How to File Patent Applications in India?

According to the Indian Patents Act, an inventor, his assignee or legal representative of the late person (he/she might have been the inventor or an assignee) can apply for patent applications at the Indian Patent Offices at its head office or the branches. Before applying for a patent application, the applicant must find out the administration under which he or she inhabits, or the permanent residence or the main office of his business and apply for the patent accordingly.

The Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) is located at Mumbai. The Head Office of the Patent office is at Kolkata and its branch offices are located at Chennai, New Delhi, and Mumbai. The Trade Marks registry is at Mumbai and its branches are located in Kolkata, Chennai, Ahmedabad and New Delhi. The Design Office is located at Kolkata in the Patent Office. The Offices of The Patent Information System (PIS) and National Institute of Intellectual Property Management (NIIPM) are located at Nagpur.

Foreign applicants can also apply for patent applications in India following the same rule by applying at the appropriate office. While applying for patent application and grant of a patent it is necessary to submit the relevant documents along with.

Methods to File Patent Applications in India

The filing requirements for patent application are as follows:

1# Filing an Ordinary Application

A patent application filed in the Patent Office without claiming any priority of application made in a convention country or without any reference to any other application under process in the office is called an ordinary application. An ordinary application can be Provisional Application or Non-Provisional Application (it might not be preceded by a Provisional Application).

2# Filing a Provisional Patent Application

Provisional Patent Application is a temporary application filed with the Indian Patent Office when the invention is still pending to be complete. Filing a Provisional Application has its own benefits such as:

• The cost of filing is comparatively low and easier.
• An official filing date is established.
• The inventor has a time of one year to find out the commercial viability of the invention.

3# Filing a Non-Provisional Patent Application

It is accompanied by a Complete Specification which is a techno-legal document. A Complete specification should describe the invention in details and it should also disclose the best-known method of executing the invention (the method should be described in such a way that a person with expertise from similar field would be able to carry it out at ease) and end with Claims that would define the scope of the invention. Complete specifications can be filed in either Direct filing or Subsequent filing.

Forms To Be Furnished

Documents Required

The documents that are required to be submitted while filing a patent application in India are as:

• The patent application in Form-1
• Proof of right to file the application from the inventor, either be an endorsement at the end of the application or a separate agreement attached with the patent application
• Provisional specifications (if complete specifications are not available)
• Form-2 with Complete specification within 12 months after filing provisional specifications.
• Section 8 in Form-3, if Statement and undertaking, along with the application or within 6 months from the date of application (if applicable)
• Form-5 for Declaration as to inventorship for applications with complete specification or a convention application or a PCT application designating India, within one month from the date of filing of the application, if a request is made to the Controller in Form-4
• Power of authority in Form-26, if the patent application is being filed by a Patent Agent
• Priority document must be filed along with the application or before the expiry of eighteen months from the date of priority, to enable early publication of the application, in the following cases:
  • Convention Application (under Paris Convention).
  • PCT National Phase Application wherein requirements of Rule 17.1(a or b) of hasn’t been fulfilled.
• Permission from the National Biodiversity Authority (If applicable, in case the Application pertains to a biological material obtained from India) with the source of geographical origin of any biological material used in the specification
• Signature of the applicant or authorized person or Patent Attorney along with name and date, even on the drawing sheets

Conventional Application

It is an application which claims the priority of another application filed in one or more of the convention countries. Whenever an application is filed in a convention country, the applicant has to file the application in India within 12 months from the date of filing of a basic application. If applications are filed in two or more convention countries then the applicant has to file in India within 12 months from the date of filing of the earliest application.

The following documents need to be submitted for the filing of a Conventional patent application:

1. A complete specification
2. An abstract
3. To specify the date and name of the convention country where the application was first filed.
4. To specify that no application for protection with respect to the invention has been made before in the particular convention country by the applicant.
5. Within 3 months from the date of communication by the controller, a certified copy of the priority document needs to be filed.
6. The applicant needs to submit Form 28 along with proof of small entity if he/she belongs to a small entity.

Patent Co-operation Treaty

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. The PCT has two phases viz. International and National.

PCT-International Application

The PCT assists applicants who actively seek patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world.PCT application does not provide for the grant of an international patent. It provides a streamlined process for the patent application process in many countries simultaneously. An applicant can enter into various countries within 30/31 months from the date of filing of PCT application also known as the Priority Date. In India, the time limit is 31 months from the earliest Priority Date.

An applicant from India can file PCT in 3 ways. They are:

• Filing in the Indian Patent Office (IPO) acting as receiving office.
• Filing directly in International Bureau of WIPO after getting foreign filing permit from IPO.
• Filing in International Bureau of WIPO after 6 weeks and within 12 months of application filing in India.

PCT-National Application

The national application follows the international phase. It is necessary for an applicant to file a national phase application in each designated country, where protection is sought for, within the time prescribed under PCT, i.e., within 30 months from the priority date (31 months according to Indian Patent Law). However, this time limit may be adjusted through National Laws by the individual member country. The applicant has to file the National Phase Application within 31 months from the priority date or International Application date, whichever is earlier. For the National Phase Application, the title, description, drawings, abstract and claims as filed in the International Application under PCT are considered as the Complete Specification. All other formalities required for filing and processing an ordinary patent application applies to a National Phase Application.

The filing requirements for PCT-National Phase Entry in India are: (How to File Patent Applications in India?)

1. Application number and date of filing
2. Name, address, and nationality of the applicant/inventor
3. English Translation of PCT Application i.e. description, claims, abstract, drawings
4. Priority Application details- Name of applicant, Title and IPC Code, Priority Application number and date of filing
5. Power of authority in favor of Indian Patent Attorney or agent to be stamped in India
6. Declaration as to inventorship within 1 month of filing application
7. Certified copy of priority document or PCT/IB/304 within 31 months from the priority date
8. English translation of Priority documents along with a certificate of translation in support within 31 months from the date of the earliest priority
9. Details of all corresponding foreign application within 6 months of the application filing and/or within 6 months of in any country outside India
10. Proof of right in favor of applicant from the inventor in writing (assignment deed, employment agreement or any other arrangement)

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