The most crucial things to know before filing a patent in India
The life of a patent begins with the filing of a patent application. Whether you intend to file a patent yourself or not, you should be aware of two critical procedures that should be completed prior to deciding to file a patent and beginning the three- to five-year process of obtaining a patent award.
The first stage is to determine whether submitting a patent is worth the investment. This phase often entails doing a patentability search to identify related technology and assessing the likelihood of obtaining a patent. The patentability search helps to avoid situations in which you file a patent for something that already existed, resulting in a significant loss of money and time.
The second stage is to prepare a patent application. It is important to remember that preparing or drafting a patent application is a difficult process since the patent application draft is a techno-legal document whose extent of protection is directly proportionate to the quality of the patent specification prepared. The patent application must clearly and accurately describe the invention in detail, including how it is different from existing technologies. It is crucial to work with a patent attorney or agent who has experience in drafting strong patent applications to ensure the best chance of obtaining a granted patent.
In our opinion, what a great draftsman brings to the table cannot be replicated by doing it yourself. However, considerations such as cost may make it difficult for you to hire a patent specialist. In the latter situation, you should be prepared to undertake a lot of reading to ensure that your patent application is properly represented.
Here we are presenting the most important points that every patent applicant should be aware of before or throughout the patent preparation and filing process in India. These points are:
1. Who is eligible to file for a patent in India?
An inventor, an assignee, or a legal representative for a deceased person can file for a patent in India. One or more of the applicant types can also apply jointly. Individuals, businesses, government agencies, colleges, and other entities can all be considered applicants if they fit into one of the three categories indicated above.
2. Jurisdiction for patent applications in India: Where to file?
Unlike many other countries, India has four patent offices: Kolkata, Mumbai, Delhi, and Chennai. Each Indian patent office has territorial jurisdiction, which dictates where the patent applicant should file their application. You cannot just file a patent application with any of the four patent offices. The relevant patent office is chosen based on the territorial limits where the applicant (or the first applicant in the case of joint applicants) resides, has a domicile, possesses a business location, or where the invention originated. For applicants without a business location or domicile in India, the address for service in India (often the patent agent's address) will be utilized to determine the proper office.
Office Territory Jurisdiction
The Patent Office Branch in Mumbai serves Maharashtra, Gujarat, Madhya Pradesh, Goa, and Chhattisgarh, as well as the Union Territories of Daman and Diu and Dadra and Nagar Haveli.
The Patent Office Branch in Chennai serves the states of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Pondicherry, Lakshadweep, and Telangana.
Patent Office Branch, New Delhi, serves the states of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi, and the Union Territory of Chandigarh.
The Patent Office in Kolkata serves the rest of India.
3. Patent filing types in India
Once you have determined the suitable patent office, the next step is to submit your patent application. In India, there are two ways to submit a patent application:
Electronic filing or the e-filing mode
Physical filing or paper filing.
E-filing of Patent Applications in India
The e-filing mode has gained popularity in terms of patent filing, with more patent applicants and agents choosing the e-filing system over the physical filing route. Over time, the Indian patent office has also begun to digitize patent records and has encouraged patent applicants and agents to use the e-filing platform, thereby eliminating errors while scanning physical records and making the process easier, faster, and more efficient for both patent applicants and the patent office.
To further encourage online filings, the Indian Patent Office announced that patent applicants will be charged an additional 10% government fee for physical files. This slight increase in physical submissions has resulted in a significant number of applicants switching to the e-filing method. Many patent firms used to physically file patent applications since the internet method was unreliable and they did not want to change their long-standing procedures. The increase in fees for paper filings has led to many businesses adopting the e-filing system to avoid charging their clients additional government fees.
Furthermore, the online system has improved with time and currently offers the option of filling in additional forms. Filling out a form online is more convenient than having to prepare a form, submit it to the office, pay, and wait for a receipt. Additionally, patent applicants are not subject to the restrictions of patent office hours and may submit their applications at any time of day. Furthermore, applicants from different cities do not need to visit and can complete the process entirely online.
Physical filings (paper filings)
For decades, physical submissions have been the primary method for submitting patents in India. However, given the benefits to applicants, patent agents, and the patent office, the e-filing system is gaining popularity.
4. Handle it yourself or employ a patent agency or attorney.
The next critical decision is whether to develop and file a patent application yourself or engage a patent firm with experienced patent agents and attorneys. It's a critical issue to answer, and several factors, including your budget, will most likely influence whether you hire a patent specialist or not. Additionally, professional fees account for around 75% to 95% of your patent costs. However, it is strongly recommended that you hire a patent specialist to assist you with patent filing and prosecution until the final decision on grant is reached.
Deadlines may appear to be a straightforward process, but they are not, especially when it comes to patent deadlines. Patents have tighter deadlines than other types of registrations (such as trademarks).
