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Indian Patent Filing Route

Indian patent application can be filed at Indian Patent Office (IPO). The IPO operates from four locations in India namely Delhi, Mumbai, Kolkata and Chennai, with defined areas of territorial jurisdiction. Processing of a patent application is a multi-stage process, involving filing of an application, electronic data processing, screening and classification, publication, examination, pre-grant opposition, grant / refusal. The steps involved in the patent filing process till grant is outlined below.

Step1: Filing at IPO

A patent application shall be filed on Form-1 along with Provisional / Complete Specification, with the prescribed fee as given in First Schedule at an appropriate office.

At the time of filing we can file either provisional patent application or a complete patent application. If we file provisional patent application then we have to file complete application within 12 months from priority date (i.e filing date of provisional application).

Application for Patent shall be filed with the Patent Office having the appropriate jurisdiction. Territorial jurisdiction of a patent office is decided based on the following:

i) Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants).

ii) Place from where the invention actually originated.

iii) Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).

Territorial jurisdictions are presented below:

Patent Office, Mumbai – The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli.

Patent Office, Delhi – The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh.

Patent Office, Chennai – The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep.

Patent Office, Kolkata – Rest of India (States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands).

Step 2: Publication

Patent application takes 18 months from the date of filing or date of priority, whichever is earlier, to be published at IPO website, although applicants who are willing to get application published early may request for early publication by filing Form 9 at IPO alongwith the prescribed fee of Rs.2,500/- for natural person(s) or Rs.10,000 for legal entity other than natural person(s). On such request, the application is ordinarily published within a month. After publication, pre grant opposition can be filed.

Step 3: Examination

An Application for a Patent will not be examined unless the applicant or any other person interested makes a request for examination. The request is to be filed in Form 18 with the fee as prescribed in First Schedule. A request for examination has to be made within 48 months from the date of priority of the application or from the date of filing of the application, whichever is earlier. If no such request for examination is filed within the prescribed time limit, the application shall be treated as withdrawn by the applicant.

Once a request for examination is received and the application published, thereafter application is taken up for examination in the chronological order of filing of request for examination. However an application for patent will not be examined unless the applicant or any other person interested makes a request for examination (RoE). Therefore, it is mandatory to file a request for examination (Form18) within 48 months from filing the patent.

Step 4: Issue of Examination Report

When an application is referred by the Controller, the Examiner makes a report on the patentabilility as well as other matters ordinarily within one month but not exceeding three months from the date of such reference. The examiner prepares the report after conducting a prior art search to ascertain the novelty, and examining as to whether the invention disclosed in the specification is inventive and industrially applicable. The Examiner also examines whether the invention belongs to one of the categories of non-patentable inventions coming under Section 3 and 4 of the Patents Act, 1970, and whether the application is in conformity with all the provisions of the Act.

Step5: Response to Examination Report

The Controller considers the report of the Examiner ordinarily within one month from the date of the receipt of such report. The Controller then sends a gist of the objections (first statement of objections), if any, in the form of a report to applicant known as First Examination Report (FER), along with the application and specification, if required. The time for putting an application in order for grant under Section 21 shall be 6 months from the date on which the first statement of objections is issued to the Applicant to comply with the requirements. Therefore, though the applicant is required to comply with all the requirements imposed upon him by the Act as communicated through FER or subsequent communication at the earliest, but effectually the Applicant has 6 months from the date of issue of Examination Report to respond to the FER. However, if the Applicant fails to respond to the FER within twelve months from the date of issuance of FER, the application is deemed to have been abandoned under Section 21(1). A communication to that effect is sent to the applicant for information.

Step 6: Grant of Patent

If there is no objection to the grant of patent and no pre-grant opposition under Section 25(1) is pending, the patent is granted at the earliest. However Post grant opposition can also be filed after the grant of patent. For more information please visit: http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent-office-practice_and-procedure.pdf

Fig: Indian National Filing Route

Indian National Filing Route

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