Patent Filing

Pre-Filing Requirement

Following are required before starting filing procedure:

– Title of invention
– Brief description of invention
– Detailed description of invention
– Claims (may OR may not be req’)
– Abstract (may OR may not be req’)
– Figures (if any)
– Name of inventors
– Name of applicants
– Right of proof of Assignment (if any)
 Steps involved in the patent process in India

Step 0 – Decision on doing it yourself or

engaging a professional
Before you proceed with the patent application
process, decide whether you will need assistance of
a patent professional or you will undertake the
patent process yourself
If using services of professional, make sure that
you sign a Non-disclosure Agreement (NDA) with
the patent professional/firm before disclosing the
invention to them
Step 1 – Check the Patentability of the invention
by performing a search for similar technologies

 The first step (optional but recommended) in the

patent registration process is to perform a
detailed patentability search to determine the
chances of getting a patent
 Ideally be performed for both patent and non-
patent references
 Step 2 – Drafting a patent application
(Provisional or Complete)

The first step is to prepare an Indian patent

application (Form 1)
Each patent application has to be
mandatorily accompanied by a patent
specification (Form 2).

Based on the state of the invention, you can

either file a provisional patent application or
a complete patent application (also known as
Non-provisional in some countries).
Whether filing a provisional or a complete
application, extra special attention should be
paid to the patent draft included along with
the application

The patent draft is your representation in

front of the patent office and the decision of
the patent office on the grant of the patent
will be made based on the draft itself
 Step 3 – Filing the patent application in India

Patent filing in India can happen in the

following scenarios:

First filing in India : Once the patent

application is drafted, file for the patent
application in India and secure the filing date

Foreign filing decision: If interested in

protecting your invention in foreign
jurisdictions, the maximum time allowed is 12
months from your first filing date
Can opt for filing a convention application in
Paris convention members individually in
each of the countries you are interested in
protecting your invention
Or, you can use the Patent Cooperation
Treaty (PCT) system to reserve your right in
140 odd member countries
 Each application for a patent which is filed with the Indian
patent office needs to be accompanied by the forms provided
below:

 Form 1 – Application for grant of a patent

 Form 2 – Provisional/Complete specification)
 Form 3 – Statement and undertaking regarding foreign
application under section 8 (only required if a corresponding
patent application is filed in another country)
 Form 5 – Declaration as to inventorship (only to be filed along
with the complete application)
 Form 26 – Form for authorization of a patent agent (only
required if you are using a patent agent to help you file the
application)
 Form 28 – To be submitted by startup or small entity (only
required if you are claiming startup or small entity status)
 Priority documents – In case you are claiming priority from
a foreign patent application and entering India, you may be
required to provide the priority document as well.
Step 4 – Publication of patent application

When is it published?
 Every patent application which is filed with the
Indian patent office is kept as a secret until the
time it is published in the official patent journal
which is ordinarily after 18 months
 Automatic event and you need not make any
request
 However, if you wish to publish it earlier you can
make a request for early publication (Form 9) and
your application will ordinarily be published within
1 month of the request
The advantage of publication – The date of
publication is important as your privileges
and rights start from the date of publication,
Although you can’t enforce your rights by
way of any infringement proceedings until
your patent is granted
 When not published

It is also important to know that there are a few

scenarios under which a patent application may
not be published and kept as a secret:
 Secrecy directions have been imposed under the patent
act. Secrecy directions are imposed if the invention falls
in a category publication of which could be against the
interest of the nation.
 A complete application was not filed within 12 months
from the date of filing of the provisional application
 A request for withdrawal was made. Such a request has
to be made at least 3 months prior to publication. So, for
practical purposes, it is 15 months from the date of
priority in a standard patent application process.
Step 5 – Examination of the patent application

The examination process is where your patent

application will finally be examined on merits
of the invention as described and claimed in
the patent specification
Request for Examination
Unlike publication, examination doesn’t
happen automatically by way of filing of the
Indian patent application
 Applicant has to specifically make a request
for examining their patent application (Form
18)
Only when a Request for Examination (RFE) is received,
will the application be queued for examination
To fast track your patent application even further and
jump the examination queue, you can file a request for
expedited examination (Form 18A).
However, an expedited examination is only available to
the applicant if the applicant
-is either a startup;
-or the applicant chose the Indian Patent Office as the
International Search Authority (ISA)
-or International Preliminary Examining Authority
(IPEA) during their international application (PCT
application).
On the contrary, you may sometimes not want
to get your application examined early for
strategic reasons.

