Types of Patent Applications

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This post lucidly explains the different types of application which can be filed before Indian Patent Office.

  1. Provisional Application
  2. Non Provisional Application/Complete Application
  3. Conventional Application
  4. PCT- International Application
  5. PCT-National Application
  6. Application for Patent of Addition
  7. Divisional Application

Provisional Application is a non-final, preliminary application which is filed before the patent office to claim priority. This application is usually filed when an invention requires additional time to improve upon. This is beneficial because the Indian Patent Office follows the ‘First to File’ system. Early filing by the inventor prevents any other related inventions from becoming prior art to the inventor’s application.

When an application is accompanied by a provisional specification, a complete specification should be filed within 12 months from the date of filing of provisional application. Failure to do so leads to the abandoning of the application.

This application should briefly explain the invention and must be drafted very carefully to ensure that the priority rights are secured for your invention. Therefore this application acts as a proof that the inventor had the concept and idea of the invention at the time of filing of provisional specification.

Non Provisional Application is accompanied by a complete specification which is a techno-legal document. Complete specification should describe the invention in-depth and it should also disclose the best known method of carrying it out and necessarily end with one or more claims which define the scope of the invention.

Complete specification can be filed in 2 ways

  1. Direct filing- Complete specification is filed first directly with the Indian Patent office without filing any corresponding provisional specification
  2. Subsequent filing- Complete specification is filed subsequent to the filing of corresponding provisional specification and claiming priority from filed provisional specification.

Complete specification should essentially contain the following:

  1. Title
  2. Preamble to the invention
  3. Technical field of the invention
  4. Background of the invention
  5. Objects of the invention
  6. Statement of the invention
  7. Brief description of the drawings
  8. Detailed description of the invention
  9. Claims
  10. Abstract

Conventional ApplicationAn application which claims the priority of another application filed in one or more of the convention countries in known as a convention application. Whenever an application is filed in a convention country (basic application), the applicant has to file in India within 12 months from the date of filing of basic application. If applications are filed in two or more countries then the applicant has to file in India within 12 months from the date of filing of earliest application.

PCT- International Application The Patent Cooperation Treaty assists applicants in seeking patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world.

PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. Applicant can enter into various countries within 30/31 months from the date of filing of PCT application.

An Indian applicant can file PCT application in 3 ways. They are:

  1. Filing in Indian Patent office (IPO) acting as receiving office.
  2. Filing directly in the International Bureau of WIPO after getting foreign filing permit from IPO.
  3. Applicant can file in IB of WIPO after 6 weeks and within 12 months of filing of application in India.

PCT-National Application The national application follows the international phase. It is necessary for an applicant to file a national phase application in each designated country, where protection is sought for, within the time prescribed under PCT, i.e., within 30 months from the priority date. However, this time limit may be increased through National Laws by each member Country.

The applicant has to file the National Phase Application within 31 months from the priority date or International Application date, whichever is earlier.

For the National Phase Application, the title, description, drawings, abstract and claims as filed in the International Application under PCT shall be taken as the Complete Specification. All other formalities that are required for filing and processing an ordinary patent application shall apply to a National Phase Application.

Application for Patent of Addition When an applicant comes up with an improvement or modification of the invention described or disclosed in main application for which he has already applied for or has obtained a patent, the applicant may make an application for Patent of Addition.

A Patent of Addition shall be granted only after the grant of the main or Parent patent. There is no need to pay separate renewal fee for the Patent of Addition during the term of the main patent. A patent of addition shall be granted for a term equal to that of the patent for the main invention and expires along with the main patent. Date of filing shall be the date on which the application for patent of addition has been filed.

Divisional Application When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. The priority date for all the divisional applications will be same as that claimed by the Parent Application (Ante-dating)

The term of patent for a divisional application shall be twenty years from the date of filing of main application

Application Relevant section Priority date Important Condition
Provisional application S. 7, S. 9, S.10 Date of filing provisional specification. To file complete specification within 12 months.
Non provisional application S. 7, S.9, S.10, S.11 Direct filing- Date of filing complete specification
Subsequent filing- Date of filing provisional specification.
 
Enablement and to provide Best mode of working of Invention
Conventional Application S.133, S.135 Date of filing of earliest convention country Applicant has to file in India within 12months from the date of basic application.
 
The term of patent of a convention application shall be twenty years from the date of filing of the Application in India.
PCT- International application S. 39, S.7, Date of filing International application Applicant can enter into various countries within 30/31 months from the date of filing of PCT application.
 
PCT-National application
 
S. 7(1A), S.10(4A), S.138 Date of filing International application Applicant has to file in India within 31months from the date of International application
Patent of Addition S.54, S.55 Date of filing Main application A Patent of Addition shall be granted only after the grant of the main patent
Divisional Application
 
S.16 Date of filing of Parent application

Authored by Nisha Kurian , Head of Patent Portfolio division of BananaIP.

For for information on Patent Law in India, please contact us on contact@bananaip.com .

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