INDIAN PATENT PROCESS- STUDY OF FORMS

Presentation byAruna Mukundd

Types of ApplicationOrdinary Application- without any claim for

priority made under any convention and without reference to any other application

Every application has to specify that the applicant is in possession of the invention and shall also state the name and address of the first and true inventor.

The following documents must accompany an application:

A. Provisional or Complete Specification in Form 2 and drawings if any

Statement and Undertaking regarding foreign filing details in respect of the same or substantially same invention in Form 3

Declaration as to inventor ship in Form 5Power of Attorney, if application is made through a

patent agentProof of right if the application is made by the

assignee

B. International/PCT Application: filed in accordance with PCT

Has to be filed within 31 months from the international filing date

Has to be accompanied by CSnational phase entry cannot be postponed

and the non-compliance of the requirements would cause the application to be treated as abandoned.

C. Convention Application: A convention country is any country which is a signatory or a party to an international or bi-lateral treaty or convention or arrangement to which India is a signatory or party whereby privileges granted to their citizens are likewise granted to Indian citizens.

Convention application to be filed within 12 months from the date of filing a similar application in the convention country.

If any of the documents filed are in a foreign language, translation of the document has to be submitted

D. Application for Addition: enables the applicant to apply for an improvement or modifications made on the invention disclosed in the complete specification. Improvement- must be more than a mere workshop improvement.

E. Divisional Application: an application divided out of parent application

Applicants, at their own request, before the grant of patent, divide the application and file two or more applications as desired for the invention.

Filing an Application for PatentSingle inventive concept- one application should be

filed for each invention or inventive concept.Who is entitled to file

true and first inventorTrue and first inventor‘s assigneeLegal representative of deceased true and first

inventor or his/her assigneePS/CS in Form 2

An application is filed at the appropriate Patent Office based on residence or principal place of business or from the place where the invention originated

Provisional application :This application is filed to secure priority.In order to ensure that the invention fulfils the

novelty criteria of patentability, the Patent Act allows for filing of provisional application as soon as the inventor conceives the idea of an invention.

Once the provisional specification has been filed, complete specification must be filed within 12 months from the date of filing of provisional application.

Time-limit to foreign file the application is 1 year from date of filing of provisional application/first filing

Complete application pursuant to provisional.

Within 12 months of filing provisional application, complete application has to be filed.

PCT application can also be filed pursuant to provisional application, within 1 year of filing provisional application.

Complete application:Required to be filed with claims.As provisional application is only used to secure priority

of the application, filing of the same is an optional but an advisable step. The applicant can directly file a complete application as well.

Time-limit to foreign file the application is 1 year from date of filing of complete application.

The Specification shall be signed by the agent/applicant with date on the last page of the Specification

The drawing sheets should bear the signature of an applicant or his agent in the right hand bottom corner

If the Application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent.

Fee: 1000/4000 (upto 30 pages and 10 claims)100/400 for each extra page200/800 for each extra claim

Application for Grant (Form 1)Has to be filed within 6 months from the date of filingTo be filed in hard copy in duplicate along with POA and

filing receipt.Furnish the following details in Form 1:

a. Full name of the Applicant, nationality and addressb. Full name of the inventors, nationality and addressc. Priority details, if anyd Title of the inventione. Signatures of the inventorsf. Application numberg. Patent Agents signature

Duty to Disclose (Form 3)disclose information regarding corresponding applications

filed in other countries.Form 3 (u/s 8): information regarding corresponding

applications at the time of filing the Indian application or within 6 months from the date of filing the application in India.

keep the Controller of Patents informed of every other application filed outside India subsequent to the filing of the Indian application

furnish details regarding the prosecution of corresponding applications in other countries, if the Controller so requires.

If an applicant to fails to comply with these obligations, it can be a ground for opposition under Section 25 (h)

Declaration as to inventorship (Form 5)shall be filed in Form 5 for Applications

accompanying a Complete Specification or a Convention Application or a PCT Application designating India.

Controller may allow Form-5 to be filed within one month from the date of filing of application, if a request is made to the Controller in Form-4.

Foreign Filing License (Form 25)FFP must be obtained if an Indian resident

makes or even causes to make a foreign patent application without filing corresponding Indian patent application 6 weeks prior to filing the foreign application.

Does not apply to non-residents.The Controller issues a ‘written permit’ within 3

weeks from the date of filing Form 25Liabilities for non-compliance include: refusing

to grant patent in India for the same invention, fine and or imprisonment upto 2 years.

Publication (Form 9)Applications are published in the Patent Official Journal

within 18 months from the date of filing or priority date, whichever is earlier.

Applicant has an option to request early publication from the Controller using Form 9

The public shall have access to the details of the application only from the date of publication

The application shall not be published if a secrecy direction is given or if the application has been abandoned.

Once published, the applicant will be entitled to like privileges as that of the patentee from the date of publication except for the ability to institute an infringement proceedings

Fee: 2500/ 10,000

Request for Examination (Form 18)The application shall be taken up for examination only

when a request for the examination has been filed using Form 18.

The request can be made by either the applicant or by any other interested person.

(RFE) can be filed by either the applicant or by interested person within a period of 48 months from the date of priority or date of filing, whichever is earlier.

The application is deemed to have been withdrawn on the non-submission of request for examination within the prescribed period

Fee: 2500/ 10,000

FORM 4

• PURPOSE: For request for extension of time to:1. pay renewal fees [u/s 53(2), 142(4) & rule 80(1A)]; 2. to file Form 5 [rule 13(6)]3. Application for review of decisions or setting aside of orders of the Controller [rule 130]

• FEES: 300/1200 – per month of time

• To be filled in with all the details and requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.

FORM 8

• PURPOSE: Application u/s 28(2,3,7) by an original Inventor to the Controller as to be mentioned as an Inventor of any Patent granted or applied for.

• FEES: 500/2000.• To be filed in with all the details of proof

of inventor ship and requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.

FORM 13

PURPOSE: On application for amendment of application for patent/CS/other related documents u/s 57.

• FEES: before grant:500/1,000 after grant: 1,000/4,000 for change of

name/address/nationality/address for service: 200/800.

• To be filed in with all the details and requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.

FORM 19

• PURPOSE: Application for revocation of Patent u/s 85(1).

• FEES: 1,500/6,000• To be filed in with all the details and

requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.

FORM 25

• PURPOSE: Application for permission for appying patent outside India u/s 39 and Rule 71(1).

• FEES: 1,000/4,000• To be filed in with all the details and

requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.

FORM 26

• PURPOSE: Authorisation of Patent Agent (Power of Authority).

• FEES: No Fee• To be filled in with all the details and

requisite fees (if applicable) and executed and filed in soft copy in the website of the IPO in appropriate jurisdiction alongwith Form – 2 or as sson as within 6 months thereafter, it is advisable to follow the former and file it with Form – 2 only.

FORM 27

• PURPOSE: Statement regrading working of a Patented invention on a commercial scale in India u/s 146(2) and Rule 131(1).

• FEES: No Fee• To be filed in with all the details and

requisite fees and executed and filed in hard copy before the CoP in the IPO of appropriate jurisdiction.