Convention Patent Application in India claims priority from a convention application and has to be filed in India
within 12 months
from date of priority and accompanied by a complete specification.
PCT National Phase Patent Application
PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within
31 months from
date of priority and accompanied by a complete specification in English. The English translation of the priority
documents (if filed in
language other than English) should be filed within 31 months from the date of earliest priority or within 3 months
of requisition
made by the Controller. Where PCT/IB/304 is not issued by WIPO, certified copy of the priority documents should
be filed within 31
months from the date of earliest priority.
There are four patent office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial
jurisdiction where the Applicant is located; the application has to be filed. For foreign applicant the application has to be
filed before the patent office within whose territorial jurisdiction the agent/ attorney for applicant is located.
Patent filing in India
The basic mandatory requirements for filing an ordinary patent application in India are as follows:
1. Name, address, particulars and nationality of applicant/s for patents
2. Name, address and nationality of inventor/s of patent
3. Provisional specification or complete specification with description, claims, abstract, drawings
Other requirements for Patents In India:
1. Declaration as to inventorship within 1 month of filing application
2. Certified copy of priority document where PCT/IB/304 not issued by WIPO within 31 months from date of priority
3. English translation of Complete Specification, Priority document along with verification in support within 31
months from date of priority or within 3 months of requisition made by the Controller.
4. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months
of filing of Patent application in any country outside India.
5. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other
arrangement) preferably notarised within 6 months from filing of application.
6. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary.
Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and
must be filed within 3 months of demand raised by the Patent office.
The basic mandatory requirements for filing a PCT National Phase Patent Application
in India are as follows:
1. Name, address, particulars and nationality of applicant/s for patent
2. Name, address and nationality of inventor/s of patent
3. Complete Specification with description, claims, abstract, drawing
In India Patent prosecution includes the following stages:
1. Filing of patent application
2. Publication of patent application on request or after 18 months from date of filing or priority whichever earlier
3. Filing of request for Examination within 48 months from date of application or priority whichever is earlier
4. Issuance of First Examination Report containing all the objections to grant of patent for complying within 12
months from date of issuance of same
5. Responding to the examination report and compliance
6. Issuance of further Examination report/s till all objections are complied as per satisfaction of the Examiner
7. Responding to further Examination reports till all objections are complied or objections are contested.
8. Interviewing with the Examiner
9. Hearing with Controller, if requested within prescribed time and objections are contested
10 Acceptance of patent application on or before final date of acceptance i.e. 12 months from date of issuance
of first examination report 11.Grant of Letter Patent Document by Patent office within 7 days of acceptance of
application
The Patent applications in India are ordinarily published after 18 months from date of filing or priority whichever
is earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by
Controller of Patents or Central Government. From the date of publication the applicant for patent has same right
as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively
rom date of publication of application subject to Indian Limitation Act.
As per the recent patent procedures laid down by the Controller General of Patents, Trademarks and Design,The
application shall be published only if the complete specificaiton is filed in English or Hindi, Abstract is as per
provisions of Indian Patent Act and Power of Authority in favour of agent is filed (if applicable) either with application
or within 3 months of requisition made by the Patent office in this effect.
From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person
by way of representation can file an opposition to the Patent Application provided a request for examination has been
filed. Thereupon, the patent shall not be granted until the opposition is set aside.
For substantive examination of the patent application in India a request for examination has to be filed within 48
months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the
request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction
whichever is later. In case of divisional applications the request has to be made within periods stated above or
within 6 months from date of filing of divisional application whichever is later.
Now-onwards the Examination report shall be issued by email in respect of application having the email address
in address of service furnished along with Application form. The complete specification shall not be forwarded
along with the application but in exceptional cases, the pages where some amendment or correction is required,
only those pages of the specification would be send by email. Where no email id is provided, the examination
report etc. shall be dispatched by post.
Once the applicant satisfies all the objections of the Examiner and complies with all the requirements under the
Indian Patents Act and the Patents Rules, the Patent Office issues an intimation regarding acceptance of application
and within 7 days of acceptance of the application the Letters Patent Documents is issued to the applicant.
Once the applicant satisfies all the objections of the Examiner and complies with all the requirements under the
Indian Patents Act and the Patents Rules, the Patent Office issues an intimation regarding acceptance of
application and within7 days of acceptance of the application the Letters Patent Documents is issued to the
applicant.
