How to file for a patent

Introduction:- 

 

A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.

 

An invention relating either to a product or process that is new, involving an inventive step and capable of the industrial application can be patented. However, it must not fall into the categories of inventions that are not- patentable under sections 3 and 4 of the Act.

 

An invention is a patentable subject matter if it meets the following criteria -

 

  1. It should be novel.

  2. It should have the inventive step or it must be non-obvious.

  3. It should be capable of Industrial application.

  4. It should not attract the provisions of section 3 and 4 of the Patents Act 1970.

 

An invention may satisfy the condition of novelty, inventiveness, and usefulness but it may not qualify for a patent under the following situations:

 

  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 substance occurring in nature;

  4. The mere discovery of a new form of a known substance which does not result in 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; Explanation: For the purposes of this clause, 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 regards 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 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. 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;

  11. 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;

  12. A mathematical or business method or a computer program per se or algorithms;

  13. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

  14. A mere scheme or rule or method of performing mental act or method of playing the game;

  15. A presentation of information;

  16. The topography of integrated circuits;

  17. An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of the traditionally known component or components;

  18. Inventions relating to atomic energy; 

 

Types of patent application that can be filed:-

 

The various types of patent applications that can be filed are:-

 

  • PROVISIONAL APPLICATION:

 

Indian Patent Law follows first to file system. A provisional application is an application which can be filed if the invention is still under experimentation stage. Filing a provisional specification provides the advantage to the inventor since it helps in establishing a ―priority‖ date of the invention. Further, the inventor gets 12 months‘ time to fully develop the invention and ascertain its market potential and to file the complete specification.

 

  • ORDINARY APPLICATION:

 

An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office. Such type of application is known as an ordinary application.

 

  • CONVENTION APPLICATION:

 

An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is known as a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country.

 

  • PCT INTERNATIONAL APPLICATION:

 

An Application filed in India as Receiving Office (RO) under the Patent Cooperation Treaty is an international application which can be filed in more than 150 countries by a single application.

 

  • 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.

 

  • PATENT OF ADDITION:

 

When an invention is a slight modification of the earlier invention for which he has already applied for or has obtained the patent, the applicant can go for the patent of addition if the modification in the invention is new. One of the benefits of filing a patent of addition is that there no need to pay the separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.

 

  • DIVISIONAL APPLICATION:

 

When an application claims more than one invention, the applicant on his own or to meet the official objection on the ground of plurality or distinct invention may divide the application and file two or more applications, as the case may be for each of the inventions. This type of application, divided out of the parent one, is known a Divisional Application. The priority date for all the divisional applications will be the same as that of the main (the Parent) Application (Ante-dating).

 

Note: Generally, when an invention is not complete an application can be filed with the provisional specification which is known as a provisional application. This is useful in establishing a priority date for your invention. Moreover, it also gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file the application directly with complete specification.

 

 

Applying for patent:-

A patent application can be filed with Indian Patent Office either with the provisional specification or with complete specification along with fee as prescribed in schedule I. In case the application is filed with the provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional application. There is no further extension of time to file complete specification after the expiry of the said period.

 

 

One can file patent applications through comprehensive online filing system at  https://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin.

 

To register for the filing of the patent application, the user is required to obtain the Class III digital signature. After obtaining the digital signature, the user can register himself on the CGPDTM website by creating his user ID and password.

 

 

Forms required for filing a patent application:-

 

 

Generally, in order to file an application, an applicant is required to file Form 1 which is a request for filing an application and Form 2 which is either a provisional or complete specification or drawings if any. In addition to these, an abstract of the invention is also required. If the application is filed through a registered patent agent, a power of authority in favor of the said agent in Form 26 is also required. However, depending upon various circumstances, the following forms may also be required. The application can be examined only after receipt of a request for examination on Form 18.

 

The important forms are listed below:

 

Form 1:-

 

  1. Application for grant of a patent.

  2. Contains legal information such as name, contact details of applicant, investors, priority dates, etc.

  3. To be accompanied by provisional or complete specification (Form 2).

 

Form 2:-

 

  1. Contains invention including Title, Field, background, prior act, drawbacks of the known inventions, description, experimental results, drawings, Abstract of the Invention, etc.

  2. Claims, in the complete specification are legal boundaries of invention.

 

Form 5:-

 

  1. Declaration of inventorship.

  2. The applicant discloses the name of all the inventors.

  3. This is used when a complete specification is filed (within 12 months) after provisional specifications.

 

Form 18:-

 

  1. Request for examination of a patent.

  2. This form can be filed anytime within 48 months of filing an application.

  3. It can be filled at the time of filing of the application.

  4. Without filing this form the patent specification will not be examined.

 

Form 18A:-

 

  1. Request for expedited examination of a patent application.

  2. The applicant is a startup

 

From 26:-

 

  1. The form of authorization of Patent Agent 

  2. This form is required when the applicant is authorizing a patent agent to act before the patent office on his/her behalf.

 

Form 9:-

 

  1. Request for early publication.

  2. Required when the applicant wants his application to be published before 18 months of filing.

 

Note:- Following are some of the important timelines to be observed by an applicant during the prosecution of a patent application:-

 

  1. Form 2 to be filed within 12 months of filing the provisional specification.

  2. Form 18 to be filed within 48 months of filing application or priority.

  3. Form 5 to be filled within 1 month from the date of filing of the complete specifications

 

Searching the database for already filed patents:-

The person concerned can perform a search free of cost on Indian Patent database consisting of published patent applications and granted patents. The said database is available on the Patent Office website as inPASS http://ipindiaservices.gov.in/publicsearch. Further, the website (www.ipindia.nic.in) contains innovative tools under DYNAMIC UTILITIES which give information about the patent applications at various stages of processing.

 

 

Schemes available for MSME's and Startups with respect to IPRs:-

 The Government of India has formulated schemes to spur the innovative capabilities of the innovators who are from MSME‘S and Start-ups.

 

  1. MSME’s: A 50% fee concession is provided for MSMEs vis-à-vis large entities on patent filing fees.

  2. A Scheme for facilitating Startups Intellectual Property Protection (SIPP) has been launched for encouraging innovation and creativity of Startups.

 

For effective implementation of the scheme, facilitators have been impaneled by the Controller General of Patent, Trademark, and Design (CGPDTM). Presently around 423 facilitators in Patent & Designs, 606 Facilitators in Trademarks have been empaneled under this scheme. Startups are provided a rebate of 80% on patent fees as compared to the fee paid by legal entity.

 

The government of India provides the following benefits to Start-Ups in filing the patent application in India under Scheme for Facilitating Start-ups Intellectual Property Protection (SIPP):

 

  • An entity qualifying as a 'startup‘ under Stand-Up India‖ initiative of the Government of India can avail the facility of expedited examination.

  • The Government reimburses the expenditure to the facilitator who assists the startup for filing and prosecuting the patent application to the extent of Rs.10,000/-

 

 

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