Activities After Patent Application

Dear readers, in the previous articles throughout this year we have seen how to know if your invention is patentable and finally how to apply for an Indian patent. However, the process does not really end with the application, there are further activities to do. This article briefly explains these activities assuming you have filed an ordinary patent application (provisional specification) with  the Indian Patent Office.

Submitting a compete specification

A complete specification must follow the provisional specification within the next 12 months [Ref. 1]. If you do not submit the complete specification within that time period then the application automatically lapses [Ref. 1]. Of course this step does not apply if you have submitted a complete specification in the first place. However, there is a provision to convert a complete specification into a provisional specification if a request is made within 12 months [Ref. 1]. One benefit of doing so is that the applicant can re-write the claims, as claims are not part of a provisional specification. It may help you when your invention has matured since the initial filing and you think there is a scope to improve the specification.

Tips: The Patents Act permits conversion of a complete specification into a provisional specification.

international Patent Application

Chronologically this optional step comes before the remaining steps as an international application must be filed within 12 months from the Indian application. Remember an Indian patent protects your rights only in India. Hence an international application is important if you wish to protect your invention in other countries too. Additionally, an international application costs a lot more than its Indian counterpart. Thus you need to plan early for an international application. Notable here is at least 6 weeks must have lapsed after the Indian application to proceed with the international application [Ref. 2]. The applicant also needs to get permission for such application [Ref. 2] through Form 25.

The ways to file such an application are:

  • To apply in different countries of your choice provided these countries are members of the Paris Convention.
  • To apply under the Patent Corporation Treaty (PCT) to the International Bureau (IB) of World Intellectual Property Organisation (WIPO) directly or through the Indian Patent office as the receiving office. Based on WIPO’s examination of the application you can then apply to the member countries of your choice. This route is simpler than the previous one.

Presently 177 and 152 countries are signatories to the Paris convention and PCT respectively.  So, if you wish, you could protect your invention almost all over the world! The Patent Office Manual is a good place to find the applicable procedures for PCT application by an Indian applicant (see section 07.02.01). Furthermore, the WIPO patent drafting manual provides guidelines to write a specification for a PCT application.

Tips: Obtain permission form the Indian patent office before applying to foreign countries. Application is possible through the Paris convention route or PCT route.

Patent Publication

The first important thing that happens in the process of patent granting is the publication of the patent application. After 18 months from the filing date the patent application is published [Ref. 3] in the Official Journal of the Patent office. However, if an applicant wishes to publish the application early then he may request so through Form 9 and paying the necessary fee, along with the patent application or separately later. However, the patent applications that are subjected to secrecy are not published until the secrecy direction lapses [Ref. 3].

Tips: Automatic publication happens after 18 months from the application. Early publication is possible through appropriate applications. 

Patent Examination

The next and perhaps most important step towards the grant of patent is the examination of patent. As we have seen in the previous article, patent examination is not an automatic step. Either the applicant or an interested person must request [Ref. 4] through Form 18 within 48 months from the filing date [Ref. 5]. In reality the examination may take a few years.

After the examination the patent office issues a first statement of objections, along with any relevant documents [Ref. 5]. The applicant must make the necessary changes within 6 months [Ref. 5, 6]. However, there is a provision to extend it for a further 3 months on request through Form 4 along with the prescribed fee [Ref. 5].

The applicant also needs to address any pre-grant opposition filed by any person after publication of the application [Ref. 7]. The Controller of Patents gives opportunity to both the parties before deciding in favour of or against granting a patent [Ref. 8].

After this process has been done satisfactorily a patent is granted and included in the Register of Patents. Congratulations, you have obtained a patent for your invention!

Tips: Remember to file a request through Form 18 along with the initial application or within the next 48 months to queue it for examination.

Expedited Patent Examination

The patent examination may take years because there are many applications in queue! To reduce the waiting time the Indian Patent Office, since 2016, provides a fast track option for certain cases called Expedited Patent Examination [Ref. 9].

