Patent filing process in India is aimed at protecting an invention, or an innovation, or execution of a new idea, whereby a strong patent application is drafted by a patent attorney that includes title of the invention, an abstract, field of the invention, background of the related art, summary of the invention, brief description of patent drawings, detailed description of invention describing best mode to practice the invention, and the most important component of a patent specifications, i.e. set of patent claims enlisting novel and inventive features of the invention.
A patent applicant can decide to file either a provisional patent application or a non-provisional patent application (complete patent application) with the Indian patent office. If a provisional patent application is filed initially, the patent law mandates the filing of complete patent application within 12 months of filing of provisional patent application.
Section 9 of the Indian Patents Act, 1970, includes provisions for provisional and complete specifications. Specifically, this section states:
Section 9. Provisional and complete specifications
(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.
Therefore, in accordance with Section 9(1), it is a necessary requirement to file a complete specification within 12 months of filing a provisional specification.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications:
PROVIDED that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.
In accordance with Section 9(2), if a patent applicant has filed one or more provisional patent applications pertaining to a single invention, the applicant can request the Controller of patents to allow filing of a single complete patent specification in respect of such multiple provisional patent applications. In such a case, the 12 month period to file the complete patent application shall begin from the date of filing of the earliest provisional patent application.
(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.
(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before 3[grant of patent] cancel the provisional specification and post-date the application to the date of filing of the complete specification.
In India, the first and foremost step to protect the invention/ innovation/ idea is to file the patent application before the Indian Patent Office. The patent application can filed by submitting a few patent forms namely Form 1, Form 2, Form 3 and Form 5. Currently, patent forms in India can be submitted online as well as offline.
In accordance with Indian patent laws, the Indian patent office provides facilities for both registered patent agents (patent attorneys, patent lawyers) and patent applicants to file one or more patent applications. A crucial requirement to file patent in India via e-filing option provided by the Indian patent office is that of obtaining a digital signature certificate to complete the patent filing procedure in India. In use, the digital signatures of the patent agent or the patent attorney is to sign the different patent forms online. For online patent filing in India, the patent applicant or the patent lawyer (patent agent or patent attorney) can register his details on Indian patent office website. The e-filing website for patent filing in India is provided by the Indian patent office, which is accessible here.
Drafting a strong patent application with enforceable patent claims is a highly skillful task as writing the patent specification is essentially aimed at defining the boundary of the invention, which is the most important key element to be taken care of before submitting the patent application for patent grant procedure.
Generally, patent attorneys write patent claims while drafting a patent specification keeping in mind the patent laws and thoroughly understanding the technology.
Patent filing procedure in India involves filing of patent application, and then filing of request for examining the patent by the patent examiner. The patent process in India can be expedited by almost 18 months by filing a request for early publication via Form 9. During patent examination process, the patent controller assigns the patent application to a patent examiner to study the invention to determine whether the invention subject-matter is patentable or not.
Once the patent has been examined, the patent examiner issues the first examination report (FER), or the patent office action. As per latest patent laws in India, the office action response to patent examination report has to be filed within six months from the date of issuance of patent examination report.
Law Office of Patent Attorney Rahul Dev provides comprehensive solutions to all intellectual property needs of clients, including patent filing services in India. We operate as a close network of patent attorneys, patent agents and patent lawyers enrolled with Indian patent office and bar councils in India.
We assist individual researchers and inventors who develop novel and inventive technologies by searching relevant prior art (patent database and non-patent literature), determining patentability of invention, drafting patent applications, filing domestic and international patent applications in India, filing design applications in India, filing trademark applications in India, providing offshore patent services to global patent attorneys and patent law firms, providing patent outsourcing services, and the like.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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