How to file for Patent in India? How about Patent prosecution Management in India?
As any other tedious process of getting work done in any government organization, getting a patent may not be on the top of it, it’s been simplified over the years, but yes the time taken for it to grant depends on application to application, considering the patent subject matter and the criteria’s of the applications and its prosecution. What may not consume much of your time is the filing of the application at any of the registered patent offices.
A few steps and you’re on the way to file one of your ideas as a patent application. Talking about it is much easier than filing. This is where at Singhwal we try to make it easier for our clients, wherein they do not have to go through all the trouble of filing an appropriate pre-formatted forms as per Indian patent Act and regulations.
We provide a flow of understanding to the clients from the roots and basic of filing an application and the regulations followed behind it. All our clients are asked to do, is to sit back and relax and watch their application pass through series of stages to obtain a patent grant. Singhwal uses both the manual and E- filing i.e. the online filing routes as per the circumstances.
- We help answer and support to few of the frequently asked queries and services like
- Who can file a patent application?
- What is an invention/innovation as Indian Patent laws?
- What is Patent?
- What is patentable?
- The term of patent?
- Territorial Scope?
- Which is not patentable invention?
- Documents required for filling a patent application?
- What does a patent application contain?
- What happens to the Patent application after filing?
and many more
Singhwal has been filing over 2000 applications belongs to various subject domains over the years and following on them until the end of prosecution and maintaining the granted patent during the life time.
The Series of filing as follow,
Ordinary Application for Patent
An application for patent filed with the Indian Patent Office without claiming any prior dates of filing or reference to the same application under the process of the Indian patent office is called Ordinary Application i.e. a fresh application filed for the very first time in India.
Provisional Application & Complete Application
Provisional Application is filed to establish priority of the invention, or a reference or booking of the dates at the Indian Patent office as being the first to file regarding the Patent content and the subject matter or the conceptual stage disclosure.
To which a complete specification of the patent application with all the details is expected to be filed later. If Complete specification is not filed timely, i.e., within 12 months of filing the provisional specification, the patent application is deemed to be abandoned, with no pont of recovery.
National Phase Application: Foreign applicants who want to file a patent application in India can file their patent application via Paris convention route or PCT route. Paris convention route provides twelve months timeline from your first filed application date to enter into India. PCT route provides 31 months timeline from your first filed application date to file in India. During the national phase entry, the patent specification and claims of the original/ PCT application must be filed as such in order to avoid future objections by the controller. Sometimes, Indian applicants also file their patent application in India via PCT route as there are many advantages associated with this procedure.
During the national phase entry, some applicants amend the claim in order to comply with Indian patent law. In some cases, the applicant removes the claims and files less number of claim compared to the original/PCT application. Hence, the applicant pays lesser fees for the amended specification and claim. This practice is not allowed as per Indian patent act. Indian patent law considers PCT application in the original form for national phase entry. Therefore, the controller provides objection during the examination in view of change in originality of the application filed in India compared the PCT application and ask the applicant to submit the original specification and claim and request to pay the remaining fees.
Singhwal attorneys have rich experience in handling filing of Indian patent applications having priority from foreign countries such as US and Europe.
A divided application as the name suggests it is an application that has been requested by the Indian Patent Office to be divided in two or more applications, reason being there may be more than just one invention in an application.
As per the section 16 of the Patent Act an applicant shall file a further application before the grant of the application, based on the objection of the Patent Examiner or his/her own intervention. However the date of the filing of a division application is same as that of the main application. The request for examination of the division application can be filed within 6 months from the date of filing divisional application or 48 months from the date of priority or main application filing whichever is later. The term of a divisional patent application ends with the priority/parent application. It should be noted that divisional application should be filed whenever the parent application contains multiple inventions. There are so many preceding cases wherein the applicants filed a divisional application for the claims which has been objected by the controller in view of patentability requirements. However, those applications are not considered under the purview of divisional application and the controller rejected those applications. The patent agent/ attorneys at Singhwal strategically advice our clients that at what circumstances the divisional application has to be filed.
Patent of Addition:
As per section 54 of Indian Patent Act, a Patent of addition is where the invention is a mere modification or improvement of the invention for which a patent application is already filed. The date of filing of patent of addition shall be either same or later than that of the date of filling main patent application. Grant of a patent of addition cannot be earlier to the main application. Term period of patent of addition ends with the term period of main application.
Fees: The patent office won’t consider or process any matter until the necessary fees has been made. The patent application can be filed and prosecuted physically by sending the necessary documents through registered speed post. Alternatively online filing option is also available for convenience of applicant. It should be noted that there is 10% additional fees has to be paid for physical filing of the documents. AS per the recent amendment, the patent agent has to transact the documents only via online filing. At Singhwal, we have been using both online and physical filing mode based on circumstance.
