The detail process of patent filing in India

1. INTELLECTUAL PROPERTY
RIGHTS
BT-3516
PATENT PROCESS IN INDIA
Lecture- 4th
By
Prof. SD Tidke
Modern CABT, Pune

2. How to File Patents? Understanding
the Patent Process in India

3. Steps to follow to file a patent
Thumb Rule:
 Do not disclose your invention in public domain before filing a
patent application failing which the innovation loses its
Inventors can file a patent in two ways:
 The inventor can file the patent on his/her own
 The inventor can take the help of a patent filing professional
agency.

4. patent filing professional or agency.
 Since the patent filing process is long and complicated, most inventors
prefer to engage the services of patent filing professionals or agencies.
 Such individuals or firms charge a fee for since they have years if
experience under their belt.
 They can complete the necessary patent filing procedures on your behalf.
 In case you choose to engage the services of a professional or agency, you
must complete all the formalities related to patent filing, so that the agency
does not pass off your invention as theirs.
 To this effect, you need to draft a non-disclosure agreement and have your
agency professional sign it.
 This formality needs to be completed before the inventor discloses his/her
invention to the professional or agency.

5. Step 1 – Check if your invention is patentable
 Before you begin the patent registration process, you need to check if
your invention is patentable.
 This means that you need to check if another individual has filed a
patent for a similar technology for which you are filing.
 Performing an in-depth patentability search helps you understand
whether or not you have a chance of getting a patent.
 While this step is optional, it can save time and help you understand
whether or not you should file for a patent in the first place.

6. Step 2 – Draft the patent application
 You can now begin the patent application process.
 Indian applicants need to fill Indian Patent Application Form 1. For every
patent you file, you need to mandatorily provide a Form 2 patent specification.
 You can choose between a provisional and complete patent application, based
on the stage of invention.
 This means that if you are still testing your invention, you need to apply for a
provisional patent application. You get a period of 12 months to complete the
invention and file for a complete patent.

7. • You need to pay special attention when you are drafting your
patent application.
• Your patent application should include clauses such as usability and
outcome of the invention in detail.
• You should also include the necessary clauses including your
intention to license your invention and preventing competition from
using and thereby, profiting from your invention.
• Ensure caution while drafting your patent application, be meticulous
and include clauses that prevent the competition from using your
technology.

8. Step 3 – Filing the patent application:
 Your patent application needs to be submitted with several
application forms.
 As per the patent filing procedure in India, you need to submit all of
the below mentioned forms.
 Links to all forms and an applicable fee is follwo
 http://www.ipindia.nic.in/form-and-fees.htm

9. http://www.ipindia.nic.in/form-and-
fees.htm
 Form 1 – Application for patent grant
 Form 2 – Patent specification form (provisional or complete)
 Form 3 – Undertaking and statement with regards to foreign applications
under section 8 (mandatory only in case a corresponding application for
patent is filed in a foreign country)
 Form 5 – Declaration of invention to be filed with complete application
 Form 26 – Form authorizing patent agent (applicable only if you opt for
an agent to help file the patent)
 Form 28 – Mandatory only if applicant is claiming small entity or start-up
status
 Priority Documents – You need to provide priority documents only if
priority is being claimed from a foreign patent claim or application.

10. Step 4 – Publishing the patent application
 After you submit all the documents, the patent application is safely secured by
the Indian Patent Office.
 The patent is then published in an official patent journal after a period of 18
months approximately.
 However, inventors who wish to have their patent application published
before this 18 month period can submit Form 9.
 This is an automatic process but if an inventor wishes to have his application
published earlier, he needs to submit Form 9 (early publication request), in
which case, the application will be published in the official patent journal
within 1 month of making the request.
 However, there are certain scenarios in which your patent application may not
be published.
 These include incomplete applications, withdrawal requests made by the
individual filing the patent and secrecy direction imposed under Patent Act
wherein the invention is against the nation’s interests.

11. Step 5 – Examining the patent application
 Before your patent is granted, it needs to be examined substantively.
 As per rules of the patent application process in India, your patent is thoroughly
examined based on the merits of your invention as claimed and described in the
patent specification form.
 Unlike the publication process, this is not an automatic process and the
applicant needs to make a request to examine their patent application by
submitting Form 18.
 The patent office queues the application for examination only after a formal
request for examination is made.
 You can also expedite this process by filling and submitting Form 18 (A).

12. The patent examiner is obligated to follow a few steps
of his/her own while examining your application. They
are as under
 When the application lands on the examiner’s desk, it is scrutinized according
to the Patent Act and underlying rules.
 The patent examiner searches for similar technologies to ensure the invention
satisfies patentability criteria.
 After reviewing the application, a first examination report (FER) is submitted in
which, grounds for objections, if any, are also stated.
 The examiner lists his objections in detail. This can further extend the
application process by another 6- 9 months. Note that examiner objections
are quite common in case of patents.
 If the inventor needs to make changes to his/her objection, he/she can file a
request for time extension by submitting Form 4.

13. Step 6 – Decision to grant patent
 Once the examiner finds no objections in the patent application,
he grants the patent.
 The patent is then published in the official patent gazette.

14. Step 7 – Renewing the Patent
 The patent holder also needs to renew his patent by paying an annual
renewal fee. In India, it is possible to renew your patent for a period of 20
years at maximum, from the date the patent was first filed.
 Although the patent filing process is long and complex, one must
remember its importance in the long run.
 The entire process can take anywhere between 3-5 years. However, Indian
Patent Office is hiring new examiners and also upgrading its offices to be
able dispose of patent applications in timely fashion.

15. Renewing the Patent
 The process is created with the intention of ensuring that the inventor gets
credit for his invention.
 It also ensures that no other individual can claim rights over the invention.
 The legal rights you earn with your patent can prevent competitors from
using your invention for financial benefits.
 You can also sue such individuals and claim compensation for using your
invention without your approval