Patent

Patent Application Filing Procedure/Process in India

Submitted by Team Invntree on Wed, 02/16/2011 - 14:26

Filing a patent application in the Indian Patent Office is the first step towards securing a patent to your invention in India. To file a patent application, a set of forms has to be submitted to the patent office. The forms can be submitted online (https://www.ipindiaonline.gov.in/on_line/) if you have a class 3 digital certificate. Alternatively, you can send true copies (hard copies) to the patent office.

Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai. The patent application has to be filed in the appropriate office based on your/your company’s location. The table below provides the addresses of the patent offices in India and their respective territorial jurisdiction.

Office	Address	Territorial Jurisdiction
Mumbai	Intellectual Property Office, Boudhik Sampada Bhawan, Near Antop Hill Post Office, S.M.Road,Antop Hill, MumbaiI - 400 037. Phone : 24137701, 24141026, 24150381, 24148165, 24171457 FAX : 24130387 EMAIL: mumbai-patent@nic.in	The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli
Chennai	Intellectual Property Office, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai-600032, Phone: 044-22502081-84 FAX: 044-22502066, Email: chennai-patent@nic.in	The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
New Delhi	Intellectual Property Office, Intellectual Property Office Building, Plot No. 32, Sector 14, Dwarka, New Delhi-110075, Phone : 011-28034304, 28034305 28034306 FAX:011- 28034301,02 Email: delhi-patent@nic.in	The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Kolkata	Intellectual Property Office, Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091, Phone : 23671945, 1946, 1987, FAX-033-2367-1988, Email:- kolkata-patent@nic.in	The rest of India.

Once you have identified the patent office in which you have to file your patent application, it is now time to get an overview of the forms that have to be submitted.

To file a patent application, you will have to submit form 1, form 2, form 3 and form 5. Subsequent to filing these forms with the appropriate fees, you will receive a patent application number from the patent office. Thereafter, you can file form 9 (optional) and form 18. You can download the Indian patent application filing forms.

In the table below, the list of forms that have to be submitted and their respective fees is provided.

Form	Title	Fee (INR)		Comment
		Natural person	Other than natural person
1	Application for Grant of Patent	1000	4000	Mandatory
2	Provisional/Complete Specification	No fee*	No fee*	Mandatory
3	Statement and Undertaking Under Section 8	No fee	No fee	Mandatory
5	Declaration as to Inventorship	No fee	No fee	Mandatory
9	Request for Publication	2500	10000	Optional
18	Request for Examination of Application for Patent	2500	10000	Mandatory

* - A fee of 100/sheet (natural person) and 400/sheet (other than natural person) is applicable for each sheet exceeding 30 sheets in a patent specification. Further, a fee of 200/claim (natural person) and 800/claim (other than natural person) is applicable for each claim exceeding 10 claims in the patent specification.

Before reading further, I recommend reading our article “How much does it cost to get a patent in India?” I think it will help you in taking some decisions during the filing process.

It should be noted that Forms 1, 2, 3 and 5 can be submitted online. The remaining forms (forms 9 and 18) have to be submitted to the patent office by sending hard copies of the executed forms. Further, note that if you are filing online, form 1 will have to be filled in the online filing portal. The remaining forms (2, 3 and 5) have to executed and the scanned copies of the same have to be uploaded during filing.

An overview of each of the forms is provided below.

  

Form 1 - Application for Grant of Patent

As the name suggests, this form is an application for grant of patent in India. In this form, you will have to furnish information, such as, name and address of the inventor(s), name and address of the applicant(s), information corresponding to prior patent applications relating to the current invention, which you or any authorized entity has filed, and some declarations, among other information.

(Added after receiving comments from Mr. Naren) Please note that a local communication address (address in India) has to be provided. This point is of importance to foreign (Non-Indian) applicants. 

  

Form 2 - Provisional/Complete Specification

Form 2 is used to furnish your patent specification. The patent specification can be provisional or a complete patent specification depending of the type of patent application (provisional or complete) you are filing. You might find our article on “What are the different patent filing options?” useful.

If you are filing a provisional patent application, then use the following preamble in the first page of Form 2: 

The following specification describes the invention

On the other hand, if you are filing a complete patent application, then use the following preamble in the first page of Form 2:

The following specification particularly describes the invention and the manner in which it is to be performed

Note that, if you are filing offline, 2 copies of the patent specification has to be sent to the patent office. Additionally, count the number of sheets and claims (extra fee for more than 30 sheets and more than 10 claims) and calculate the appropriate fee. While counting the sheets, even the drawing sheets will have to be taken into account.

  

Form 3 - Statement and Undertaking Under Section 8

Form 3 is used to furnish information/actions relating to patent applications filed in other countries for the current invention. Additionally, any information relating to the rights corresponding to the present patent application has to be furnished. Further, you would be using form 3 to undertake that you will be keeping the patent office informed in writing the details regarding corresponding applications for patents filed outside India.

  

Form 5 - Declaration as to Inventorship

This application is used to declare the inventors of the subject matter sought to be protected using the current patent application.

  

Form 9 - Request for Publication

If this form is not filed, then the patent specification will be published by the patent office after 18 months from the priority date (filing of the first patent application for the current subject matter). On the other hand, by filing this form, you can generally have your patent specification published within 1 week from filing this form. Note that the patent rights start from the date of publication of the patent application (enforceable after grant of patent).

  

Form 18 - Request for Examination of Application for Patent

This form can be filed within 48 months from the priority date. The patent office will not consider your patent application for examination unless this form is filed. Hence, if you wish to expedite the patenting process, filing of form 9 and 18 at an early stage is advised.

Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners. To know more about this, you can read our article on this here.

As a final note, I would advise you to go through our article only for the purpose of gaining knowledge of the patenting process, not as a guide to file patents on your own, since this will lead to adverse affects at a later stage.

Source : http://www.invntree.com/blogs/patent-application-filing-procedureprocess-india