We provide the following Patent Application Related Services In India:
- Filing in India and in other countries the patent applications
- Filing of PCT applications, Convention applications, national phase applications
- Conducting prior art, Freedom to operate (FTO) and various other searches
- Watching services (all jurisdictions/countries)
- Assignment and Licensing services
- Retainership services
- Portfolio management services
- Valuation of IPR including Patents
The following are the different types of Patent searches:
Novelty/ Prior Art Search:
The above search is conducted to determine novelty and non-obviousness of an invention. It also includes search and examination of published materials and patents to see if the same or similar invention exists already.
Freedom to Operate (FTO):
Before investing large amounts of money into a new project, a business owner may want to know as to whether he is infringing any other person’s patent. A freedom to operate search is conducted with this aim. It includes search of published, expired and un-expired patents. The results show as to who is operating in which country in respect of the said invention.
This is conducted to obtain an overview of a particular technology and its history, and development over a period of time.
The following are the types of Patent Applications that can be filed in India:
Patent Application enclosing Provisional Specification:
When the research on invention is not completed fully, the inventor may file a Patent Application enclosing provisional specification followed by a Patent Application enclosing complete specification within 12 months. The purpose of filing Patent Application with Provisional specification is to capture the priority date and block the invention in the name of the inventor. It must be noted that such a application can be filed only locally, say in India. This means to say that a PCT application/ International National Application cannot be filed with provisional specification
Patent Application with complete Specification:
The inventor may file a patent application with complete specification giving full details of the inventions with details of invention, drawings and diagrams.
Convention Patent Application:
When an Applicant files an Application for a patent claiming priority date based on patent filed in one or more of the convention countries, it is called Convention Patent Application. A Convention Application must be filed within 12 months from the date of earliest priority Application.
PCT National Phase Patent Application:
After filing a PCT Application, the inventor may file within 31 months from the date of earliest priority, a PCT National Phased Application in India. Within a period of 30/31 months from the date of earliest priority, an applicant can file a National Phase Application in designated countries.
PCT International Patent Application:
An Applicant may file, with India as a Receiving Office (RO), a Patent Corporation Treaty (PCT) Application. A PCT is multilateral treaty and is administered by International Bureau (IB) of World Intellectual Property Organization (WIPO), Geneva Switzerland. This maybe filed at any of the Indian Patent Offices Mumbai, New Delhi, Chennai & Kolkata.
Benefits of filing PCT International Application:
- The PCT system helps in obtaining protection in various member states.
- The applicant has a period of 30/31 months to decide in which countries to pursue the patents.
The following is the procedure to be followed for obtaining a Patent in India:
A patent search is generally conducted before filing a patent Application.
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Filing a Patent Application
An inventor may file Patent application enclosing Provisional or Complete Specification.
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Publication of Patent Application:
An inventor may file request for examination for early publication of the patent. In case the same is not filed, the Indian Patent Office will publish the patent application within 18 months from the date of filing or date of priority whichever is earlier. For the purpose of infringement proceedings, the applicant has the same rights as that of a patentee from the date of publication to the date of grant. However the infringement proceedings can be initiated after the grant of patent.
Examination of Patent Application in India:
Filing a request for examination by the applicant is mandatory to enable the patent office to start examination of the Application. The Patent office issues what is known in First Examination Report (FER) to the applicant citing requirements to be complied with in case he wants to pursue the patent application. A period of 1 year is allowed by the patent office to meet the requirements and allow the application to be put in order for grant.
The patent office may issue second examination Report (SER) in case it has further requirements.
Pre Grant Opposition:
At any time after a Patent is published and before it is granted any person may represent before the Patent office by filing an opposition against the grant of the patent.
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Hearing at the Indian Patent Office:
The Patent office may call for a hearing to seek clarifications from the applicant on the requirements on application filed and reply given by the applicant.
Grant of a Patent:
If the application for Patent is found in order for grant, the Patent Office shall grant the Patent and Letters Patent is issued and the details of the grant of patent are published in the Patent Journal.
Post Grant Opposition if any:
Any person may file opposition after the grant of patent within a period of 1 year from the date of publication of grant of patent.
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Term of Patent:
A patent is issued for a period of 20 years from the date of Application or priority date whichever is earlier.
Payment of Annuity fees:
Annuity fee is payable from 3rd year onwards from the date of filing of Patent. In case the patent is granted in a year beyond 3rd year the annuity fee is payable after the grant for all the years starting 3rd year.
