Patent Filing Procedure in India

As India is slowly moving toward becoming an innovation hub in Asia, patent filing has
suddenly gained momentum. Indian government’s initiatives to encourage innovators and
startups are also playing a pivotal role, eventually leading to increased interest in filing
patents in India.

Innovators and Startups are keen to get their innovations patented to safeguard them from
infringements and potential market competitors and further enjoy monopolistic and exclusive
business gains. It has led to an increase in awareness of patent filing.

A patent application can be filed at the Indian Patent Office or through E-filing [online filing
of patents.

Who can file a Patent Application?

The application can be filed either alone or jointly:

*By any person claiming to be the true and first inventor(s)

*By any person being the assignees of a person claiming to be the true and first inventor(s)
[proof of assignment has to be submitted with the application] * By the legal representative
of any deceased person or assignee

Where to File a Patent Application?

1. Physical filing: You can apply for any one of the Indian patent offices, which are located
in Chennai, Delhi, Mumbai, or Kolkata, at the counter of the jurisdictional patent office.

The Patent application can be submitted at the appropriate patent office and is determined
based on the applicant’s region/location-

i) where the applicant resides; or

ii) has a place of business, or
iii) the place from where the invention originated.

For the applicant, who is non-resident or has no residence or has no place of business in
India, the address for service in India or place of business of his patent agent determines the
appropriate patent office where applications for a patent can be filed. Suppose, as an
applicant, you do not have a place of residence, domicile, or place of business in India.
Accordingly, the place for filing your application will depend on the address you have
furnished for the service. For example, patent applications are submitted at the Chennai
Patent Office when the address for services is Intepat, Bangalore.
It is important to note that, ordinarily, once the appropriate office has been decided, it cannot
be changed.

Office Territorial jurisdiction

The States of Maharashtra,
Gujarat, Madhya Pradesh, Goa,
Patent Office Branch, Mumbai and Chhattisgarh and the Union
Territories of Daman and Diu &
Dadra and Nagar Haveli
The States of Andhra Pradesh,
Karnataka, Kerala, Tamil Nadu,
Patent Office Branch, Chennai and the Union Territories of
Pondicherry and Lakshadweep,
Telangana
The States of Haryana, Himachal
Pradesh, Jammu and Kashmir,
Patent Office Branch, New Delhi Punjab, Rajasthan, Uttar Pradesh,
Uttarakhand, Delhi, and the
Union Territory of Chandigarh.
Patent Office Kolkata Rest of India

2. E-filing: this can be done using the e-filing portal of the patent office.

Physical Documents for applying at Indian Patent Office:

1) Form-1: Application for grant of a patent [in duplicate];

2) Form-2: Provisional or complete specification. If the provisional specification is filed, it
must be followed by the complete specification within 12 months [in duplicate];
3) Drawings (if necessary) [in duplicate];
4) Form-3: Statement and undertaking for the corresponding foreign patent applications [in
duplicate];
5) Form-5 Declaration of inventorship: This is submitted either with the provisional
specification followed by the complete specification or, in the case of
convention/PCT national phase applications [in duplicate];
6) Form-9: Request for early publication (optional) [in duplicate];
7) Form-18: Request for examination (optional) [in duplicate];
8) Form-26: A power of attorney (if filed through a Patent Agent) [Form-26];
9) statutory patent fees – DD/Cheque; and
10)A certified copy of the priority document (In case priority is claimed). Priority documents
must be filed in the following cases:
-Convention application (under Paris Convention);
-PCT National Phase application wherein requirements of Rule 17.1(a or b) has not been
fulfilled
-Priority documents must be filed along with the application or before the expiry of 18
months from the date of priority to enable the early publication of the application.

Documents required for E-filing:

i) Pre-requisites:

-Login ID and password;

-Digital signature; and
-Valid debit/credit/net banking facility

ii) All the necessary physical documents mentioned above in PDF format;
iii) Statutory fee via the payment gateway.

Hard copies of the requested documents duly signed by the applicant/agent should be sent to
the jurisdictional patent office if requested by the controller.

Patent Applications Types:

a) Ordinary Application (Normally, filed for an application without claiming priority)

b) Application for Patent of Addition (allowed for improvement or modification of the parent
patent application)
c) Divisional application (in case of a plurality of inventions disclosed in the main
application).
d) Convention Application, claiming priority date based on filing in convention countries.
e) National Phase Application under PCT.

Patent Process in India

The patent process in India or patent prosecution refers to the entire process of obtaining a
patent grant. It involves the interaction between the Assignee/Inventor or Patent Agent and
Patent Office concerning the patent application.

A patent application has to pass through various steps during the patent prosecution process.
These steps shall be discussed below for our readers’ basic understanding and answers to the
questions of how to apply for a patent in India.

Step 1: Write down the invention (idea or concept) with as many details as

possible

Collect all the information about your invention such as:

 What is my idea/invention?

 How does it work?

 What problem my innovative idea is solving

 What is the field of my invention?

 What are the advantages of my innovative idea?