Reasons for deferring the request could

include extending the patent-pending life,
waiting for funding, etc
Examination process (Objections by examiner &
responding to objections)

During the examination process, the examiner will

scrutinize the application to ensure that the application
is in accordance with the patent act and rules.
The examiner also performs a search to understand
similar technologies to ascertain if the invention would
satisfy the patentability criteria.

Based on the review of the application, the examiner

will issue an Examination Report to the applicant,
stating the grounds for objections

The first such examination report is called the First

Examination Report (FER)
Once, the FER is issued, the patent applicant
needs to successfully overcome the objections to
receive a patent grant
The whole process may involve responding to
examination reports, appearing for hearing, etc.
The total time needed to put an application in
order for the grant is 6 months (earlier 12
months) from the date on which the FER is
issued to the applicant.
However, this 6 month period can be extended
for a period of 3 months by the applicant by
filing a request for an extension of time (Form 4)
 Step 6 – Final decision on grant of patent

Once, the patent application overcomes all

the objections, the patent will be granted and
published in the patent gazette
 Step 7 – Renewal

After the patent has been granted, it has to

be renewed every year by paying the renewal
fee.

A patent in India can be renewed for a

maximum period of 20 years from the patent
filing date.
Forms and Fees
 How Can I file for patent in India?

Patent filing in India can be done in two ways

Offline way: where one needs to submit hard

copies to the respective Patent Office.

However, the official fee for filing offline

Patent Application is 10 % more compared to
the official fee of online patent
registration mode.
Online way: also known as online Patent
registration, can be performed through
Indian Patent Office’s Electronic Patent filing
application known as e-service portal
Includes easier documentation as many forms
are not required to be submitted in
hardcopies, which saves a lot of effort
Allows the Application to keep all the records
in one place and also allows to check the
status of Application in real-time
E-Filing of Portal Applications
a. Web-based Patent filing application
b. Dual way login (digital signature as well as password-
based) and password regeneration procedure
c. Provision for Patent filing online of all entries as per
Schedule 1 of the Patents Rules, 2003
d. Proper validations with IPO Patent database
e. Facility to upgrade/ update the digital signatures
f. User Profile
g. Improved procedures to minimize transaction errors
to encourage people to Patent online

Authentication is done by the Digital Signature

Certificate (DSC)

It also facilitates online payment of fees through a

payment gateway with all the major modes of payment
like Net Banking, Credit Card, Debit Card and Unified
Payment Interface (UPI)
The Patent filing online facility of the Indian Patent office
provides flexibility to the Applicant and authorized Patent
Agents to work from their offices or home on a 24x7 basis.

They can work at anytime from anywhere

 How to proceed
Step 1 : Visit the official website of Indian Patent office and
navigate to the web-based Patent filing application – the
comprehensive e-filing gateway.
Step 2 : User needs to log in directly (if already registered),
otherwise, register as a new user by following the DSC manual.
Step 3 : User can select a new form to do a new Patent filing
online or any application form based on the requirement for an
existing online Patent filing.
Step 4 : Drafting of the new application form(s) or any other
form(s).
Step 5 : Upload PDF of the required document (if any).
Step 6 : User need to save the draft.
Step 7 : Go to the already drafted form(s).
Step 8 : User may enter the mobile number for SMS alert.
Step 9 : User can select the drafted form (s) and may proceed
for the signing of the drafted form(s).
Step 10 : Once the form(s) are digitally signed, user can make
the payment through available options of payment gateways.
Step 11 : Upon making the payment, the user will get the
acknowledgment receipt.