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]:
- The inventor(s)
- Assignee of the inventor(s)
- Legal representative of a deceased inventor or assignee
- 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:
- Form 1 – application for grant of patent
- Form 2 – patent specification (complete or provisional)
- Form 5 – declaration as to inventor ship (required with a complete specification)
Apart from that the following forms may be applicable:
- Form 26 – power of attorney to a patent agent allowing him to file the application on behalf of the inventor or assignee.
- 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:
- Field of the invention and use of invention
- Prior art and problem to be solved
- Objects of the invention
- Summary of the invention
- Detailed description of the invention
- Best method of performing the invention
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)
- Manual of Patent Office Practice and Procedure, version 01.11, 22nd March, 2011.
- Section 39 – Residents not to apply for patents outside India without prior permission
- Section 6 – Persons entitled to apply for patents
- Section 127 – Rights of patent agents
- Section 8 – Information and undertaking regarding foreign applications
- Section 10 – Contents of specifications
- 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.