Patent Application Drafting, Filing and Prosecution in India

One document referred by everyone – Patent examiner, Licensee, Competitor, Lawyers, Judge, Public/Peers – GETTING IT RIGHT IS IMPORTANT.

Why ‘Your Patent Team’ for Patent Application Drafting, Filing and Prosecution

  • YPT is a Team of 225+ technology/industry experts who speak inventor`s language and having deep understanding of Indian and Global patent laws.
  • YPT utilizes its knowledge of both patent prosecution process and patent enforcement to draft applications that are enforceable (even 20 years from now) yet sail through the prosecution saving you lot of money.
  • YPT always keeps client’s interest first and is always frugal with client’s resources. Ethics is #1 priority for YPT and we will never misguide you.
  • YPT ensures that you not just get a certificate after grant of patent rather you practically benefit from your protection. We will walk with you on-the-ground to make it happen.
  • YPT has unique understanding of global and industry wide IP best practices as it has supported 1,000+ clients from 45+ countries in multiple technology areas ranging from complex subject matters in life sciences/engineering/ICT to simple household inventions.
  • YPT has in-depth understanding of working style of each of the four patent offices in India and also of their staff members.
  • YPT has a good network within Indian Patent Office for expedited and accurate information.

Finally, YPT may not seem to be the cheapest option available but we guarantee that :

  • You will have the strongest and broadest possible protection.
  • You will end up saving lot of money during prosecution and after grant.

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More about patent application in India

Typically, a patent application filed by an inventor or applicant (may be a research company) for grant of a patent for the invention described and claimed in the patent specification.  A patent application is accompanied by a techno-legal document i.e. patent specification. The whole future of the invention depends on the patent specification- A badly drafted specification may give others free hand to enjoy your innovation without any fear, on other hand a well-crafted specification gives you guns to stop and force others not to enjoy your innovation without your permission. The patent application has to undergo examination process where the application is adjudged by officials of Patent Office on the basis of the technicality as well as legality of the same.

For more information – FAQs

Synonyms: applying patent, patent application, filing a patent, examination of patent pending, pending patent application, prosecution of patent application, drafting patent specification, drafting description of patent, patent drafting, India, India Patent Office.

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About Your Patent Team (YPT)

Your Patent Team (YPT) is an exclusive group of world leading technology/industry experts with deep understanding of global patent laws. YPT team of 125+ experts cover variety of tech areas including Pharmaceutical, Chemical, Mechanical, Electrical, Biotechnology, Electronics, Telecommunication, Software, Information Technology and more. YPT serves clients in over 45 countries and is one of the very few organizations who understand global IP best practices to the core. YPT utilizes this expertise to advise our clients to help them get world class advise and IP protection. Further, with vast global network and work volumes, YPT not only ensures that you get the strongest and broadest protection, but makes sure that you get at the optimum costs. Again, YPT is one of the only organizations in the world where work does not stop at clients getting the IP protection but where experts walk with the client till they are able to get returns from their IP protection. YPT is trusted alike by industry associations (like FICCI, PHD Chamber of Commerce, FISME, etc), Government Departments and Ministries (like Department of Science and Technology), Fortune 500 companies, SMEs, Universities, Start-ups, Foreign Law Firms, and Individual Inventors in India and abroad. We have presence in 90+ jurisdictions to help our clients get best protections worldwide.

Why Choose YPT?

  • Your Patent Team (YPT) is an exclusive group of world leading patent attorneys who are technology/industry experts with deep understanding of global patent laws. YPT team of 125+ experts cover variety of tech areas including Pharmaceutical, Chemical, Mechanical, Electrical, Biotechnology, Electronics, Telecommunication, Software, Information Technology and more.
  • YPT serves clients in over 45 countries and is one of the very few organizations from India who understand global patent best practices to the core. YPT utilizes this expertise to advise clients so they get world class advise and patent protection.
  • With vast global network and work volumes, YPT not only ensures that you get the strongest and broadest patent protection globally, but makes sure that you get this at the optimum costs.
  • YPT is one of the only organizations in the world where work does not stop at clients getting the patent protection. Here our business experts walk with the client till they are able to get monetary returns from their patent protection.
  • YPT is trusted alike by industry associations (like FICCI, PHD Chamber of Commerce, FISME, etc), Government Departments and Ministries (like Department of Science and Technology), Fortune 500 companies, SMEs, Universities, Start-ups, Foreign Law Firms, and Individual Inventors in India and abroad. We have presence in 90+ jurisdictions to help our clients get best protections worldwide.