This is done by filing Form 18A along with the applicable fee [Ref. 9]. As of now the facility is only available for startups and PCT applicants who have chosen India as the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

Tips: A startup can request for an expedited patent examination. 

patent renewal

Getting a patent does not end your journey. You need to renew it every year for continual protection of your invention [Ref 10]. The patent renewal fees start from the expiration of the second year [Ref. 11], and for a natural person and startup it amounts to Rs. 800, which increases in later years. A patent owner may pay every year or for more years in advance. There is no specific form for this purpose.

A lapsed patent, due to non-payment of renewal fees, can be restored within 18 months from the date of lapse by providing evidence that the delay in payment was not intentional [Ref. 12, 13]. Such an application is made through Form 15 [Ref. 13].

It is noteworthy that the renewal fee is not applicable until a patent is granted and in case a patent is granted later than two years from the date of application, the accumulated renewal fee can be paid within 3 months [Ref. 14].

Tips: Patent renewal fees are applicable until the 20th year to maintain the rights. An applicant need not start paying until the grant of patent.

post-grant opposition

Although this may be undesirable from an inventor’s point of view, the Patent Office makes it fair to other interested parties by keeping a mechanism called post-grant opposition [Ref. 15]. Through this mechanism interested parties can oppose a patent within one year after the grant [Ref. 15]. The patent holder has to address such opposition within the framework of the Patents Act, 1970 and the Patents Rules, 2003.

Tips: Remember that your patent may face post-grant opposition, which interested parties can file until one year since the grant of patent.

Commercialisation of a patent

A patent holder can either market the product himself or transfer his rights to other natural or legal person(s). Transfer of rights can be done through assignment, licence, mortgage or other ways through formal agreement [Ref. 16]. The new person with transferred rights must ensure to register with the Patent Office through Form 16 [Ref. 17].

Commericalisation of an invention needs dedicated discussion and in most aspects have nothing to do with the regulatory framework. This article does not get into such details apart from touching the relevant regulatory points. There may be a separate article later.

Tips: Remember to transfer your rights through formal agreements and get the assignee or licencee registered with the Patent Office.

Other Continued Activity for a Patent

The patent owner or licencee is required to provide a periodic statement to the Patent Office about the commercial use of the patented invention in India [Ref. 18]. This statement is to be prepared for every calendar year and submitted through Form 27 within 3 months from the subject year end [Ref. 19]. This compliance is likely to help the Office maintain statistics about the degree of commercialisation of all the granted patents.


This article provides an outline of the activities after a patent application that an Indian patent applicant must be aware of. This one along with the other articles published earlier this year covers the entire life cycle of a patent. In summary, the relevant articles are:

  1. Idea, Invention and Patent
  2. What are not patentable (Part 1 & Part 2)
  3. Inventions subject to security and secrecy
  4. Patent application

Obviously, there are many other aspects of a patent. However, these articles along with the applicable regulations and guidance materials should provide fair amount of clarity regarding invention and patents.


The numbers given below indicate the respective sections of the Patents Act, 1970. Wherever rules are mentioned, they belong to the Patents Rules, 2003.

  1. 9 – Provisional and complete specifications
  2. 39 – Residents not to apply for patents outside India without prior permission
  3. 11A – Publication of application
  4. 11B – Request for examination
  5. Rule 24B – Examination of application
  6. 21 – Time for putting application in order for grant
  7. 25(1) – Opposition to the patent
  8. Rule 55 – Opposition to the patent
  9. Rule 24C – Expedited examination of applications
  10. 53- Term of patent
  11. Rule 80 – Renewal fees under section 53
  12. 60 – Applications for restoration of lapsed parents
  13. Rule 84 – Restoration of patents
  14. 142(4) – Fees
  15. 25(2) – Opposition to the patent
  16. 68 – Assignments, etc., not valid unless in writing and duly executed
  17. Rule 90 – Registration of title and interest in patents
  18. 146(2) – Power of Controller to call for information from patentees
  19. Rule 131 – Form and manner for statements required under section 146(2)


Next Article: The next article, likely to be available early next year, would look into other aspects of an invention.

