A quick guide for the steps and procedures on how to get a patent in indiaJune 15, 2022 By Shruti Nair
The word “Patent” is a form of intellectual property that gives the legal owner of the invention an exclusive right to exclude others from using or commercially exploiting their invention from being used, distributed, imported or sold by others without the patent owner’s consent.
The Patent filing procedure might be a little difficult and multifaceted for those who have not much knowledge of it. So, a patent must be filed with the support and expert guidance of experienced patent attorneys and patent agents who make a large impact to an extent of patent granted or patent rejected. An experienced patent professional, whether a patent attorney or patent agent, has an unbelievable quality of balancing technical and legal aspects of a patent application which is submitted before the Indian Patent office to protect the inventor’s right on their invention.
Anyone from any sector or field irrespective of their profession or legal status who is interested in protecting their invention or idea conceptualized in their mind which is unique and useful that can be later converted into a product or process should follow these simple steps for smooth and effective filing of patent application in India and secure a patent to your invention -
1) Check whether the invention is patentable or not
According to Indian Patent Act, 1970, all inventions are not patentable. There are certain inventions which cannot be patented as per Section 3 & 4 of the Indian patent law. For example inventions that are against the public morality, or an invention that is a mere discovery of a scientific principle or likewise, or any inventions relating to atomic energy are not patentable.
2) Patentability Search
This is one of the crucial steps before proceeding for filing a patent application in India. The invention has to meet these three criteria before proceeding for the patent application -
- Inventive step
- Industrial applicability
The patentability search report and opinion by an expert patent professional helps you to decide whether to go ahead with the patent application filing or not, chances are what you thought as a novel might already have been patented or known to the public skilled in the art in some form of information. Hence this report saves a lot of time, effort and cost of the inventor by helping him to decide whether to go ahead with the patent filing process or not.
3) Drafting of Patent specification
The drafting of patent specification which is a mandatory requirement while filing patent application is a very crucial step and requires proper guidance and knowledge of an expert patent professional. The drafting process is not just preparing a mere report of the technical details of the invention, it also involves balancing the legal aspects of the Patent law along with the technical explanation of the invention which depends upon the complexity of the invention. Having an experienced patent attorney or patent agent will guide you through the process of filing the patent application to getting the patent granted of your invention dealing with all the objections and requirements in order to obtain the patent granted.
As per Indian Patent law, patent application filing can be submitted in two ways -
a. Provisional Patent Application - If the invention is under experimental stage when it can be disclosed on paper but is not complete, then this option is best for the inventor to file a provisional patent application to claim the priority date of the invention (the date when the invention is first applied for patent). The applicant gets a time period of 12 months to file a complete specification and claim their invention.
b. Complete Patent Specification - When the invention is at complete stage and the applicant has complete information of the inventive step, one can directly proceed with the filing of complete specification before the Indian Patent office. The Complete specification should be in prescribed format as per Indian Patent Act, comprising Description of the invention, Claims, Abstract and drawings.
4) Publication of the Patent Application
Once the patent application is filed submitting the complete specification for the claimed invention, then the application is published after 18 months from the date of filing the application.
It is to be noted that only complete specifications are published, whereas the provisional applications, unless filed as complete after provisional application (i.e. complete application before the expiry of 12 months from the filing date of the provisional application), are neither published nor examined by the Patent office. The provisional application will be deemed abandoned at the expiry of the 12 month period if a complete application is not filed within the prescribed time period.
In order to speed up the application, one can file an early publication request before the Indian Patent office if you do not wish to wait till 18 months from the date of filing for publishing the patent application. On submitting a request for early publication by filing Form-9 along with payment of prescribed fee according to the type of the applicant, the application is normally published within 1 month from the date of such request (U/R 24A of The Patent Acts, 1970). To know more about this provision, click here
It is important to note that the provision to file the request for early publication for any patent application is available ONLY to the Applicant of the patent application, whereas any other person, apart from the Applicant of the patent application, cannot file such request for any reason whatsoever.
5) Request for Examination
Once a patent application is filed in India and published after 18 months of filing the application, the next step involves the examination of the patent application. The examination process starts once the applicant files a Request for examination on Form-18 within 48 months from the date of filing of the application or the priority date whichever is earlier.
6) Reply to First Examination Report (FER)
The response to an examination report in India is required to be filed within 6 months from the date of issuance of the examination report. An extension of a maximum period of 3 months is available, provided a request for extension is filed within the 6 months period. Failure to submit the response within this time limit results in refusal of the application u/s 15 of the act.
7) Attend Hearing (If required)
If the Controller has any query in any responses submitted for the objections raised in the FER, the controller has the right to conduct a hearing for the same. The written submissions are required to be filed within 15 days from the date of hearing. This timeline can be extended for 1 month by filing a request for extension before the expiry of said 15 days.
8) Grant of Patent
According to Section 43 of The Patents Act, the patent application is placed in order for grant if all the objections raised by the Controller are addressed. The granted patent is published in the official gazette for a period of one year to make way for any post grant opposition by the third party. On an average it currently takes between 3 to 5 years from filing an application in India to getting a patent in India.
9) Maintenance of granted patent - Renewal fees
According to Section 53, Rule 80 of The Patent Act, in order to keep the patent in force, prescribed renewal fees are required to be paid in respect of each year, third year onwards in advance before the expiration of the succeeding year before the Indian patent office.
At Parker & Parker Co. LLP, our experienced Patent attorneys & consultants advise clients about patent protection and prosecute appropriate patent applications in key technologies that traditionally have been difficult to protect, such as software, medicine, and biotechnology, and in enforcing patents through licensing programs and litigation to attain business objectives and maintain market position.