✓ 125+ Technology Experts : Covering Whole Range of Technical & Legal Subject Matters.

Clients From 45+ Countries : Knowledge of Global IP Best Pratices.

✓ Always on Client’s Side : Minimize Expenses – Maximize Return.

✓ Beyond Patents : Complete Handholding in Monetization.

YPT TEAM

Patent Prosecution Process in India:

 

Patent Prosecution Process in India

 

Patent Drafting

The art of presenting the exclusive document stating the invention, highlighting all of its inventive elements, embodiments, and scope, is Patent Drafting. Drafting a patent specification requires deep understanding of the technology and a thorough knowledge of the relevant procedures and laws. The following are the major steps involved in drafting:

  1. Filling the Invention Disclosure Form: Form comprises of questions about invention details required to perform search and prepare patent specification draft.
  2. Scheduling discussion with Inventor: Discussion about the details of the invention, between patent agent and inventor/applicant takes place, once the IDS is reviewed. It includes discussion about invention scope, specifications, and suggestions from agent’s side.
  3. Framing Patent Specification: After finalization of patent scope and purpose, patent agent starts drafting the specification by preparing claims, drawings, and background sections.
  4. Finalizing Patent Draft: Indian Patent Act 10 , states that the invention must be fully and clearly described (all operations and methodologies) to disclose the best methodologies of using the invention, with proper claims and section, and must be accompanied by an Abstract providing technical invention details.

Patent Filing

A patent application can only be filed though the online mode (e-filing) at any of the four patent offices in India. Patent Offices in India are located at Kolkata, New Delhi, Chennai, and Mumbai.

A) Patent Application Forms

For filing the patent application, the applicant is required to submit form1, form 3, form 5, form 9, and form 26, who so ever is required on the basis of requirements. These forms have to be submitted with their fees respectively, that varies on requirement and specification basis.

Consider this table to learn about these forms.

Form Type Description
Form 1 Application for patent grant, that includes name and address of the inventor(s), applicant(s), information corresponding to prior patent applications relating to the current invention, and some declarations, among other information.
Form 2 Provisional/Complete specification form that describes the invention in detail.
Form 3 Statement and undertaking form by the applicant to provide information relating to patent applications filed in other countries for the current invention.
Form 5 Inventorship declaration form declares the inventors of the subject matter.
Form 9 Request publication form (optional) to publish patent application form within one month of its filing.
Form 18 Request examination application form to allow and give an indication to the examiner that the application is ready for its examination.
Form 26 Patent agent authorization form (if filed through patent agent)

Patent applications can be filed as Ordinary (Provisional & Non-Provisional applications), Convention, and PCT National Phase application.

  1. Ordinary Application: Application filed without claiming any priority or any reference to other application. It can either be Provisional or Non-Provisional application. Pre-requisites of both the applications differ from each other.
  2. Convention Application: Applications filed after claiming priority date (according to similar application filed in same or similar domain) in one or more convention countries. There is only one clause that convention application must be filed within 12 months of filing the similar application in convention country.
  3. PCT National Phase Application: Patent Corporation Treaty is an International patent treaty providing patent protection for applicants willing to file patent application in more than one country. International and National phase are the two phases of PCT application. According to patent laws, National phase application has to be filed in the targeted country within the specified time period of PCT (30/31 months after priority date), depending upon the rules within specified country.