Forms required for patent filing:
Form 1: Application for patent.
Form 2: Specification (either provisional or complete specification which include abstract and drawings, if any)
Form 3: Statement and undertaking of foreign filing
Form 5: Declaration as Inventorship
Form 26: Power of Attorney
In case, the subject matter to be patentable is related to biotechnology product then the applicant has to submit the sample such as strain etc at MICROBIAL TYPE CULTURE COLLECTION AND GENE BANK (MTCC) in Chandigarh. The biotech product has to be submitted not later than the filing date of the application in India. Also, the applicant has to provide the reference number in the specification.
Similarly, if the invention involves use of biological material originated from India then the applicant has to get permission from national biodiversity authority before filing a patent application. The patent experts at Singhwal has rich experience in filing a patent application related to biotechnology related invention and involves biological resources originated from India.
Information about foreign filing has to be updated to the patent office periodically as and when the applicant files a corresponding application in other countries. It should be noted that there is no fees to be paid for filing Form 3. As per patent act, under section 64 (m), failure to file/ update Form 3 or providing false information in Form 3 leads to revoke the patent.
Form 5 has to be submitted along with the application or one month from date of filing.
The request for examination has to be filed within 48 months (four years) from filing the patent application in India by submitting Form 18. Form 18 A has to be filed in case of expedited examination of the application.
In general, the patent application is published on/ after 18 months from the earliest filing date in India. There is a provision available in the act for early publication of the application. Under section 11 (A) (2), the applicant can request controller to publish the application before 18 months period. It should be noted that the applicant can claim the penalty for patent infringement from date of publication of application. Therefore, once the patent is granted and the applicant proves that there is a patent infringement then he can claim penalty from the date of publication of application.
Technical experts and patent agents at Singhwal have rich experience in prosecution in vast subject matters. As per Indian patent act, the patent application must be in order for grant within six months from the date of first examination report (FER). If an applicant unable to respond to the FER and unable to make the application ready for grant with the six months then three months extension is available. This three months extension has to be requested before expiry of the first six months by paying necessary fees.
The examination report usually contains objection in view of novelty (u/s 2(j)), inventive step (u/s 2 (ja)), non-patentable subject matter under section 3. If a single prior art describes the invention claimed then that prior art is considered as novelty destroying prior art. A single prior art or multiple prior arts in combination teaches the current invention then the invention does not involve inventive step.
Most of the time, the non-patentable subject matter rejection includes section (d), (e), (f), (i), (k) and (p) of 3. Our technical experts having rich experience to respond to the rejections raised in the examination report.
In case, the controller is not satisfied with the written response/ arguments provided by the applicant then the applicant can request the controller to fix hearing in order to arrive at conclusion. The Indian patent office conducts the hearing via video conference and physical mode. Our patent attorneys has been attending hearings on behalf of our clients and hence having handsome experience in hearing process.
Any person can file a pre-grant opposition to request the controller not to grant the patent application. This can be filed any time before grant of patent application. Similarly, any interested person can file a post grant opposition within 12 months from date of publication of grant. The patent attorneys at Singhwal have been successfully representing the applicant during the opposition process. Our technical experts have good exposure in preparing response to the arguments presented by the opponent and successfully defend the opposition.
The controller grants the patent application if all the rejections raised in the examination report are addressed satisfactorily. Once the patent application is granted then the applicant has to pay grant fee which is calculated from third year from the filing the patent application in India to grant date. The grant fees have to be paid within three months from date of grant. There is six months extension is available to pay the grant fee. Once the grant fee is paid then every year renewal fees have to be paid to maintain the patent in force. Six months extension is also available to pay the renewal fees.
In case, the applicant forgets to pay the renewal/ maintenance fee within the prescribed period, which includes six months extension, the patent will be ceased. There is a provision available in the patent act, under section 60, to restore the ceased patent. This procedure can be availed by the applicant, if he/ she inadvertently missed to pay the renewal fees. Form 15 has to be filed along with necessary fees to restore the ceased patent. Patent portfolio monitoring team at Singhwal has multiple checking systems in order to meet the timeline for all activities. We periodically alert our clients by sending reminder for the action item to be carried out.
The patent expert team at Singhwal has rich experience in filing all type of patent application before Indian patent office. Our patent attorneys strategically prosecute the application and represent our clients during the hearing process and opposition proceedings. Our patent portfolio monitoring team periodically alerts our clients with respect to future action item in order to comply with timeline.