Patents can be classified under three categories depending upon their priority claim.
1. Ordinary patent application
2. Conventional patent application
3. PCT national phase patent application
Once a Patent Application is filed in India, depending upon unity of invention, the further applications relating to modification of the said Patent can be classified as follows:
1. Divisional Patent
2. Patent of Addition
Patents Specification can be classified under three categories depending upon their content.
1. Provisional Specification
2. Complete Specification
However, it is to be noted that all conventional and PCT national phase applications have to be filed with complete specification.
Ordinary Patent Application in India
Ordinary patent application in India can be filed in India along with either a provisional or a complete specification. Ordinary Patent Application is further distinguishable from other patents that it does not claim any priority from any other application. The Specification is a technical disclosure statement relating to the invention that enables any person ordinarily skilled in the art to perform the invention. Specification begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. It is not mandatory for a Provisional application to contain claims and must be followed with a complete specification within 12 months.
The basic mandatory requirements for filing an ordinary patent application in India are as follows:
1. Name, address, particulars and nationality of all the applicant/s
2. Name, address and nationality of all the inventor/s
3. Provisional specification or complete specification
4. If small entity status or start up status is claimed, supporting documents in support of such status
Other filing requirements for Ordinary Patents India:
1. Power of authority (needs to be stamped with stamp fee in India, notarisation and legalisation not necessary)
2. Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification.
3. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application, where Applicant is different from the inventor/s.
4. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India. If no such application is filed, then a statement to that effect should be filed.
Convention Patent Application in India
Convention Patent Application claims priority from a convention application and has to be filed in India within 12 months from date of priority and is accompanied by a complete specification.
The basic mandatory requirements for filing a conventional patent application in India are as follows:
1. Name, address, particulars and nationality of all the applicant/s
2. Name, address and nationality of all the inventor/s
3. Complete specification in English
4. Details of Priority Application i.e. Country, date of filing, Application no., title of invention, name of Applicant and IPC Code.
5. If small entity status or start up status is claimed, supporting documents in support of such status
Other filing requirements for conventional Application in India:
1. Power of authority (needs to be stamped with stamp fee in India, notarisation and legalisation not necessary)
2. Declaration as to inventorship within 1 month of filing application.
3. Certified copy of Priority document to be filed within 3 months from the date of filing of the Application
4. English translation of the Priority document along with certificate of translation and verification in support to be filed within 3 months from the date of filing of the Application
5. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application, where Applicant is different from the inventor/s.
6. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
PCT National Phase Patent Application
PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within 31 months from date of priority and accompanied by a complete specification. The PCT National phase must be identical to the PCT Application (As amended and available on WIPO). However only deletion of claims is allowed. Any amendment in any of the details can only be made after national phase is entered into India. Where
The basic mandatory requirements for filing a PCT national Phase patent application in India are as follows:
1. Name, address, particulars and nationality of all the applicant/s
2. Name, address and nationality of all the inventor/s
3. Complete specification in English along with certificate of translation
4. Details of Priority Application i.e. Country, date of filing, Application no., title of invention, name of Applicant and IPC Code.
5. Details of PCT Application i.e. date of filing, Application no., title of invention
6. If small entity status or start up status is claimed, supporting documents in support of such status
Other filing requirements for PCT national phase Application in India:
1. Power of authority (needs to be stamped with stamp fee in India, notarisation and legalisation not necessary)
2. Declaration as to inventorship within 1 month of filing application.
3. PCT/IB/304 Certified copy of Priority document to be filed within 31 months from priority date
4. English translation of the Priority document along with certificate of translation and verification in support to be filed within 31 months from the date of priority
5. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application, where Applicant is different from the inventor/s.
6. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
Provisional Specification in India:
While filing ordinary application in India it is advisable to file provisional specification to claim priority as to the content/disclosure, as the drafting to completer specification in a particular format along with claims may take time. There is no specific format for provisional specification and it can be filed without any claims. Within 12 months of filing of provisional specification, the complete specification has to be filed or within such extended time as may be allowed on specific request to Controller.
Complete Specification in India:
Unlike provisional specification complete specification must be filed in a particular format along with claims. The conventional and/or PCT national phase application must be filed with the complete specification.
Divisional Patent Application in India:
Where the patent disclosure contains more than one invention, it is possible to file a divisional application in respect of distinct invention lacking unity. The divisional Application can either be filed at direction of the Controller of Patent or voluntarily. For divisional Application, the request for examination must be filed either within 48 months from earliest priority or within 6 months of filing the divisional application, whichever later.
Patent of Addition in India:
Where the patent disclosure relates to any development/ modification of the same invention earlier filed by the Applicant, It is possible to file a Patent of Addition. Request for Patent of additional can be filed either voluntarily or on direction of the Patent office. It is generally filed to overcome anticipation by any earlier application of the same Applicant. No annuity fee is payable after a Patent has been declared as Patent of addition and it terms coincides with the term of original Patent.
Categories of Applicant in India:
There are 4 categories of Applicant in India
(1) Natural Person/s;
(2) Start up
(3) Small Entity and
(4) Other Entity.