Consider this scenario: you've submitted a new patent application. You have 12 months from the filing date to file applications in foreign countries (if interested). If you consider filing patent applications in other countries after two years and are unaware of the 12-month deadline, you will be disappointed to learn that you have lost the option to file in foreign countries, effectively forfeiting your potential patent rights in these countries for free.
For example, suppose you filed a new patent application in India. You must submit a request for examination within 48 months of your filing date. If you fail to remember this deadline and do not file the request for examination within the time frame specified, your patent application will be regarded abandoned and cannot be revived.
Assess whether you are willing to take such risks with your patent application. If your budget still does not allow you to engage a patent agent, make sure to keep track of all deadlines to prevent missing any.
Creating your patent protection and strategy: If you or your organization is creative and always coming up with new ideas, you need a patent strategy and procedure in place to uncover inventions and properly protect them for maximum commercial gain. Furthermore, hiring a patent specialist can help ensure that you or your firm do not infringe on third-party intellectual rights while launching new items or services to the market.
5. Language, paper size, and typefaces for Indian patent applications: English and Hindi are the official languages for patent filings in India. The majority of Indian patents are filed in English. However, the Patent Office has appointed examiners who can review applications in Hindi.
If a patent application is filed in another country in the official language of that patent office (e.g., German, French, Chinese, Japanese), and a corresponding application is filed in India (via the Paris Convention or the PCT route), a translation in one of India's official languages is required. All patent applications must be completed on one side of a sturdy white A4 sheet paper. All papers must be written, typewritten, or printed in large and readable letters using a non-script typeface (e.g., Arial, Times Roman, or Courier) in a font size of 12 (ideally) with a line spacing of 1.5 to 2. Document margins should be 4 cm on the top and left, and 3 cm on the bottom and right.
6. Types of Patent Applications in India
An applicant for a patent may file the following applications:
Ordinary Patent Applications: An ordinary application is the initial application in India submitted directly to the Indian Patent Office without claiming priority.
A typical patent application may include two sorts of specifications:
A provisional application is a normal patent application that includes a provisional specification. A complete application is an ordinary patent application that has a complete specification. In certain countries, notably the United States, it is known as a non-provisional patent application.
PCT Applications: As of May 2024, the Patent Cooperation Treaty (PCT) allows patent applicants to apply for patent protection in all 157 PCT member countries using the PCT system. The PCT method offers a worldwide filing path, saving patent applicants time and money.
The PCT application system accepts two sorts of applications:
A PCT International application is filed when a patent applicant wants to protect their invention in numerous nations. Instead of filing multiple patent applications in each country of interest, companies can file a single PCT International application and reserve the right to seek patent protection in all PCT member countries.
E.g., an Indian corporation filing a patent application in India may want to protect its inventions in ten to twenty nations. However, instead of filing in all 20 countries during the 12-month term, the applicant may choose to file a PCT International application and reserve the right to designate all member nations in all other PCT member countries as well. Thus, they will have more time to determine whether or not to file in all 20 nations.
PCT National Phase Application: Once a PCT application has been filed and India is included as a designated country (by default during the filing system), a PCT national phase application in India must be filed within 31 months of the earlier priority date or the international filing date. A patent applicant in Germany filed a PCT International application and now seeks to file a patent application in India, claiming priority over the German patent application. The applicant has 31 months to file a PCT national phase application in India.
Convention application: A convention application is a method of filing a patent application in another Paris Convention member nation while claiming priority rights under the Paris Convention. As of May 15th, 2024, there are 180 Paris Convention members.
Similarly to the PCT method, patent applicants can file an ordinary patent application in India and subsequently a convention application in Paris convention member nations, and vice versa. However, we will focus on convention applications filed in India that claim primacy rights from another convention member country.
Additionally, every convention application filed in India must be accompanied by a comprehensive specification.
For example, the patent applicant may file the initial patent application in Australia and then file a convention application in India, claiming priority rights based on their Australian application.
Divisional application: If a patent application contains more than one invention, the patent applicant may split the application on his own or, in the case of an objection by the examiner, may be required to divide the patent application to guarantee that each patent application contains only one invention.
Patent of Addition Application: A patent of addition is filed for inventions that are enhancements or modifications to a previously filed patent by the applicant. The patent for an added application does not have to include any inventive steps.
7. Patent term in India
A patent in India has a duration of 20 years from the date of filing, provided it is renewed annually. In the event of PCT applications, the patent period will be 20 years from the international filing date under PCT.
The renewal fee is due only when the patent is awarded in India and is effective from the second year onward. If the patent is granted after two years from the date of filing, the fee is payable after the grant; however, all renewal fees accrued since the second year must be paid within three months (or an extended term of nine months) of the patent's registration in the register.
8. Cost of submitting a patent application in India
The cost of filing a patent application varies depending on the type of patent application submitted. For individuals and small entities, the cost is lower compared to large entities. Additionally, there are also discounts available for the online filing of patent applications in India. For detailed information, please visit the official website of the Indian Patent Office or consult with a patent firm or agent familiar with the process. It is important to consider all associated costs and fees when budgeting for a patent application in India.