 What are the elements or components of my innovative idea?

 Can I draw a block diagram or device or flowchart or sketch that explains

my invention in a better way?

 What are the advantages of my invention over existing knowledge that is

prior arts?

 Who are the competitors with what product or service etc...

Ideally, if you have worked on the invention during the research and development phase you
should have something called a lab record duly signed with a date by you and your respective
authority.

Step 2: Include drawings, diagrams or sketches explaining the working of the invention

The drawings and diagrams should be designed so as to explain the working of the invention
in better way with visual illustrations. They play an important role in patent application.

Step 3: Check whether the invention is patentable subject matter

All inventions may not be patentable, as per the Indian patent act there are certain inventions
that are not patentable explained in detail.

Step 4: Patentability search / Novelty Search (this is an optional step)

The next step would be finding out whether your invention meets novelty criteria as per the
Indian patent act? A detailed explanation for all patentability criteria is given here.

The patentability opinion is provided by the patent professionals upon conducting an

extensive search and forming a patentability report. In this step, the patent agent or attorney
who is working on your invention helps you in finding out whether your invention meets all
patentability criteria which are:

 Novelty
 Non-obviousness

 Industrial application

The patentability search is aimed towards finding out the novelty and non- obviousness of the
invention, the search identifies the closes possible prior arts (known to the public) relating to
your invention, and based on the results obtained an opinion about the patentability of your
invention may be provided by a patent attorney.

Based on the results found and reviewed in a patentability/novelty search report, the
patentability opinion may be positive, negative or neutral. A positive patentability opinion
indicates you stand a good chance to get your patent granted for your invention.

The patentability report and opinion helps you decide whether to go ahead with the patent or
not, chances are what you thought as a novel might already be patented or know to the public
in some form of information. Hence this report saves lots of time, effort, and cost for the
inventor by helping him decide whether to go ahead with the patent filing process or not.

Cost: the professional fees for patent attorney can range from Rs. 12,000 to Rs. 15,000 for
performing a patentability / Novelty search

Time: the time required is about 5-7 working days

The outcome of this step:

The outcome of this patentability search report is:

 You get to know about the opinion on the patentability of an invention

 The inventive step and novel feature would be identified when our invention is compared
with the closest possible prior art found in the

patentability search report

 The patentability search report would give you an overall picture of the

state of the art that is the current stage of the technology and you may find some white areas
where you can do further research and development

 The inventive step identified via patentability search can be leveraged while writing a
patent application and especially claims of patent such that our patent application stands a
good chance going through the examination stage to a granted patent.

 In case the patentability opinion is negative, then it saves a lot of cost and time which
would have unnecessarily invested in proceeding with patent filing process and eventually
getting the application rejected.
Note: in spite of all these benefits of the patentability search, this is an optional step. You can
choose to directly file the patent application without going for a patentability search.

Process of Patent Registration in India:

Step 1: Filing A Patent Application

As explained above, patent documents can be filed either online or at the patent office in
respective jurisdictions: Kolkata, Delhi, Mumbai, and Chennai.

Basic types of applications:

Provisional application: Inventors usually opt for provisional application when their idea is
in the research and development stage. The specification document contains a simple
description of the invention. However, the inventor should file the complete patent
specification document within 12 months of submitting the provisional application.

Complete application: When an inventor has the complete invention while applying for a
patent, he can file a complete application. Chapter III, Section 10 of the Indian Patent Act,
outlines the structure of the specification document.

Fee:

Small
Natural Person Large Entity
Entity/Startup
(INR) (INR)
(INR)

Physical Filing 1750 1750 8800

E-Filing 1600 1600 8000

For more details

https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_11_1/Fees.pdf

Step 2: Publication

Up on filing the complete specification along with application for patent, the application is
published after 18 months of first filing. No fees or action is required by inventor in this step.
But, if you don’t want to wait till the expiry of 18 months, an early publication request can be
made along with prescribed fees. Generally the patent application is published within one
month form request form early publication.

Rule 24. The period for which an application for patent shall not ordinarily be open to public
under sub-section (1) of section 11A shall be eighteen months from the date of filing of
application or the date of priority of the application, whichever is earlier. Provided that the
period within which the Controller shall publish the application in the journal shall ordinarily
be one month from the date of expiry of said period, or one month from the date of request
for publication under rule 24A.

Rule 24A. Request for publication.—A request for publication under sub- section (2) of
section 11A shall be made in Form 9.