For details of annuity fee payable every year Click Here
- Applicant: (Firm / Company / Individual)
- Address, Tel. and Email:)
- Full Name of the signatory with Father`s / Husband`s Name:
- In Case Of Proprietorship/ Partnership/ Company – Full Name (S) of Proprietor/ All Partners / All Directors with Father Name, Residence Address and Their Nationality
- Title of the Invention / Patent:
- Patent write up details.
- Describe the industry and the industry in which you have invented the product or process / any improvement thereof.
- Give back ground/introduction of product in which the invention is made.
- Details of disadvantages and inconveniences faced while using currently available product.
- Describe the invented product or improvement in the current product. Describe process of manufacture, description of technological advancement as compared to the currently available product. Also describe as to how disadvantages of the currently available product are overcome with the help of invented product.
- Describe cost saving, cost effectiveness or production efficiency as compare to the currently available products.
- Provide drawings and diagrams with description thereof.
A patent maybe opposed either before the grant or after the grant and they are referred to as pre grant and post grant oppositions respectively.These are described below:
Pre Grant Opposition Sec 25(1):
Any person may file a representation opposing the grant of a patent after the patent is published and before it is granted. The patent applicant may reply to the representation/ opposition and may file the evidence and thereafter the patent office decides whether to grant the patent or to refuse the same or prescribe the amendments to the complete specification.
Post Grant Opposition Sec 25 (2):
Any “person interested” may give notice of post grant opposition at any time after the grant of patent but before the expiry of 1 year from the date of publication of grant. Thereafter the patentee may file a reply statement with evidence (if any) in support of his case. The opponent thereafter may file his evidence strictly confining to the patentee’s reply.
The Controller shall constitute the Opposition board and the board conducts the examination of the patent and submits their recommendations to the controller who decides upon the opposition and notifies his decision to the parties giving reasons thereof. The decision of the controller can be appealed before the Intellectual Property Appellate Board (IPAB).
The official filing Fee as per the Patent Act is given below:
- There are 2 categories of applicant natural person and other than natural person.
- Other than natural person are classified into small entity and other than small entity.
- A small entity is one where the value of plant and machinery that is used in business is less than Rs. 10 Crore in value. In case the business is engaged in providing services, the value of equipment in business is less than Rs. 5 Crore. If this is the case, the business is considered to be a “small entity” as per MSME Act guidelines.
For Fees structure please Click here
A patent is granted for a period of 20 years from the date of filing in India or in any of the convention countries. In case of patents entering National Phase in India through PCT route the term of patent is calculated.
The Renewal fee must be paid in advance for each year from 3RD year onwards. In case the patent is granted later than 2 years from the date of the filing of the application the renewal fee till that date must be paid within 3 months from the date of recording of the patent in the patent Register. This period is expandable by 6 months. Payment of fees in advance in 2 years or more in advance is allowable under the Act.
For details of fees please click here
An applicant can file PCT Application at any of the Patent Offices at Mumbai, New Delhi, Kolkata and Chennai.
The following documents are attached for application:
- Claim (s)
- Drawing (s), if any
- Sequence listing, if any
- Abstract and the required fees
The application must be filed within 12 months from the date of filing in India. However No application is filed in India, then the PCT application can be filed within 6 weeks from the date of filing in India and after taking permission under Sec 39 from Indian Patent Office. Presently India has been functioning as a International search authority (ISA), International Preliminary Examining Authority (IPEA). The other ISA are Australian, European, China, and Sweden and US patent offices.
After receiving a Patent the Patentee can exclude 3RD parties from selling or offering the sell for patented product. In case the Rights of the Patentee are violated the same amounts to Infringement of Patent.
However, if the patent is used by the Government or is used for research purposes the same does not amount to Infringement. Importing the patented products by any person from an authorised person is also not considered as infringement. Authorised person means a person authorised under the law to sell the patented product. It must be noted that a suit for infringement only if the patent has been granted. However the patentee can claim damages for the infringement between the date of publication and its grant. The suit for infringement must be filed within 3 years from the date of infringement. It is necessary to pay the renewal fee and keep the patent alive in order to be able to file for infringement.
