Patent application and
Documents required at the time of filing
Form
|
Title
|
Sections and
Rules
|
Fees(Rs)
Nat.per Entity
|
|
Form
1
|
Application
for grant of a patent
|
S.7, 54 & 135 and rule 20(1))]
|
1000
|
4000
|
Form
2
|
Provisional/Complete
Specification
|
S.10
and rule.13
|
No
fee
|
No
fee
|
Form 3
|
Statement
and undertaking
|
S.8
and rule 12
|
No
fee
|
No
fee
|
Form 4
|
Request
for extension of time
|
S. 53(2) and 142(4))
rules 13(6), 80(1A) and 130
|
300
per month
|
1,200
per month
|
Form 5
|
Declaration
as to Inventorship
|
S.10(6) and rule 13(6)
|
No
fee
|
No
fee
|
Form 26
|
Form
of Authorization of a patent agent/or any other person in a matter or
proceeding
|
S. 127,132 and rule 135
|
No
fee
|
No
fee
|
Explanation:
The bolded forms are exception at the time of
filing of patent and depends on certain conditions,
Form
3: Statement of undertaking regarding foreign filings
[S.10(6) and rule 13(6)]
- · If the applicant has filed and is prosecuting an application for the same or substantially the same invention in other countries, then he has to submit Form 3 detailing out particulars like date of filing, Publication number, country name etc.
- · If there is no foreign filing then the applicant can give a NIL statement
Form
5: Declaration of Inventorship:
- · If the inventors are not applicant in making an application for the patent, then the applicants are required to file a declaration that the applicants believe that the persons so named are the true and first Inventor
- · In case the applicant is himself an inventor, then there is no need to file the declaration of inventorship
- · Declaration of inventorship may also be filed within 1 month from the date of filing the complete specification
- · A request for extension of time may be filed using form 4
Proof
of Right (S.7(2))
- · Where the application is made by virtue of an assignment of the right toapply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
- · Applicant must file proof of right during filing or 6 months from the date of filing
- · It can be produced in the body of the application(Form 1) or by way of separate assignment
- · If application by way of legal representative needs to be filed then file a death certificate as proof of right to make an application
Form
26: Authorization of Patent agent:
If the patent is filed
through a patent agent, then fill form 26.
April 2008
Procedure for
obtaining a patent
Step
|
Procedure
|
Section
|
Rule
|
1
|
Patent
application has to first filed in
India atleast 6 weeks before
filing it abroad. If he wants to file
the patent directly then he has to take permission from the controller by filling Form-25 and Rs 4,000 fees
|
25
|
71(1)
|
2
|
Application
must be accompanied by Provisional/Complete specification (Form
1,2,3,5,26 and proof of right)
|
7(4)
|
|
3
|
If provisional
is filed then complete specification must be filed within 12 months from the date of filing
of provisional specification
|
9(1)
|
|
4
|
Patent
application is published after 18
months from the date of filing
|
11A(1)
|
|
5
|
In
case an Early publication is necessary:Form-9, fees Rs 10,000
|
11A(2)
|
|
6
|
Applicant
to file Request for examination (RFE)
within 48 months from the date of
priority or date of filing whichever is earlier; Form-18, Fees :Rs10,000
|
11B(1)
|
24B(1)(i)
|
7
|
After
RFE, Controller forwards copy of
all documents to examiner within 1
month from date of publication or one month from RFE whichever is later
|
12(1)
|
24B(2)(i)
|
8
|
Examiner
carries out patentability search, makes report and forwards it to controller,
Time-limit-ordinarily within 1 month but not more than 3 months from the date
when the documents were received by examiner
|
12(2)
|
24B(2)(ii)
|
9
|
Controller
disposes of the report within 1 month from the date of receipt of the report
|
24B(2)(iii)
|
|
10
|
Controller
forwards first examination report(FER) to agent/applicant within 6 months
from RFE or date of publication whichever is later
|
14
|
24B(3)
|
11
|
Applicant
to comply to the requirements imposed on him from the FER within 12 months
from the date of FER forwarded to him. If no communication is heard after
this period, application is deemed to be abandoned
|
21
|
24B(4)
|
12
|
If
the application if found in order of grant, it is granted expeditiously with
seal of patent office and date on which it is granted is registered in
register of patent office
|
43
|
Note:
The type of questions likely to be asked
is usually in case studies, this question has also been asked as Short note in
October 2006 paper, questions like how will you obtain a patent in shortest
possible time- The answer is File complete specification first instead of
provisional, then request for early publication through Form 9, fees Rs
10,000(Legal entity), and after publication immediately file for RFE through
form 18, Fees: Rs 10,000.Rest of the steps from 7-12 are compulsory for grant
of patent. Also we need to explain the various forms ,fees and their title and
section, we need to also explain that claims should be clear, succinct and
fairly based on matter disclosed and should relate to single invention,
Complete specification should disclose
the best mode to carry out the invention. This helps to obtain patent in
shortest possible time.
