What are the Important Elements of Patent Prosecution in India?


What is the meaning of Patent Prosecution in India? It is easy to get it confused with litigation since prosecution generally refers to that. However, patent prosecution is the process of writing and filing a patent application with the patent office to seek protection for an invention. It involves a number of elements such as early publication request, examination request, Office action response, and much more. Therefore, you must be clear about each and every step to ensure a smooth Patent Prosecution in India.

This article elucidates on every step of the patent prosecution process and where we can assist you.

Patent Prosecution in India: Key Points to Remember

1. Filing the Patent Application

This element is self-explanatory. If you’re seeking protection for an invention, you have to file a patent application with the Indian Patent Office. Here is a list of all the forms and their fees that exist in the Indian patent system. You may file an application either online or offline. The online filing happens through the eFiling portal and the offline filing via post to the relevant regional patent office. India has 4 regional patent offices – Mumbai, Chennai, Delhi, and Kolkata, each of which covers certain states under their jurisdiction.

2. Request for Early Publication

The Indian Patent Office publishes every patent application in the patent journal. The purpose is public disclosure of the invention, which is a requirement in the grant of a patent. However, the publication happens 18 months AFTER the date of filing of the patent application. You may not want to wait that long before disclosing your invention. So, you can request an early publication using Form 9 and paying an extra fee to the patent office. It is advisable to submit the form with your application. Then, the patent office publishes your application within a month from the date of filing.

3. Request for Examination

You must file a request for examination with the patent office for them to assess your patent application. The relevant form for this request is Form 18. This should be done within 48 months from the date of filing. If the pendency period expires, then the patent office considers your application to be “withdrawn”. You may even file for an early examination using Form 18A but this is applicable ONLY for start-ups. After filing the request, your application eventually lands on the desk of an examiner. This examiner is an expert in the field of the invention and thoroughly examines your application. He/she generates the “First Examination Report” (FER) which contains all the objections with the application.

4. Respond to First Examination Report

The FER consists of objections in the form of technical and non-technical errors. Any formal document you receive from the patent office is an Office Action. Your job is to overcome each and every objection in order to convince the Controller to grant your patent. This is an Office Action Response. This step involves written correspondence and appearing before the patent office. You have a time period of 6 months before responding to the FER. But you can file for an extension of 3 months using Form 4. After your response, the patent office may further raise other objections if your response doesn’t satisfy them. This is the most tedious part of the patent prosecution in India.

5. Grant of Patent and Annuity Fees

If you’re able to overcome all objections that the Controller raises, then you get a patent grant. Its validity is 20 years from the date of filing. You must pay an annuity fee for the renewal of the patent. This starts from the 3rd year and payment needs to be made in intervals till the 20th year.

6. Pre-Grant Opposition

A third party might challenge your invention after you disclose it to the public through the publication. This generally involves objections relating to the novelty of the invention and happens before the grant of a patent. You may file an application for pre-grant opposition with the Indian Patent Office under the relevant provisions. The provisions are under section 25(1), sub-section (2), sub-section (3) of section 29, or section 8 of the Indian Patent Act.  There is no statutory application fee for this and the original patent applicant has to overcome these objections. After both sides make their cases, a judge decides whether or not the opposition has any merit in their claims.

7.  Post-Grant Opposition

There is also a provision for a third party to oppose your patent after its grant. The time period to file this is 1 year from the date grant of the patent. You may file an opposition application under the relevant provisions with the Indian Patent Office. The provisions are under section 25(2), sub-section (2), sub-section (3) of section 29, or section 8 of the Indian Patent Act. There is a fee that you have to pay to file a post-grant opposition. The rest of the procedure is the same as pre-grant opposition.

8. Statement and Undertaking

You must file a statement and undertaking in accordance with section 8 of the Indian Patent Act without any fee. The applicant here promises to inform the Controller about the details regarding any corresponding patent applications he/she files outside India.

9. Statement of working of patent

It’s mandatory to submit a statement of working to the Controller in the relevant form. This doesn’t require any extra-statutory fee and must happen every year. If the applicant fails to submit this, then he/she may have to pay a heavy fine as a penalty.

10. Submission of a certified copy

You must take a certified copy from the Indian Patent Office.  Sometimes, you may need to deposit the application to the relevant authorities. These include the International Bureau of WIPO or regional patent offices. The latter is to file any conventional application by claiming the priority of Indian application.

11. Getting the foreign filing license

In order to file a patent application outside India, you must get a foreign filing license from the Patent Office. This is basically permission in written format which you get after paying the necessary fee. In case you want to file patent outside India first, then you must have this license. If you fail to do so, then you will have to pay a lot of amount as penalties. Another possibility is that you first file the application in India. Then you can file it outside India 6 weeks after the filing date.

12. Modifications in the patent application

There is a provision where you can update your patent by filing a request for amendments. This must be in accordance with the section (57) of the Indian Patent Act 1970. You may request for this before or after the grant of the patent. There may also be a case where you want to give the patent rights to someone else with your full consent. You may also wish to change your address details or any other details. You can do this by submitting a request application in the necessary format.

Need help with Patent Prosecution in India? – Your Patent Team

Patent prosecution in India is a time-consuming process with no guarantee of a patent at the end of it. There are numerous deadlines, forms, timelines, etc. which you need to follow. It is advisable to consult a professional with this process. YPT is a team of 225+ technology/industry experts who speak the inventor’s language and have a deep understanding of Indian & Global Patent Laws. We provide our mentorship to our clients after studying the situation to move forward in the right direction. We provide our assistance in all the phases of the patent prosecution. This includes drafting the application, filing it, facing pre-grant or post-grant opposition, monitoring the patent after the grant, etc. We also update our clients regularly by sending reminders at different stages through the course of the patent prosecution. To make an inquiry, contact us on Your Patent Team.

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