A step by step guide for filing a Patent in India

A step by step guide for filing a Patent in India

If you’re looking to file a patent in India, here’s a straightforward guide to help you through the process:

1. Who Can File: The patent can be filed by the inventors, their assignee, or their legal representative. The key is to provide a complete disclosure of the invention.
2. Filing the Application:
   • Form 01: Start by filling out Form 01 for the patent application.
   • Proof of Right: If the inventor is not filing the application themselves, the applicant must have a “Proof of Right” from the inventor. This can be an endorsement on Form 01 or a separate document like an assignment.
3. Provisional/Complete Specification:
   • Form 02: The provisional or complete specification should be filed using Form 02.
   • Complete Specification: This document should describe the technical field, background, and detailed description of the invention. It should be clear enough for someone with average knowledge in the field to replicate the invention. Drawings, plans, or diagrams often accompany this specification. It must also contain at least one claim that outlines the extent of protection sought.
4. Additional Forms:
   • Form 03: If applicable, file a statement and undertaking under Section 8 using Form 03. This informs the Indian Patent Office about similar patent applications made in other jurisdictions.
   • Form 05: File a declaration as to inventorship using Form 05 for applications with a complete specification, convention applications, or PCT applications designating India.
   • Form 26 (Power of Attorney): If filing through a patent attorney or agent, submit Form 26 within three months of filing the application. If a general power of attorney has been filed elsewhere, a self-attested copy can be submitted.
5. Priority Documents:
   • For a Convention Application or PCT National Phase Application, submit priority documents certified by the patent office of the jurisdiction where the first application was filed.
6. Publication:
   • The patent application is published 18 months after the priority date. If early publication is requested, the priority document should be filed before or along with the request.
7. Signatures:
   • Ensure that the application bears the signature of the applicant or their authorized representative, along with the date. Specifications and drawings must also be signed and dated.
8. Biological Material:
   • If the patent relates to biological material obtained from India, submit permission from the National Biodiversity Authority before the patent is granted. Indicate the geographical origin of any biological material used in the specification.
9. Request for Examination:
   • Finally, submit a request for examination using Form 18 to move forward with the process.

The Patent Application Process in India

Once you’ve filed your patent application, here’s what happens next:

1. Filing the Application: After you’ve filed your application for an Ordinary Patent or PCT National Phase Patent, the process begins.
2. Requesting Early Publication: You can request early publication of your application. Keep in mind, the patent won’t be examined until it’s published, so this request can speed up the process.
3. Early Publication: If you request early publication, the Indian Patent Office will publish your application within 10 days.
4. Standard Publication: Without an early publication request, your application will be published 18 months from the priority date.
5. Request for Examination:
   • You must file a request for examination within 48 months of the priority date. If you don’t, your application will be abandoned. The patent won’t be examined without this request, so it’s wise to file it early, especially if you’re looking to expedite the process.
6. Examination Process:
   • Once the examination request is filed, the Patent Office will review your application. If everything checks out, your patent will be granted.
7. First Examination Report (FER):
   • If there are issues, the Patent Office will issue a First Examination Report (FER). You’ll need to respond to the FER within six months, though this can be extended by three months if necessary.
8. Further Examination:
   • After your response, the Patent Office may issue additional reports if there are still outstanding objections. You and the Patent Office must resolve these issues within 12 months of the FER. You can also request a hearing with the examiner to address any objections.
9. Final Decision:
   • After considering your responses and any amendments, the Patent Office will either grant or reject the patent. If rejected, you have the right to appeal to the Intellectual Property Appellate Board.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.