Below are some
questions which can be answered using the above table
Jan
2010: Your client has applied for a provisional patent
application in India. Draw a time line of all the important events till the
date of grant of her patent application as per the Indian Patents Act and
Rules.
April
2008:
Questions related to
postdating of application
Dec
2008:
Option 1: Request to post date the application as
per S.17(1)
Key features of
the section
- · Provisional as well as complete specification can be requested for postdating.
- · Request for postdating is possible any time after filing provisional or complete specification, but before grant of patent.
- · The date of post-date shall be specified in application to controller.
- · Request for post-date shall not be made after filing provisional/complete specification.
- · Post-dating is not possible to a date later than the date on which it was actually made, i.e, maximum period of 6 months.
- Request for post dating can be made to the controller along with a fees of Rs 2000/-. By doing this the applicant receives 6 more months to file the complete specification
Option 2: Abandoning the application
Do not file the
complete specification if the priority date is not important then by section 9
(1) the patent will get abandoned automatically and a fresh patent application
can be made.
9(1) Where an
application for a patent (not being a convention application or an application
filed under the Patent Cooperation Treaty designating India) is accompanied by
a provisional specification, a complete
specification shall be filed within twelve months from the date of filing of
the application, and if the complete specification is not so filed, The
application shall be deemed to be abandoned.
Option 3: S.9(3) :Applicant may decide to request the controller within 12
months from the date of filing to treat the specification as provisional
specification and proceed with the application
Table for Forms and Fees
Note:
| |||||||||||||||||||||||||||||
PCT Application
Jan 2010
Your client
Sivaram has filed a patent application in Germany on January 1st 2006. He has
filed a PCT application on December 31st 2007. By which date should you file
his national phase application in India? Assuming you have filed his national
phase application in India on January 1" 2008, what is the last date by
which the request for examination is to be filed in India to keep his
application live?
Jan 2010
You have filed a
provisional patent application in India
and now wish to file an application under the Patent Cooperation Treaty (PCT). Draw a timeline with the important dates for actions under the PCT system
National
Filing date:
Rule 20.
International applications designating or designating and electing India
Rule 20(4) (i) :
The time limit referred to in sub-rule (2) shall be thirty one months from
the priority
date as referred to in Article 2(xi);
Priority date: 1st Jan 2006
National filing date: before 1st August 2008
(31 months from priority)
Filing for
Request for examination:
Rule 24 B:
Examination of application.;
(1) (i) A
request for examination under section 11 B shall be made in Form 18 within
forty-eight months from the date of priority of the application or from the
date of filing of the application, whichever is earlier;
Hence RFE should be filed before 1st Jan 2010 (Priority date: 1st Jan 2006
, hence within 48 months from this date RFE should be filed)
Note:
Competent Searching Authority (sometimes asked in objective question)
for PCT
(Remember: A2CEUS).
(Australia, Austria, China, Europe, United States and Sweden)
Competent
International Searching Authority:
Australian
Patent Office, Austrian Patent Office, European Patent Office, State
Intellectual Property Office of the People’s Republic of China, Swedish Patent
and Registration Office or United States Patent and Trademark Office