B) Patent Filing Requirements

Application Type Requirements
Ordinary ·         Provisional Application:

1.       Provisional Application in Form 2 with application for patent grant in Form 1

2.       Title, Name, Address and Nationality of applicant(s) & inventor(s), with Preamble to description

3.       Drawings (if needed)

4.       Description, Claims, & Abstract (if any)

5.       No need of filing complete specifications

·         Non-Provisional Application:

1.       Complete specifications in precise format with full scope, claims, and abstract describing technical information about invention

2.       Unity of invention stating that all claims points to single invention

3.       Power of Authority (Form 26), if patent agent is involved in filing process

4.       Form 3 either with the application or within 6 months of application date

5.       Form 28 if applicant is under small entity cover with its proof

6.       Corresponding foreign application particulars, such as application number, date  of filing, and current status

Convention 1.       Name, address, and Nationality of applicant(s) & inventor(s)

2.       Complete Specification including Description, Claims, Abstract & Drawings (if any)

3.       Details of all Priority claims (Date, Country and Application number)

4.       Certified copy of priority document (if not filed at International Bureau)

5.       Verified English translation of priority document (may submit later)

6.       Form 28 if applicant is under small entity cover with its proof

7.       Corresponding foreign application particulars, such as application number, date  of filing, and current status

PCT National Phase 1.       Name, address, and Nationality of applicant(s) & inventor(s)

2.       Complete Specification including Description, Claims, Abstract & Drawings (if any)

3.       Verified English Translator of PCT specification (optional, if application is not written English language)

4.       Details of PCT application (international Application number & date)

5.       Details of all Priority application (if any): Date, Country, Application number, & Certified copy of priority document (if not filed at International Bureau)

6.       Corresponding foreign application particulars, such as application number, date  of filing, and current status

7.       Extra documents (if any): Details of Amendments and Corrections made to specification/claims during the International Phase

 C) Patent Application Filing Costs

Depending upon the type of forms taken into use, the fee has to be paid. Consider the following table to know the details about the fee.

S. No. On What Payable Patent Fee

Statutory Fee/Official Fee (INR)

Action
Natural person/ Startup Small Entity Large Entity  
1 Application for a Patent (Provisional or Complete Specification) – Up to 30 Pages & 10 Claims 1600 4000 8000 Compulsory
2 For each sheet in addition to 30 160 400 800 Compulsory
3 For each Claim in addition to 10 320 800 1600 Compulsory
4 Statement and Undertaking No fee No fee No fee Compulsory
5 Declaration of inventor-ship No fee No fee No fee Compulsory
6 Request for Publication 2500 6250 12500 Optional
7 Request for Ordinary Examination 4000 10000 20000 Compulsory
8 Request for Expedited Examination 8000 25000 60000 Compulsory
9 Amendment of before grant 800 2000 4000 Compulsory
10 Amendment of Address Change 320 800 1600 Compulsory

Patent Prosecution

A) Patent Publication

Patent publication starts after 18 months (1.5 years) of the priority date. Publication of application will be kept confidential if applicant requested for its secrecy or if it gets withdrawn within the time period of three months before publication date. Once published, all the contents of the application, such as drawings and deposits shall be publically disclosed. The applicant bears all the rights of the patentee straight from its publication date but cannot take its advantage till its grant.

Publication (if requested) can even be done earlier. For which Form 9 has to be filled with its prescribed fee. In such cases, publication takes place within a month after this request is filed. It will only be considered if the subject matter is not related to defense or atomic energy.

B) Patent Examination

  1. Examination Request: Request to start the examination must be made within 36 months after filing the application. Otherwise, in case of confidentiality, it can be made up to 6 months after invoking the directions or within 36 months after filing, if that date is later.
  2. Examination Process: Examiner will verify all the aspects, such as novelty, patentability, correctness, etc. The examiner has to submit the report within 1 to 3 month from the filing date. The report contains all the feedback that the applicant might need to modify/correct in the application.
  3. OppositionAnyone can file patent opposition before or after it has been granted. In case of post-grant opposition, it has to be filed within 12 months of the patent grant. It can be filed because of a number of reasons, such as Non-compliance of patentability requirements, Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge, and Publication, Sale, or Import of the claimed invention before the priority date.

C) Patent Grant

Once all requirements are found in accordance to the patent laws and patent examiner, the patent application will be granted and this patent will be published in the official gazette which will be publically available.