Intellectual Property FAQ’s
Patent FilingnnThe process of acquiring a patent in India starts with the filing of the patent application. An application for a patent can be filed by any person who is either the:nn• True and first inventor of the invention;n• Assignee; orn• Legal representative of the inventor or assignee.nnAn application for a patent has to be filed at one of the four patent offices according to the jurisdiction of the applicant. The four patent offices are Kolkata Patent Office, Delhi Patent Office, Mumbai Patent Office and Chennai Patent Office.nPublication of a patent application in IndianOnce all the aforementioned details have been provided, the application will ordinarily be published within18 months in the official gazette. However, the same may be expedited if a request for early publication is requested by the patent applicant. The advantage of publication to the applicant is that the rights of the patent applicant start from publication, however, they are not enforceable till the patent receives grant. nnIt should also be noted that there are certain situations under which a patent may be prevented from being published in the gazette. These include situations such as:nn• Non filing of the complete specification within 12 months from the date of filing the provisional specification. n• Issuance of secrecy direction, orn• Withdrawal of application by the applicant.nnExamination of a patent applicationnAn application for patent is examined only after a request for examination has been made by the applicant. Such request should be made within 48 months from the date of filing of the application or priority. Once the request for examination has been made, the application will be examined by the patent office to verify the correctness of all documents and also to verify the patentability of the invention. After performing the examination, the patent office generally issues an examination report which is known as the First Examination Report (FER). The patent act also mandates a time period of 6 (six) months from the date of issuance of the FER to put the application in order for grant by complying with the objections raised by the patent office. nnGrant of a patent in IndiannOnce all the objections have been satisfied and the requisite fee has been paid, the application is granted. Once the patent is granted, it is again published in the official gazette. Any person interested in filing for opposition to the grant of patent can do so within one year period from the grant of the patent by way of a post grant opposition. nAnother point to note is that the patent rights which start from the date of publication are now enforceable.nnPatent TermnnAny patent which is granted will be valid for a maximum term of 20 years from the date of filing or priority, whichever is earlier. However, to keep the patent active for the said 20 years, the patent should be renewed every year. n
A patent application must contain the following forms:nnForm 1 – Application for grant of a patentnForm 2 – Specification (Provisional / complete) along with DrawingsnForm 3 – Statement and Undertaking regarding foreign applicationsnForm 5 – Declaration of inventorship nForm 26 – Authorization of patent agent or any other person. This is submitted in case a patent application is being filed through a patent agent. n
The time taken to grant a patent application usually depends on the country in which the patent application is filed. While some countries grant an application is 2-3 years, some others take nearly as long as 10-12 years. nnThe average time for obtaining a patent in India is around 7-8 years.n
The Indian patent office has provided an option to expedite the grant of a patent application by expediting the examination of the application.
Request for Expedited Examination of a patent application is a commendable initiative introduced by the Indian patent office to reduce the time taken to examine patent applications. nnRequest for Expedited Examination may be filed by an applicant who:nn1. Is a start-up;nn2. Was a start-up at the time of filing the patent application;nn3. Has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.nnStart-ups can benefit greatly if they choose to file an expedited examination request rather than an ordinary request for examination. The biggest advantage of requesting for an expedited examination is that the applications for which expedited examination is requested are allotted to a queue that is different from the ordinary examination queue, which already has lakhs of applications awaiting examination.n
To keep a patent in force, a renewal fee has to be paid by the patent holder after the grant of the patent for every year following the second year of the patent, until the patent term ends. The payment can be made by the patent holder himself or by hiring the services of an IP firm or a patent agent.
The cost for obtaining a patent in India may range from anywhere between a few thousands to lakhs. The fee differs greatly depending on the type of the applicant. For instance, individuals and startups are offered a huge discount of over 90% and small and medium scale enterprises are offered a discount of around 50% of the maximum fees.
Yes, but no person or company having a place of residence in India can file a patent application outside of India unless he /she has secured a Foreign Filing Permit / permission from the Indian patent office to do so or has filed a patent application in India and six weeks have passed since the application was filed in India.