Dr. I. G. Rathish gave a presentation on filing patent applications in India. He discussed who can apply, where and when applications can be filed, the application process, forms and fees required. The key steps include filing an application with the appropriate patent office, submitting a provisional or complete specification describing the invention, and paying statutory fees. If filing relates to biological material, it must be deposited with an international depository authority. The Intellectual Property Rights Cell at CUSAT provides assistance to researchers and startups on patent filing and related procedures in India.

1. Talk at JSS College,
Mysuru
September 16th 2017
Dr. I. G. Rathish
Assistant Professor
IUCIPRS, CUSAT

2. Structure of the presentation
Relevance of filing patent application
Who can apply
Where to apply
When to apply
 How to apply
 Overview of Patent filing and prosecution
 Forms
 Statutory fees associated with filing

3. Relevance of filing patent application
 No Automatic registration.
 Securing a patent prevents other from unauthorised
use of the invention.
 Protection of invention through patent provides an
opportunity to incentivize by attracting investment
 Edge over competitors.

4. Who can apply for a patent?
 True and first inventor of an invention
 Assignee of true and first inventor.
 Legal representative of any deceased true and first
inventor or his/her assignee.
 Application can be made alone or jointly with any
other person.

5. Where to file a patent application?
 Patent office at Delhi, Kolkata, Mumbai or
Chennai
 Application for Patent shall be filed with the
Patent office having the appropriate jurisdiction.
i) Place of residence, domicile or business of the
applicant (first mentioned applicant in the case of
joint applicants).
ii) Place from where the invention actually
originated.
iii) Address for service in India given by the
applicant, when the Applicant has no place of
business or domicile in India (Foreign applicants).

6. Where to file a patent application?
Patent office Territorial Jurisdiction
Mumbai Gujarat, Maharashtra, Madhya Pradesh, Goa,
Chhattisgarh, the Union Territories of Daman &
Diu and Dadra & Nagar Haveli.
Delhi Haryana, Himachal Pradesh, Jammu and
Kashmir, Punjab, Rajasthan, Uttar Pradesh,
Uttarakhand, National Capital Territory of Delhi
and the Union Territory of Chandigarh.
Chennai Andhra Pradesh, Telangana, Karnataka, Kerala,
Tamil Nadu and the Union Territories of
Pondicherry and Lakshadweep.
Kolkata Rest of India (States of Bihar, Orissa, West
Bengal, Sikkim, Assam, Meghalaya, Manipur,
Tripura, Nagaland, Arunachal Pradesh and Union
Territory of Andaman and Nicobar Islands)

7. When to file a patent application?
 Could be done at inception of concept.
 After a preliminary assessment of your concept or
invention.
 After a proof of concept is obtained.
 When the invention is deemed to be complete.
Provided the invention is not in the public domain
before the filing of Patent application

8. Patent filing and Prosecution
Complete Specification
Publication
Pre-grant opposition
Normal procedure outlay for patent filing and prosecution of
Ordinary application in India
12 months
deadline
18 months after first
filed application
Provisional Specification
INVENTION
Option 1
Early Publication

9. Substantive Examination
Grant
Post-grant opposition (if any)
Patent filing and Prosecution..Cont’d
Renewal/Annuity
Publication of
Granted patent

10. How to file a patent application?
Modes available
Online mode
 Requirement of Class 3 digital signature.
 OS – Microsoft windows XP with SP3 and above
 Web browser – Internet explorer 6 and above
 Create a user id on the e-filing portal of Indian patent
office.
 Uploading the application form accompanied with
relevant forms.
 Making a payment using online modes.
(Visithttps://ipindiaonline.gov.in/epatentfiling/UsefullD
ownloads/Comprehensive%20efiling%20manual.pdf)

11. E-filing website page

12. E-filing login page

13. E-filing registration

14. How to file a patent application?
Offline mode
Submission of the following documents and fees at the
appropriate patent office.
 Duly completed application form accompanied with
 Relevant forms and
 Payment of statutory fees.

15. Forms
Form – 1 :- Application for a patent
Form – 2 :- Provisional/Complete specification
Form – 3 :- Statement and undertaking
regarding foreign filing (at the time of filing
complete specification)
Form – 5 :- Declaration as to Inventorship (at the
time of filing complete specification, if
required)
Form – 18 and 18A :- Request for examination

16. Statutory fees associated with Filing

17. Filing of a Patent application…Cont’d
 If an applicant has filed a patent application in
respect of the same or substantially similar
invention in a foreign country, he shall file along
with the application in India or within the
prescribed time limit, a statement regarding the
particulars of such foreign application in Form-3.
 He should also provide an undertaking that up to
the date of the grant of patent in India, he would
keep the Controller of Patents informed of every
detailed particulars relating to such invention for
which patent is applied from outside.

18. Specifications
 The patent application should be accompanied by a
patent specification.
 The specification can be complete or provisional
 If a provisional specification is submitted along with
the patent application, the complete specification
shall be filed within 12 months from the date of filing
of the application. If not, the application shall be
deemed to be abandoned.

19. Specification - Contents
 A specification whether complete or provisional shall
describe the invention, should begin with a title
sufficiently indicating the subject matter to which the
invention relates.
 Specification whether complete or provisional shall
contain necessary drawings which form part of the
specification.
 Any model or sample of anything illustrating the
invention, but which is not part of the specification
may be requested by the Controller.

20. Specification - Contents
Complete specification should
 Fully and particularly describe the invention and
its operation or use and the method by which it is
to be performed.
 Disclose the best method of performing the
invention which is known to the applicant and for
which he is claiming protection.
 End with a claim(s) defining the scope of the
invention for which protection is claimed
 Should accompany an abstract to provide technical
information on the invention.

21. Specification - Contents
 The abstract should commence with the title of the
invention disclosing the specific features of the
invention in not more than 15 words.
 Abstract should contain a concise summary of the
matter contained in the specification, indicating
the technical field to which the invention belongs,
the technical problem to which the invention relates
and the solution to the problem through the
invention and the principal use(s) of the invention
(word limit 150)
 The abstract should be efficiently drafted enabling
search in the particular technical field, so that one
need not look into the specification.

22. Specification – Biological Material
In case of patent applications involving biological
material, the material must be deposited in an
international depository authority under the
Following conditions
 Biological material cannot be described
adequately.
 Biological material not available to the public.

23. Deposit of Biological Material
 Deposit the material not later than patent filing.
 Mention all the available characteristics to be
correctly identified
 Mention the name and address of depository
institution
 Date and no of deposit of material at the institution
 The source and geographical origin of the biological
material specified in the specification shall also be
disclosed.
 Access to the deposited material would be available
only after the date of patent application in India or
after the date of any priority claimed.

24. Biotech related Inventions
 In the case of Biotechnology related inventions,
relevant numbers of the sequence listing shall be
mentioned in the specification.
 Sequence listing should also be given in electronic
form.

26. Thank You

27. Services offered by IUCIPRS
 Assistance to University/Colleges researchers and
Teachers across Kerala.
Facilitation of Filing of Patent application and other
related procedures in India through Consultants
engaged by IUCIPRS.
 Carrying out novelty search for Inventions of local
inventors.
 Novelty search extended to start-up companies
based out of Kerala in consequence of MOU with
KSIDC.
Other outreach activities
 Awareness programs on IPR
 Capacity building programs on IPR.

28. Contact Us
http://ciprs.cusat.ac.in/
Phone:0484-2575075; Ext:- 301
Mobile: 8108074199
email: iprcell.iuciprs@gmail.com
Website:ciprs.cusat.ac.in