Introduction Intellectual Property is a way of protecting technologically invented rights. Various forms of creation…
Well, this is something for which we have been getting queries on regular basis from individual inventors, universities and companies in India as well as outside India. This article comprehensively addresses all the procedural issues which normally applicant faces while patenting invention in India. Though this article focuses on the procedural aspects, it is always a good idea to start a discussion with basics. Patents are territorial rights which mean to secure invention in India, one has to get it patented in India. No regional patent applies to India. It is to be noted that patent does not confer on the patentee positive rights rather it confers on the patentee negative right i.e. right to exclude other from doing certain acts (see section 48 of The Patents act, 1970 (hereinafter referred to as ‘act’)).
We will address all the procedural aspects in Question and Answer format.
- Who may apply for patent?
True and first inventor, his assignee or legal representative of either of them after their death (According to section 6 of act)
- Where to apply?
Kolkata (Head Office), Mumbai, Delhi or Chennai depending on the jurisdiction of which applicant resides, has domicile or place of business in India (first applicant in case of joint applicants) or the place where invention originated or patent attorney’s office is situated (in case of foreign applications). When applicant does not have a place of business or domicile in India, address for service in India needs to be submitted.
- Types of application:
- Provisional application: This is to be filed when inventor is not ready with the complete details of the invention but wants to secure the priority date. Claims may be filed with (though we at Khurana & Khurana do not recommend it) provisional application.
- Complete specification: It has to be filed within 12 months from the date of filing of provisional specification, failing of which will cause application to be abandoned. It may be filed directly (without filing provisional specification) when the applicant is ready with the complete details of the invention. Every convention application, application filed under Patent Cooperation Treaty, divisional application has to be filed with complete specification. According to section 135 of the act, for same or substantially same application (s) for patent filed in convention countries, application for patent may be filed in India by the same person who has filed application in convention country or his legal representative or his assignee, which is known as convention application within 12 months from the date of priority of the application filed in convention country. National phase application under Patent Cooperation Treaty may be filed designating India within 31 months of the date of priority. This period of 31 months and period of 48 months within which request for examination has to be filed are non-extendable. As one application for patent can only be filed for a single invention or a group of closely related invention, if claims of the complete specification relate to more than one invention, applicant if he so desires or with a remedy the objection raised by the controller, may file a further application known as divisional application at any time before the grant of the patent. For filing complete specification, applicant needs to submit form 1 (application for grant of patent), 2 (provisional/complete specification), 3 (statement and undertaking u/s 8), form 5 (declaration of inventorship), form 26 (form of authorization of patent agent), and form 28 (to be submitted by small entity) along with other documents. Form 9 needs to be filed if early publication is desired. Form 18 needs to be filed for examination or express request for examination. These forms need to be filed either with the application or within prescribed time period.
- What is patent of addition?
It is the application made by the applicant or patentee of the main invention for any improvement in or modification of the invention disclosed in the complete specification therefor. Reader is further advised to click here for an interesting and knowledgeable article on patent of addition.
- Is there any period during which pre-grant can be filed for sure?
Pre-grant opposition can be filed any time after the publication of the application till the grant of the patent. According to rule 55 (2003 rules), no patent shall be granted before the expiry of a period of 6 months from the date of publication so during this period pre-grant opposition can be filed for sure.
- Who may file request for examination and what is time allowed for putting application in condition of grant?
It may be filed by the applicant or any other interested person but examination report is sent to the applicant only. In case request for examination was made by the any other interested person then intimation of examination is sent to such other interested person. The time for putting an application in order for grant is twelve months from the date on which first examination report is issued to the applicant.
- Is it possible to file pre-grant opposition even though there is no request for examination filed?
Yes, it is possible to file representation for pre-grant opposition even though no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period. As representation for pre-grant will be considered only when a request for examination is received within the prescribed period, one can choose to file request for examination as ‘any other interested person’ so that one does not need to wait till applicant files request for examination. This will help to expedite the process and decide the fate of patent application.
- What is the relevant date from the infringement perspective?
Though suit for infringement can only be instituted after the grant of patent, patentee shall have privileges as if it is patent was granted on the date of publication of application.
- We have summarized below important timelines and also compared and contrasted different procedures involved in the patenting in India.
A graphical representation of the procedure of patenting in India
- In case, secrecy directions have been given in respect of any application, then application shall be published after the expiry of 18 months or the expiry of such directions, whichever is later.
- If request for examination is not made within applicable time limit, then application is treated as withdrawn by the applicant.
- In case, secrecy directions have been given in respect of any application, then request for examination has to be made within 48 months from the date of priority or date of filing of the application, or 6 months from the date of revocation of the secrecy direction, whichever is later.
- In case of divisional application, request for examination has to be filed within 48 months from date of filing or priority of first mentioned application, or within 6 months from date of filing of further application, whichever expires later.
Table 1: Comparison of procedures for publication and Examination of patent application
* Request is compulsory for early publication and needs to be made in form 9.
**The patent office does not commence the processing of an application filed corresponding to international application designating India before the expiry of 31 months from the date of priority, unless express request is made in form 18.
Table 2: Comparison of procedures for Pre-Grant and Post-Grant opposition to patent application
While filing for pre-grant opposition has no charges, post grant opposition can be done only on charges.
- Payment of annuity:
No annuity/maintenance/renewal fees needs to be paid for first 2 years out of 20 years of term of patent. According to section 53 (2) of the act, renewal fees needs to be paid in order to keep patent in force at the expiration of 2 years or subsequent years from the date of patent which shall be renewal fees for the third year or subsequent year. It means that maintenance fees needs to be paid in nth year in respect of nth plus 1 year. According to section 142 (4) of the act, where a principal patent is granted later than 2 years from the date of the filing of the application, the fees which have become due in the meantime may be paid within a term of three months from the date of the recording of the patent in the register or within the extended period not later than nine months from the date of recording. Renewal fees due in respect of 2 or more years may be paid in advance. Extension of period to pay fees up to 6 months can be sought in form 4. This period of six months is not extendable.
- Costs involved in the patenting in India:
They can be divided into statutory fees and attorney fees.
For physical filing, 10% additional fees have to be paid more than e-filing. In other than natural person(s) category, fees for small entity fees are half to those entities which are not small entities.
These charges vary from attorney to attorney and task to be done. Attorneys also vary charge depending on whether client is Indian or foreign. For Indian client, generally charges by attorneys for preparing patent application are INR 20 to 50 K, for patent searches are INR 15-20 K, for responding to examination reports are INR 15-20 K, for filing pre-grant opposition are INR 25-30 K.
For foreign client, generally charges by attorneys for preparing patent application are US$ 450-500, for filing reply to objection raised by patent office are US$ 600-800, for attending hearing and replying to hearing notice are US$ 600-800, for drafting and filing opposition are US$ 600-800. It is to be noted that quoted charges are just for general idea and actual charges may vary. Khurana and Khurana also helps clients with other patent related tasks than those mentioned above for quoting charges. Quoted tasks and charges are just exemplary. To know the charges of our firm, please contact us at the contact details given at our site.
Khurana and Khurana has on board patent agents who are experienced, are qualified to practice before patent office and are well versed with all the procedures of patenting. Khurana and Khurana would be obliged to help you with any patenting issues.
It is to be noted that patent (amendment) rules 2015 are not taken into consideration as said rules are still into draft stage.
About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: [email protected].