration in India:
- Filing the patent application is the first step for patent registration.
- The patent office then publishes the complete patent specification ordinarily after eighteen months from the priority date. Optionally, a request for early publication can be made whereby publication happens ordinarily within one month of such request.
- The next step in the process is an examination by the patent office. Unlike publication, examination of the patent application is not automatic and request has to be filed within 48 months from the earlier date of priority and filing of the application.
- Once a request for examination has been made, the Patent office issues an examination report to the applicant. Examination of the application is done based on the date of filing of the request for the examination i.e. earlier the request was made for the examination, earlier in the report issued.
- After the issuance of the first examination report, the application is to be put in a condition of allowance within 12 months by waiving the objection and complying with requirements, if any.
- After considering replies to the first or subsequent examination reports and hearing notices if any, the controller grants or rejects the patent application.
- In India, a patent application can be opposed before and after the grant of the patent. A patent can also be revoked under some circumstances. After the grant of the patent, renewal fees have to be paid to keep the patent in force.
- An appeal can be made against the decision of the patent office/controller at the respective High Court.