Indian Patent Procedure – ‘Client2Attorney’

Client’s mail

Dear Mr L & P,

I am the inventor of ABC invention, I wish to file for a patent in India, and maybe overseas also. Can you elaborate upon the entire Indian patent procedure?

Regards,
Mr X

Attorney’s mail

Dear Mr X,

The entire Indian Patent procedure could be divided into four steps, namely, (1) Filing, (2) Examination (3) Opposition (4) Grant.

The filing process starts when the inventor or his assignee file either a provisional specification or a complete specification. A provisional specification is filed in case your invention is not complete, but you still wish to protect it. Filing a provisional specification would give you a right over the date on which you filed it, also known as the priority date.

But, why would you want to file it so early just for a date? when the examiner does novelty analysis during the examination, a patent is said to be anticipated in case the subject matter of the patent has been prior published, prior used, or is in prior knowledge, and such prior publication, use and knowledge is checked before the priority date. That is to say, anything (related to your patent) before the priority date will be said to be constituting a valid ground for anticipation.

In case you file a provisional specification, you will get 12 months to file a complete specification. In case even after 12 months, you fail to file a complete specification, you can have an extension up to 6 months, however, if you choose to do so, you will also have to postdate your priority date to 6 months. In case you choose to postdate your application, you will have to make an application to the Controller along with an official fee of Rs. 800/-.

A complete specification is filed along with FORM 1 (application for grant of a patent; it also acts as a proof of right in case you are an assignee), FORM 2 (complete specification, including abstract and drawings, FORM 3 (details of foreign filings), FORM 5 (declaration as to inventorship). There are additional documents also needed, however, at the time of filing these document can also suffice.

Since you are an individual, the official filing fee is Rs. 1600/-. In case your specification has more than 30 pages, then each additional page would cost you Rs. 160/-. In case you have more than 10 claims, then each additional claim would cost you Rs. 320/-.

Additional documents that are required are FORM 26 (power of authority), Copy of priority documents (in case you are claiming priority from some other application), English translation of priority documents if required, Internation Search Report (in case you have entered India in national phase via PCT). Please note that in case you wish to file for a patent outside India, you will have to take a prior permission from the Indian Patent Office by filing requisite FORM 25.

Our comments with regard to Examination, Opposition and Grant will follow soon.

Regards,
L&P

Image from here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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