The early publication request can be made (optional step) with form 9 and by paying
prescribed fess

Fees:

Small
Natural Person Large Entity
Entity/Startup
(INR) (INR)
(INR)

Physical Filing 2750 2750 13750

E-Filing 2500 2500 12500

Step 3: Request for Examination (RFE)

The patent application is examined only after receiving request for examination
that is RFE. Up on receiving this request the controller gives your patent
application to a patent examiner who examines the patent application with
different patentability criteria like:
 Does the invention belong to Patentable subject matter?
 Does it have Novelty?
 Does it have Non-obviousness or an Inventive step?
 Is it capable of Industrial application?
The examiner creates a first examination report of the patent application upon
reviewing it for above terms. This is called FER (First examination report).
Everything step taken with a patent application before grant of patent is
generally called as patent prosecution.
The first examination report submitted to controller by examiner generally
contains prior arts (existing documents before the date of filing) which are
similar to the claimed invention, and the same is reported to the patent
applicant.
The fees for request for examination RFE is as below.
E-filing
Particulars Individual Small Entity Other than Small
Entity
 Express 4000 10000 20000
request of
examination of
application for
patent

Particulars Individual Small Entity Other than Small

Entity

Request of 5600 14000 28000

examination of
International
Application for
patent

Rule 24C. Expedited examination of applications.—

An applicant may file a request for expedited examination in Form 18A along
with the fee on any of the following grounds, namely:-
1. That India has been indicated as the competent International Searching
Authority or elected as an International Preliminary Examining Authority in
the corresponding international application; or
2. That the applicant is a startup.
Important Note: You may also file expedited examination request if you have
women as applicant or co-applicant. This is an important strategy to speed up
the patent process and reduce the time required from patent filed to patent
granted.

Step 4:Patent Examination

The Controller will transfer the application to the examiner within one month of the request
for examination. Firstly, the patent examiner will thoroughly examine the patent and ensure
that the invention is patentable and complies with The Patent Act. Furthermore, the examiner
will issue the First Examination Report (FER) to the applicant or authorized agent within two
months of receiving the file.

The examiner may raise objections regarding the patent application in the FER report. The
FER generally includes a summary of the report, a detailed technical report with a list of cited
documents for novelty, inventive steps, and other formal requirements. These days the
examination reports are issued by email, and where no email is available, the examination
report shall be dispatched by post.
The applicant should respond to these objections within six months of the report. Likewise,
some guidelines for responding to a First Examination Report can be found in the
article procedure to file a response. However, the applicant can also request an extension to
respond to the objections for three months via Form 4. Meanwhile, if the applicant fails to
respond within the stipulated time, the Indian Patent Office will consider the application
abandoned.

Step 5: Examination Response

Once the patent application examination is conducted, and objections are generated in the
FER, the applicant is expected to respond to the objection present within six months from the
date of the examination report.

The FER may also contain some objections under Sec 9, 10, 57, and 59 of the Patents Act,
1970, which lists the format-related requirements of the specification, drawings, and other
enclosures of the Patent Application. These need to be addressed as well.

Incorrect, delayed, or improper response to the FER can prove detrimental to your patent
application. Therefore, it is imperative to address all the objections accurately to ensure a
quick patent grant.

The applicant can amend the claims to overcome the objection.

step 9: Clearing all objections

If the response to objections raised in first examination report could not resolve the objections
completely then a hearing (meeting in person or on video conference) can be requested. In
hearing, you (the inventor) along with patent attorney can discuss with the examiner about
the resolution of objections or making changes to the patent application as per the suggestion
of the examiner (panel).

This communication (written or in hearing) between patent office and patent application
(inventor) is to ensure that all objections raised in the patent application are resolved. (If not
the patent will not be granted) and the inventor has his fair chance to prove (argue) his point
and establish novelty and inventive step over existing prior arts.

Upon finding the patent application in order of grant, it is a grant to the patent applicant as
early as possible.

Step 6: Grant of Patent

Finally, once the patent application overcomes all the objections, the patent office grants the
patent and publishes it in the patent gazette. The patent office issues intimation concerning
the acceptance of the application. Within seven days of approval, a grant certificate is issued
via email.
Step 7: Renewal of patent

The renewal fee shall be payable at the expiration of the second year from the date of the
patent or any succeeding year to keep the patent in force. You can find further details
concerning the patent renewal and fees applicable here.

Opposition (Optional)

As soon as the publication of the patent application and the filing of the request for
examination is complete, any third party can file a pre-grant opposition. In comparison, only
an interested party can file a post-grant opposition within 12 months of the granting of the
patent. An interested party refers to any company in a similar field of business.

Firstly, an Opposition Board receives the objections and evidence from the third party. It
carefully scrutinizes the evidence from the opposition and the patent holder’s response to the
opposition. Then, it submits its recommendation to the Controller. Usually, the patent office
decides to maintain, amend, or revoke the patent via a hearing. It ensures that the patent
cannot proceed with the grant unless the opposition is set aside.

Further, you can find more details on the opposition and its various aspects here.

There is no fee chargeable by the patent office on filing the pre-grant opposition, whereas the
below-mentioned provides fee particulars for filing the post-grant opposition:

Small
Natural Person Large Entity
Entity/Startup
(INR) (INR)
(INR)

Physical Filing 2600 2600 13200

E-Filing 2400 2400 12000
Therefore, the above essential points must be noted while filing a patent application in India.

The process and procedure of obtaining a patent are very systematic and scheduled; hence, it
is inevitable to meet the deadlines to avoid complications. One can always seek the help and
guidance of a patent attorney to navigate the patenting process easier.