Patent Application

In continuation with our previous articles on patents it is now time to know about the patent application process. This article aims at describing the essential information to file a patent application in India. It is likely to guide the inventors who want to file their own application at an affordable cost. It is also useful for a top level understanding even if you do not wish to do everything yourself and have access to professional services.

Contrary to the popular belief a patent application is not very complicated. The Indian Patent Office have well defined guidance materials through a manual [ref. 1] for this purpose, formally called “Manual of Patent Office Practice and Procedure“. This manual gives all the required information without burdening with the acts and rules. Further, the “Useful Links” page of this website provides links to many official sources of information.

Types of patent application

Let us start with the types of patent application. There are the following two ways of securing protections for inventions:

  • Indian patent application (ordinary application)
  • International patent application (under Paris convention or PCT)

An Indian patent protects the owner’s rights within the Indian jurisdiction. To ensure protection in other countries the inventor needs to file an international patent application. Strictly speaking, the term “international patent” is a misnomer as there is no single patent that protects your rights in multiple countries. We will examine this part of patent application in later posts, today we aim at getting an Indian patent. An Indian inventor usually cannot file an international application without first applying in India [ref. 2].

Tips: An Indian patent application is a must before one can proceed with an international patent application.

can an inventor file a patent application?

Yes, an inventor himself can file a patent application. If you have a patentable invention, you may make an application with the patent office. One of our previous articles describes this aspect in details.

Simply speaking, any of the following persons (including companies) can file a patent application [ref. 3]:

  1. The inventor(s)
  2. Assignee of the inventor(s)
  3. Legal representative of a deceased inventor or assignee
  4. A registered patent agent on behalf of the above persons [ref. 4]

Going by the above, you can file a patent application yourself or get it done through a registered patent agent. You may find a registered patent agent from the electronic register of patent agents in the patent office website. However, at the time of writing this article this link is not working properly. Another official place to look at for patent agents is the StartupIndia website.

Tips: File a patent application yourself, as an inventor or seek professional service from a registered patent agent.

Where to file a patent application?

The patent offices in Kolkata, Mumbai, Delhi and Chennai receive patent applications from Monday to Friday. Addresses of these offices are available in the patent office website. Territorial jurisdiction of these offices, detailed in the website, should help you identify your place of application. An Indian applicant can choose the applicable office based on his present residential address or domicile or place of business or place of invention. Other applicants can do the same based on their residential or business address in India or based on their agent’s business address.

There is a provision for online submission too. All the paperwork, however, remain same as hard copy submission. The patent office has an e-gateway for this purpose. The user manual linked to the bottom of this page provides sufficient information. Section 03.04.02 of the current version of the patent manual also provides relevant information. The most significant requirement for online application is to have a digital signature.

Tips: A patent application can be submitted at the applicable patent offices. Facility exists for online application too.

Does it require complex documentation?

It is not at all complex. The patent office manual provides sufficient information for a new person to identify the applicable documentation.

A patent application means a combination of a number of prescribed forms. Section 03.04.01 of the current manual identifies all the relevant forms.

At minimum one has to submit the following forms:

  1. Form 1 – application for grant of patent
  2. Form 2 – patent specification (complete or provisional)
  3. Form 5 – declaration as to inventor ship (required with a complete specification)

Apart from that the following forms may be applicable:

  1. Form 26 – power of attorney to a patent agent allowing him to file the application on behalf of the inventor or assignee.
  2. Form 3 – statement of undertaking, if the applicant is also pursuing for a foreign patent application [ref. 5].

For simplicity of our discussion let us assume that you are applying yourself and not pursuing for a foreign patent at this moment. That makes you seek details for forms 1, 2 and 5 only.

Form 1 is basically the application details covering the applicant’s identity, the inventor’s identity, proof of right as an assignee granted by the inventor (not applicable if the inventor is the applicant), summary of patent specification, payment details etc. The form is self-explanatory and is not difficult for an educated person. Same can be said for form 5. It basically identifies all the inventors of the invention being protected.