All non-natural person fall under either other entity by default. To claim “start up” status a certificate from DIPP is required and the start up status is valid for 5 years only. However, to claim small entity Form 28 along with evidence in support of small entity status has to be filed. In case of Indian Applicants, such document is Registration certificate under Small Scale Industries. While for applicants based in other countries they need to submit document that verifies or establishes that Applicant's whose investment in plants/ machines in case indulged in manufacturing/ production of goods is less than 10 crores and in case indulged in service industry the investment in equipment is less than 5 crores. It is to be noted that while calculating investment in plants and machinery, the cost of pollution control, research and development, industrial safety devices, and such other things specified under THE MICRO, SMALL AND MEDIUM ENTERPRISES DEVELOPMENT ACT, 2006 is to be excluded. Foreign entity could file a duly notarised affidavit to that effect to claim small entity status.
Discount in Official Fee for Patents in India:
India allows discount in official fee to natural person, start up as well as small entity. When the patent application is assigned to non-natural person (small entity, start up or other than small entity), the entire discounted fee has to be paid at the time of registration of assignment. If start up or small entity status is claimed, the document in support must be filed along with the Application. While paying any fee, every time document in support of small entity or valid document in support of start-up continuance is to be filed.
Patent offices in India
There are four patent offices in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. In respect of a foreign applicant the application has to be filed before the patent office within whose territorial jurisdiction the agent/ attorney for applicant is located. Even if there is change in attorney in respect of any application for foreign application in India, any divisional Application must be filed within the same patent office where the patent Application was filed.
Patent Prosecution in India
Please note that as per recent internal procedures issued by the Controller General of Patents, the patent applications shall only be published if the power of Attorney is filed with the application or before or within 3 months of requisitions made by the Controller. Further Abstract should be as per the Indian Patent Law and Practice and the specification should by in Hindi or English only then the application shall be published. The Controller shall issue a letter to this effect and within 3 months same should be rectified to allow the application to proceed towards publication in India. Publication is important as in India right accrues from the date of publication of Application in India.
Patent prosecution in India includes the following stages:
1. Filing of patent application
2. Publication of patent application on request or after 18 months from date of filing or priority whichever earlier
3. Filing of request for Examination within 48 months from date of application or priority whichever is earlier
4. Issuance if First Examination Report containing all the objections to grant of patent for complying within 6 months from date of issuance of same
5. Responding to the examination report and compliance
6. Issuance of further Examination report/s till all objections are complied as per satisfaction of the Examiner
7. Responding to further Examination reports till all objections are complied or objections are contested
8. Interviewing the Controller if Patent is not granted
9. Hearing with Controller, if requested within prescribed time and objections are contested
10. Acceptance of patent application on or before final date of acceptance i.e. 6 months from date of issuance of first examination report and 3 months thereafter if extension is requested
11. Grant of Letter Patent Document by Patent office within 7 days of acceptance of application by email
Publication of Patent Application in India:
The Patent applications are ordinarily published after 18 months from date of filing or priority whichever earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by Controller of Patents or Central Government. From the date of publication the applicant for patent has same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication of application subject to Indian Limitation Act.
Pre- Grant Opposition of Patent Application in India:
From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application provided a request for examination has been filed. Thereupon, the patent shall not be granted until the opposition is set aside.
Examination of Patent Application in India:
For substantive examination of the patent application in India a request for examination has to be filed within 48 months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction whichever is later. In case of divisional applications the request has to be made within periods stated above or within 6 months from date of filing of divisional application whichever is later.
Now-onwards the Examination report shall be issued by email in respect of application having the email address in address of service furnished along with Application form. The complete specification shall not be forwarded along with the application, but in exceptional cases, the pages where some amendment or correction is required, only those pages of the specification would be send by email. Where no email id is provided, the examination report etc. shall be dispatched by post.
It is possible to expedite examination of Patent Application in India where either applicant is a “start up” or in case of PCT national phase India was chosen as ISA or IPEA.
Grant of Patent in India
Once all the objection in respect of a Patent Application are complied /satisfied, a Letter of Patent Grant i.e. Letter Patent Document shall be issued. Within 3 months of issuance of the Grant Certificate, all pending annuities are to be paid to keep the Patent alive.
Post Grant Opposition of Patent in India
The patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.
Duration of Patent and Renewal in India
Duration of Patent is 20 years from date of filing in India for ordinary as well as conventional patent applications and for PCT national phase patent applications 20 years from date of filing of International PCT application. After grant of patent renewal fee has to be paid in respect of 3rd year onwards till the 20th year and must be paid before the expiration of respective years. The patent shall be revoked if renewal fee is not paid in prescribed time and during the period between the revocation of patent till it is restored, the patentee cannot take any action against any infringement of patent by anyone.
Statement as to working of Patent in India
Every year from the date of Grant of Patent, a statement in respect of working of Patented invention in India for preceding calendar year is to be filed by March 31 of next year. Non-filing of such statement can result in penalty by the Indian Patent office.
