Tuesday, 19 April 2016

Overview of Patent Filing Procedures and Its Cost in India

A patent is a legal right provided by government to an inventor for limited period of time. It is a form of intellectual property and you can prevent other to use your inventions without your permission. With the help of Patentability search it would be easier to patent your idea.

Patent filling is essential if you want to protect your inventions and for detailed information about its procedure and cost in India please read below:

Patent Office and Branches

Territorial Jurisdiction
Patent Office Branch, Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
Patent Office Branch Mumbai
The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli.
Patent Office Branch,
New Delhi
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Patent Office, HO
The rest of India

Provisional/Complete Specification and International Applications under PCT

Provisional Application:
A provisional application is a priority application, which is filed when the invention is not finalized and is still under experimentation. A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented), but does not require formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). A provisional specification is usually filed to establish priority of the invention or filing date of the invention.

Complete Specification:
Complete specification is the document where all the details of the invention for which patent protection is desired are disclosed. It is filed within twelve months from the date of filing of provisional specification or priority document.

Fees for Provisional/Complete Specification/Convention/PCT national

Natural person
Small Entity
 Other than natural person and small entity(INR)
For filing patent application
For each sheet of specification in addition to 30
For each claim in addition to 10

International Applications under PCT:
A PCT application is an international application governed by the Patent Cooperation Treaty, and can be validated in upto 142 countries.

Advantages of filing a PCT Application:
A single international patent application can be filed in order to seek protection for an invention in upto 142 countries throughout the world.
1) The priority date obtained by filing a PCT application is internationally recognized, and has an effect in each of the countries designated.
2)  It gives the application 30/31 months from the international filing date or the priority date, to enter into various countries, and therefore gives the applicant more time to assess the viability of the invention.
3) Delays the expenses associated with applying for a patent in various countries
4)  Provides an International Search Report citing prior art, which gives an indication to the applicant whether the invention is novel and innovative.
5) Provides an option for requesting an International Preliminary Examination Report, the report containing an opinion on the patentability of the invention.
6) The International Search Report and International Preliminary Examination Report, allows the applicant to make more informed choices early in the patent process, and to amend the application to avoid any conflicting material before the major expenses of the national phase begin. It also gives the applicant a fair idea on the patentability of the invention before incurring charges for filing and prosecuting the application in each country.

PCT National Phase Application:
When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date (whichever is earlier).

Fees for Filing International (PCT) Application as an Indian applicant:
1) Transmittal Fee: Rs. 17,600/-
2)   Fee for priority document: Rs. 4000/- each for ONP
3) International Fee: $ 1363 for 30 pages
4)   Fee for each page in addition to 30 pages: $ 15
5) ISR: Applicant can choose from India, China, US, Europe, Austria, Australia, Sweden

What are inventions and what are not inventions

Patentable Subject Matter:
Sec 2(ac)- "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry
Sec 2(ja)-  "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art
Sec 2(l) - "new invention" means any invention or technology that has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.

Non-Patentable Subject Matter (Section 3 and Section 4):
1) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
2) an invention, the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
3)  the mere discovery of a scientific principle or the formulation of an abstract theory [or discovery of any living thing or non-living substances occurring in nature;
4)  the mere discovery of a new form of a known substance, which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
5) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
6) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
7) a method of agriculture or horticulture;
8) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
9) 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;
10)  a mathematical or business method or a computer program per se or algorithms;
11) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
12) a mere scheme or rule or method of performing mental act or method of playing game;
13) a presentation of information;
14)  topography of integrated circuits;
15) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Patent Filing Procedure:

Filing of patent application:
File an application for patent
1) With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant/agent
2Pay the required fee

Documents required for filing of a patent application
1. Covering letter- indicating the list of documents;
2. Application for Grant of Patent in Form 1 [section 7, 54 & 135 and Rule 20(1)] in duplicate;
3. Complete/Provisional specification in Form 2 in duplicate [Section 10; Rule 13]
4. Statement and Undertaking in Form 3 [Section 8; Rule 12];
5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney)
6. Declaration of Inventor-ship in Form 5  (only in case of an Indian Application; (Rule 4.17);
7. Certified true copy of the Priority document (in case priority is claimed);
8. Requisite Statutory fees (cheque/DD).

Publication after 18 months
A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application containing title, abstract, application no. and name of applicant[s] and inventor[s]. Application is kept secret for a period of 18 months from the date of filing. In 19th month, the application is published in the official journal – this journal is made available on the website weekly.

Early Request for Publication:
To expedite the process of grant of patent, a request for publication under Section 11(A)(2) can be made in Form 9, any time after filing of the application. Upon such request, the application will be published in one month from the date of such request.
Fees for Request for Early Publication for Natural person is Rs. 2,500
Fees for Request for Early Publication for small entity is Rs. 10,000
Fees for Request for Early Publication for Other than natural person and small entity is Rs. 20,000

Pre-Grant Opposition:
Upon publication, but before the grant of patent, any person based on grounds as mentioned in Section 25 (1), any person may file a pre grant opposition against the grant of patent. However, the opposition will be taken by the patent office only after the filing of Request for Examination. Opportunity of hearing the opponent is also available. After examining the opposition and the submissions made during the hearing, controller may either reject the opposition or accept the opposition and modify/reject the patent application.

Request for Examination:
Request for examination can be made either by the applicant or by a third party. A request for examination can be filed within a period of 48 months from the earliest priority date.
Statutory Fees for Request for Examination for Natural person is Rs. 2,500
Statutory Fees for Request for Examination for small entity is Rs. 10,000
Statutory Fees for Request for Examination for other than natural person and small entityis Rs. 20,000

First Examination Report (FER):
The controller will issue a first examination report that triggers a period of 12 Months from the date of issue of the FER to get the grant of the patent application. It is the duty of the applicant to overcome all objections raised in the FER and get the patent granted. Patent granted is published in the official journal.

Post-grant Opposition:
Within one year after the grant of a patent any interested person, based on grounds mentioned in Section 25 (2), may file a post grant opposition in Form 7 to the controller to cancel the grant of patent.
Statutory Fees for Notice of Opposition for Particular Natural person is Rs. 2,400
Statutory Fees for Notice of Opposition for small entity is Rs.6,000
Statutory Fees for Notice of Opposition for other than natural person and small entityis Rs. 12,000

Renewal/Maintenance Fee:
To keep a patent in force, the renewal fees shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year.

Natural Person(s)
Per Year (INR)
Small Entity
Per Year (INR)
Other than small entity
Per Year (INR)
Up to 6 years
7-10 years
11-15 years
16-20 years

Disclaimer: The information provided in this article is for general informational and educational purposes only and does not constitute or purport to render legal advice or legal opinions. The material is intended but not guaranteed to be up-to-date and should in no way be taken as an indication of future law and practice.

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