Patent Filing Procedure In India

PRESENTED BY:NADEESH GUPTA

1221230LOS IJK

Who Can Apply and Where to Apply

• Either Alone or Jointly True and First Inventor True and First Inventor’s Assignee Legal Representative of Deceased True and First Inventor or his/her Assignee.

Source: http://ipindia.nic.in/ipr/patent/patents.htm

Application procedure

• Step 1: filling of form 1 along with provisional/complete specification with the prescribed fee

• Step 2: form 2 needs to be completed and submitted along with the required documents, descriptions and declarations

• Step 3: sending/leaving the document to the office of the controller (can be done either manually or by post)

• Step 4: initial processing of documents Involves allotting application number and date to all applicationsAll the applications are screened, digitized, verified and then uploaded on to the internal server

Application procedure (cont.)

• Step 5: scrutiny of application• Here the office checks whether all the documents have been filed as per the standards

checks for signatures, relevance and presence of all documents

• Step 6: Check for special casesSecrecy directions Inventions relating to atomic energy

• Step 7: publication of applicationDone within 18 months of applying or 1 month of prioritizing In case of secrecy directions need to wait till it is revoked

• Step 8: grant of patent (in case of no revocation)

Added services

• Ability to get an early publication by paying the prescribed fee

• Withdrawal of applicationTo be done within 15 months of applying or before publication

• Provision for divisional application

• Patent of addition

• Convention and international patents (Patent Cooperation treaty)

• E-filing of application

• Renewal of patents

Contesting an application

• An application is examined only when an application is filed for it

• The examination can be done based on: If idea is based on previous claim or publication Invention is not novel (new)Does not hold any industrial application Inventive steps Invention is not patentable

An invention that claims to do something that contradicts the established laws Which would cause serious harm to human, animal or plant life Discovery of a principle, living or non living substance already existing in nature Discovery of a new substance property that does not enhance the known efficacy of that substance Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other

treatment of human beings or any process for a similar treatment of animals Method of agriculture and horticulture

Examination procedure

• The person opposing the grant of patent needs to file notice of opposition by paying prescribed fee within 12 months of patent grant date

• The evidence related to the opposition needs to be sent to the office and also the patentee

• The patentee has a time of 2 months to reply back with their response and evidence

• The opposing party then has 1 month to submit their claims and evidence

• If the matter is not sorted out yet an opposition board (3 members) is set up who decide upon the matter after observing all the evidence

• They submit their verdict within 3 months of receiving all the documents

• Based on outcomes of hearing and recommendation of the opposition board decision upon the patent is taken

• There is also a provision for filing a pre grant opposition

Fee structureRatio of Fees – 1:4 (Natural Person : Other than Natural Person)

A few examples : Natural Other person

Patent Application- Form 1 & 2 Rs.1000 Rs.4000

Request for early publication (optional) Rs.2500 Rs.10000

Request for Examination Rs.2500 Rs.10000

Maintenance Fee (each year)3rd to 6th years Rs.500 Rs.20007th to 10th years Rs.1500 Rs.600011th to 15th years Rs.3000 Rs.1200016th to 20th years Rs.5000 Rs.20000

Source: http://ipindia.nic.in/ipr/patent/patents.htm

Thank you