Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.
How to file Applications in India:
All the inventions may not be eligible for patenting. For example, the inventions pertaining to the area of agriculture, horticulture, process for medical treatments, plants, animals, business methods, algorithms, mathematical method, mental act, traditional knowledge and atomic energy listed in section 3 under Indian patent act, are not patentable in India.
There are various inventions which are covered under Patentable inventions, some of which are as below–
i. Art, Process, Method or Manner of manufacture
ii. Machine, Apparatus or other Articles
iii. Substances produced by Manufacturing
iv. Computer Software which has Technical application to Industry or is used with Hardware
v. Product Patent for Food / Chemical / Medicines or Drugs
Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India.
An Application for a Patent for an invention may be made by any of the following persons either alone or jointly with any other person:
i. True and first inventor
ii. True and first inventor’s assignee
iii. Legal representative of deceased true and first inventor or his/her assignee
It is very common query that how to file application in India? Below are the steps to get Patent approved in India:
Steps in Patent Filing:
a. Search in Patent Database-
The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs.
Before applying for patent, the applicant should search the patent database for any exisitng or pending patent in same subject matter. Below is the link to search Patent Database- http://ipindiaonline.gov.in/patentsearch/search/index.aspx
A published invention cannot be subsequently patented, not even by Inventor himself. Similarly, the commercial use of the invention prior to the date of filing patent application would be a fatal objection to the grant of a patent for such invention thereafter. However secret trials and limited experiments are allowed.
Another frequent mistake is to wait until their inventions are fully developed for commercial working, before applying for patents. There is possibility of others doing the same research. It is, therefore, advisable to apply for a patent as soon as the inventor’s idea of the nature of the invention has taken a definite shape.
b. Online Apply for Patent-
Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. Patent Offices are located at Kolkata , Mumbai, Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions.
i. For Online filing, click on https://ipindiaonline.gov.in/epatentfiling/user/NewUserRegistration.aspx.
ii. Complete On-line Registration process for getting User ID & Password.
iii. Login to e-Patent portal after successful registration.
iv. Download Client Software for preparing Patent Application(s) offline.
v. Complete the Patent Application offline and generate an XML file using Client Software.
vi. After creating Application (XML) file offline, digitally sign the XML file (Max. file size permitted 15 MB) for uploading to the IPO Server.
vi. Login again to e-Patent portal for uploading Application XML file on IPO Server.
vii. Upload & submit digitally signed XML file to IPO Server.
viii. Make payment.
ix. Review Application Status on e-Patent Portal.
x. On successful EFT, acknowledgement details would be displayed/ generated.
xi. Print the Acknowledgement.
To file a patent application, the applicant will have to submit form 1, form 2, form 3 and form 5. Subsequent to filing these forms with the appropriate fees, he will receive a patent application number from the patent office. He can choose to file form 9, which is optional, and form 18 along with fiing a complete application or after filing a complete application.
c. Content of Forms-
Form 1 – Application for Grant of Patent: This form is an application for grant of patent in India. Details required in this form are name and address of the inventor, name and address of the applicant, information corresponding to prior patent applications relating to the current invention, and some declarations, among other information.
Form 2 – Provisional/Complete Specification- It is used to furnish patent specification. It can be provisional or a complete patent specification depending of the type of patent application. In case of Offline filing, 2 copies of the patent specification has to be sent to the patent office. Additionally, count the number of sheets and claims and calculate the appropriate fee. While counting the sheets, even the drawing sheets will have to be taken into account.
Form 3 – Statement and Undertaking Under Section 8- It is used to furnish information relating to patent applications filed in other countries for the current invention. Additionally, any information relating to the rights corresponding to the present patent application has to be furnished. Further, Form 3 is used to keep the patent office informed in writing the details regarding corresponding applications for patents filed outside India.
Form 5 – Declaration as to Inventor-ship- It is used to declare the inventors of the subject matter sought to be protected using the current patent application.
Form 9 – Request for Publication- Filing an early publication request is an optional step. By filing this form, patent specification is published within 1 month from filing of form. The patent rights start from the date of publication of the patent application. On the other hand, if this form is not filed, then the patent specification will be published by the patent office after 18 months from the priority date.
Form 18 – Request for Examination of Application for Patent- It can be filed within 48 months from the priority date. The patent office will not consider the patent application for examination unless this form is filed. Therefore Form 9 and Form 18 are used to expedite the patent process.
d. Applicable Fee-
The application filing fees for an individual person(natural person) is Rs.1, 000/- and for a legal entity other than individual is Rs.4, 000/- upto 10 claims and 30 pages. However, in case, the number of pages exceed beyond 30, then natural person has to pay Rs.100/- each extra page and person other than natural person has to pay Rs.400/- per page. Similarly if the number of claims exceed beyond 10, then natural person has to pay Rs.200/- for each additional claim and person other than natural person has to pay Rs.800/- for each additional claim.
e. Duration of Patent-
Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed.
f. Renewal Fee-
A patent need to be renewed every year to keep it in force. The first renewal fee is payable for the 3rd year and must be paid before the expiration of the 2nd year from the date of patent if the patent has not been granted within two years the renewal fees may be accumulated and paid immediately after the patent is granted, or within three months of it’s recordal in Register of Patents or within extended period of 9 months ,by paying extension fees of six month on Form 4, from the date of recordal.
If the renewal fees is not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided application is made within 18 months from the date of cessation. Renewal fee is counted from the date of filing of the Patent application.
[For Further Information or Professional Advice, contact Rahul Vats at vatsrahul.ca@gmail.com]
