I P Attorneys And Consultants

Patent Act

Requirements and Procedure for Patents
Requirements for filing a Patent Application in India

Ordinary Application
 Applicants’ Details (Company or Individual)
o Name of applicant(s) with the complete address and nationality
 Inventors’ Details (Natural Person(s))
o Full Name of Inventor(s) with complete address and nationality
 Complete Specification [or provisional specification if an application is filed with Provisional Specification]
o Description, Claims, Abstract & Drawings (if any)

Convention Application
 Applicants’ Details (Company or Individual)
o Name of applicant(s) with the address and nationality
 Inventors’ Details (Natural Person(s))
o Full Name of Inventor(s) with Address and nationality
 Complete Specification
o Description, Claims, Abstract & Drawings (if any)
 Priority claim details
o Priority date, Priority country, Priority application number
o Applicant in priority application
o Title of the priority application
o Certified copy of priority document (may be submitted at later stage)
o Verified English translation of priority document (if relevant)

PCT-National Phase Application
 Applicants’ Details (Company or Individual)
o Name of applicant(s) with the address and citizenship
 Inventors Details (Natural Person)
o Full Name of Inventor(s) with Address and citizenship
 Complete Specification
o Description, Claims, Abstract & Drawings (if any)
 Priority claim details (if applicable)
o Priority date, Priority country, Priority application number
o Applicant in priority application
o Title of the priority application
o Certified copy of priority document (if not filed at IB)
o Verified English translation of priority document (if required by the Controller during examination)

 PCT Application Details
o International Application Number
o International Application Date
 Other Documents (if applicable)
o Amendment to claims or description if made at the International Phase
o Corrections or changes made at the International phase (Form PCT/IB/306) Other requirements for all types of application (where applicable)
 Details of all corresponding applications filed outside India, including application number, date of filing and current status
 Application Form executed by the inventors/Applicants. In lieu of such form, an Original Assignment or a certified/notarized copy of the assignment filed for the priority application
 If invention relates to micro-organisms
o Name of International Depository Authority
o Accession Number and Date of deposit
 Sequence listing as a Soft copy


Procedure for obtaining a Patent

Publication
All patent applications will be published in the official journal after 18 months from the date of filing or the date of priority whichever is earlier. There is also a provision for early publication of an Indian patent application by filing a formal request. Opposition (Pre-Grant) - Representation
The Pre-Grant Opposition can be filed after the publication (18 months) of the application in the Patent Office Journal, till the grant of the patent. This opposition can be filed by any person against the grant of the patent along with a statement and evidence in support requesting a hearing (if desired), at the appropriate office. This opposition will be considered after a request for examination of the application has been filed. The Controller then decides upon the merits of this case and if the Controller feels that the application needs amendment or rejection, a notice along with the opposition statement will be sent to the applicant in this regard. The applicant must now reply within a period of 3 months from the date of the notice with a reply statement and evidence supporting his application again requesting a hearing (if desired).

Hearing:
After receiving the statement from both parties the Controller, depending on the merits of the case, fixes a date and time for the hearing of the opposition.

Decision:
After hearing both the parties, the Controller shall then decide and the decision shall be notified to the parties giving reasons thereof.

Request for Examination
The request for examination must be filed within48 monthsfrom the date of priority or date of filing, whichever is earlier. The Patent Office will examine an application after the pre-grant publication of the Application. In case of a divisional application, if this 48 month period has expired taking into account the deemed filing or priority date of a divisional application, then the request for examination can be filed within six months from the date of actual filing of the divisional application.

Examination
Once the request is filed, the Patent Office will issue the First Examination Report (FER). The Applicant must respond to the objections (if any) raised by the Examiner and place the application in order for grant within12 months from the date of issue of the FER. All procedural compliances must be met within the prescribed time. Subsequent examination report(s) may be issued with outstanding objection(s) or any new objection(s). Irrespective of the number of Examination Reports issued, the Applicant has only 12 months from the First Examination Report to comply with all the requirements and place the application in order for a grant.

Grant
After the objections are met, the Patent Office will issue Intimation of Grant. The grant is then recorded at the Register of Patents and the Letters Patent is issued to the applicant.

Date of patent
The date of patent is the date on which the application for patent is filed or is deemed to have been filed; except in the case of national phase patent applications, for which the date of patent is the PCT filing date. Term of patent
20 years from the date of patent.

Post Grant Opposition
Any interested person can file the Post Grant Opposition within12 months from the date of publication of the grant of patent in the Patent Office Journal.

For this purpose, a notice of opposition has to be filed in prescribed form at the appropriate office. This must be accompanied by a written statement containing details of the opponent’s interest, the facts and matters on which the opponent bases his case in support of the grounds taken by him; the relief sought by the opponent; and the evidence, if any. A copy of the statement and evidences must be provided to the patentee.

Reply statement and evidence by patentee:
As a response the patentee can submit a reply statement setting out fully the grounds upon which the opposition is contested; and evidence, in support of his case. This reply statement has to be filed within 2 months from the date of receipt of the copy of the opponent’s evidence. A copy of the statement and evidences is to be provided to the opponent by the patentee.

Reply evidence by opponent:
The opponent strictly confining to matters in the patentee’s evidence may file reply evidence. This reply has to be filed within1 month from the date of delivery to him of a copy of the patentee’s reply statement and evidence. A copy of reply evidence has to be sent to the patentee also.

Hearing:
After receiving the statement from both parties the Controller decides on the case and on the recommendation of the Opposition Board, a date and time for the hearing of the opposition may be fixed. The party desiring to be heard has to inform the Controller by a notice along with the prescribed fee

Decision:
After hearing the party or parties desirous of being heard, and after taking into consideration the recommendation of the Opposition Board, the opposition shall be decided and the reasoned decision of the Controller shall be notified to the parties.

Renewal
Renewal fee is to be paid only from the third year onwards and is to be paid before the expiry of the second year from the date of patent. Renewal fee is payable only after patent grant. If a patent is not granted within two years from the date of patent, then the renewal fees accrue till such time a patent is granted. All the renewal fees, which accumulate before the grant of patent, are paid upon patent grant and within three months from the date of recordal (the date, on which a patent is recorded in the Register of Patents). Subsequent renewal fees are due to be paid on or before the anniversary of the date of patent. Six months’ grace period is available to pay renewal fees on payment of monthly surcharge. Failure to pay renewal fees leads to cessation of patent on the date on which the renewal has been due.

Restoration of patent
If a patent lapses due to non-payment of renewal fees, such patent can be restored, if necessary application for restoration is filed within 18 months from the date of cessation.