Form 2 is the heart of an application and needs some knowledge (and possibly practice too) to complete it. It is fine to seek professional help for this, if you can afford. On the other hand, you can write it yourself based on the Patents Act [ref. 6] and the patent manual guidelines (chapter 5 of the current version). Additionally, WIPO patent drafting manual and previous patents (Indian and foreign) are good references. You may also go through patent drafting trainings offered by various agencies. For example, WIPO conduct online courses at reasonable price like DL-320, “Basics of Patent Drafting”.

Irrespective of the author a complete specification has to have the following contents:

  1. Title
  2. Field of the invention and use of invention
  3. Prior art and problem to be solved
  4. Objects of the invention
  5. Summary of the invention
  6. Detailed description of the invention
  7. Best method of performing the invention
  8. Drawings
  9. Claims
  10. Abstract

Out of the above, 2-8 are part of “Description” in form 2. In my opinion the inventor can write this part better than anybody else. However, the most important part of the specification is the “Claims”. This needs to be written carefully. Remember that irrespective of what you write elsewhere the patent protects only your claims!

Now that we broadly know about the forms, let us find out their source. All the forms are downloadable from the patent office website but they are not editable. You need to type and edit them in MS Word following the patent manual guidelines given in sections 03.04.05 and 05.03.09. The acceptable languages are English and Hindi.

Tips: Make use of the patent office manual for preparing your application. 

provisional vs. complete secification

In the last section I talked about a complete specification. I now introduce another form of it, named provisional specification. It requires the same form 2, minus claims and abstract. Filing a provisional specification is useful when you need to disclose your invention (e.g. to publish a research paper or to demonstrate the invention somewhere) but it has not reached the final stage. You must submit the complete specification within 12 months of filing the provisional specification [ref. 7].

Tips: A provisional specification is only description of an invention. If must be followed up with a complete specification within one year time.

Is it a very costly affair?

The patent office fees are not huge, generally a few thousand rupees. However, if you seek professional help then you may end up spending much more depending on the service provider.

The applicable fees can be easily calculated from the “first schedule” available in the patent office website. The amount depends on the type of applicant, application mode, forms filed, number of pages in the specification and number of claims. To give an example, for a natural person filing hard copy application with patent specification containing less than 30 pages and 10 claims, ₹1750 is applicable. A start-up company needs to pay the same but for a small company it is ₹4400. E-filing reduces the fees by about 10%, requiring ₹1600 and ₹4000 respectively for the above cases. Every extra page or claim requires additional payment, as defined in the “first schedule”.

Cash, electronic transfer, demand draft and cheque are acceptable modes of payment. For further details see section 03.04.07 of the patent manual.

Tips: Refer to the first schedule on the patent office website for calculating the patent application fees. There is no other fees charged by the patent office.

support in filing a patent application

There exist some avenues to support an inventor to secure a patent. One such option for start-ups is the StartupIndia initiative. Under this a start-up pays less application fees same as a natural person, lesser than a regular company, and a mechanism exists to fast track such applications. More details are in the StartupIndia website.

National Innovation Foundation (NIF) facilitate the grassroot inventors to protect their inventions and it is absolutely free. Details are in their website.

Tips: StartupIndia and NIF facilitate patent applications. Explore their websites while planning for a patent, you may get a lot of support.


This article gives an outline of the patent application process in India with relevant reference materials. As discussed above, a patent application is a combination of specific forms along with prescribed fees. The patent office manual is an excellent guide to prepare an application. There are post-application activities from both the applicant and the patent office, but that is better left to a later article.


(The sections mentioned below belong to the Patents Act, 1970)

  1. Manual of Patent Office Practice and Procedure, version 01.11, 22nd March, 2011.
  2. Section 39 – Residents not to apply for patents outside India without prior permission
  3. Section 6 – Persons entitled to apply for patents
  4. Section 127 – Rights of patent agents
  5. Section 8 – Information and undertaking regarding foreign applications
  6. Section 10 – Contents of specifications
  7. Section 9 – Provisional and complete specifications

Next Article: The next article will cover the post-application activities. You may subscribe below to know when that article is out there.

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