Remedies for Patent Infringement:
The following are the remedies available for patent infringement:
A patentee may file a suit and an application for Interim injunction or a permanent injunction. An interim Injunction is granted by the court on establishing a prima facie case by the patentee. The patentee may also claim damages in the suit. Permanent injunctions are granted after trial which is after interim injunction stage. The appointment of a commissioner to take inventory of the products which are of infringing in nature. The plaintiff may appeal for and accounts of profits too. However in case the defendant proves that he was not aware of the patent and did not believe that he is committing infringement on account of profit shall not be granted by the court. Every ground on which the patent may be revoked is available to the defendant as ground for defense in a suit for infringement.
What is a patent? What are the benefits of obtaining a patent? What are the rights of a patent holder (patentee)?
A patent is a statutory right for an invention granted by the State for a limited period of time, generally 20 years. The patent owner (patentee) enjoys monopoly rights and can legally exclude others from selling the patented product or process without his consent.
What are the requirements for applying for a patent? What is the procedure for applying for a patent?
The requirements for applying for a patent are as follows.
- The invention must be novel
- It must be non-obvious to a person skilled in the art.
- It should have capability of an industrial Application.
- It must not fall within the provision of Sec 3 & 4 of the patent Act 1970.
The applicant must disclose fully the methods of making the product or description of the process.
For procedure for applying for patent please Click Here
What are the inventions which are not patentable (Sec 3)
According to Section-3 of Indian patent act-1970. The following inventions are not patentable-
- An invention which is frivolous or which claims anything obvious or contrary to well established natural laws.
- An invention the primary or intended use of which would be contrary to law or morality or injurious to public health.
- The mere discovery of a scientific principle or the formulation of an abstract theory i.e. invention of living being or non-living substance occurring in nature.
- The mere discovery of any new property or new use for a known substance or of the mere use of known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
- A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or process for producing such substance.
- The mere arrangement or rearrangement or duplication of known devices each functioning independently of one another in a known way.
- A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
- A method of agriculture of horticulture.
- Any process for the medicinal, surgical, curative prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
- Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
- A mathematical or business method or a computer programme per se or algorithms
- A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
- A mere scheme or rule or method of performing mental act or method of playing game.
- A presentation of information
- Topography of integrated circuits
- An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Are the invention related to Atomic energy patentable?
No patent shall be granted in respect of an invention relating to atomic energy falling within sub section of section 20 of the Atomic Energy Act, 1962 (33 of 1962).
What are the documents required for applying for a patent?
The following are the requirements for applying for patent application;
- Detailed description of the invention complete with diagrams & drawings
- Details of the same invention/ Substantial same invention applied in other country PCT.
Can I apply for a global or an international patent? What is PCT?
There is nothing such as a “Global” or an “International” patent. In order to secure rights in various countries or regions, one has to apply in that country or in that region since the patent rights are territorial rights. PCT (Patent Co-operation Treaty) is a multilateral treaty, administered by WIPO (World Intellectual Property Organization). An application filed under this is called an international application or a PCT application.
What are the advantages of PCT?
PCT facilitates obtaining protection in many countries (member countries of PCT) at a time. Saves time and effort of the applicant seeking protection in multiple jurisdictions. The applicant has time of up to 30/31 months to decide as to which countries he wants to apply for patent.
Is there any concession available for small companies or individuals while applying for a patent?
Generally speaking the fees payable by individuals is ¼ of the fees payable by large entities. Small entities pay 50% of the fees payable by the large entities.
What is provisional specification and complete specification?
For information please Click Here
At what stage I should file my patent in India or in other countries?
One must file a patent as early as possible. Filing a patent early avoid the risk of copying of invention by other persons. Under the provisions of Paris Convention treaty a person must file a patent application in any country within 12 months of the filing in 1st country. Under PCT norms one must file the national Phase Application within 30/31 months from the earliest of priority date
I want to keep my invention secret and apply for a patent. Can I do this?
An invention must be disclosed fully in such a way that the person skilled in the art can work out the invention.
What is the term of a patent? How many years the patent is valid?
The term of a patent is generally 20 years from the date of application.
Can I take legal action against the person who is copying my invention after I apply for a patent? If not, when can I take such an action?
It is advisable to apply for an early publication and have the patent published may initiate infringement action after the patent is granted. It may be noted that the Indian Patent Act provides similar Rights to the applicant on and from the date of publication of application as that provided to patentee.
Can I hurry up / expedite the process of patent?
To do this one must file request for publication and request for examination after filing the patent application.
What is the meaning of “patent pending” or “patent applied for”?
This means that the patent is applied for and is pending for grant.
If my patent is refused by the patent office in India, will the same be refused in other countries as well?
This depends as to the reasons for the refusal.