Required Documents for Patent Registration in India

To file a patent registration application in India, the following documents are essential:

• Patent Registration Application: Form-1.
• Complete Specifications: Form-2. In the absence of complete specifications, a provisional specification can be submitted.
• Statement and Undertaking: Form-3.
• Inventor’s Declaration: A declaration from the inventor clarifying the details of the invention and its originality, provided in Form-5.
• Proof of Right: Documentation from the inventor confirming the applicant’s right to apply for the patent registration.
• Power of Authority: If a patent agent or legal representative is submitting the patent application, then Form-26, a power of authority, is required.
• Priority Documents: For convention applications (from the Paris Convention) or PCT (Patent Cooperation Treaty) national phase applications, it’s imperative to present priority documents. These can be provided with the initial submission or within 18 months from the priority date.
• Permission from National Biodiversity Authority: If the application involves biological material sourced from India, obtaining permission from the National Biodiversity Authority is mandatory.
• Source of Biological Material: The patent application should specify the source or origin of any biological material mentioned in the specifications.

Steps for Patent Registration in India

Acquiring a patent in India involves a systematic procedure, commencing with a Patent Search and culminating in issuing a Patent Registration Certificate.

Here’s a breakdown of the Patent Registration process in India:

Step 1: Conducting Patent Search Begin the process with a thorough patent search to ascertain the invention’s uniqueness. It’s advisable to undertake patent searches before filing to gauge the novelty of your invention. If your invention mirrors prior art or closely resembles existing patents, its novelty might be contested by the Indian Patent Office. Hence, preliminary patent searches are pivotal to gauging the probability of patent approval.

Step 2: Drafting the Patent Specification Upon completing the international searches, the next step is to draft the patent specification. This document, framed in technical and legal terms, may or may not incorporate the inventor’s claims. Absence of claims indicates a provisional specification; presence denotes a complete one. The specification outlines the invention, offering a comprehensive description, practical instances, and the best implementation method. A patent is legally shielded when its specification, including the inventor’s claims, is exhaustive.

Step 3: Filing the Patent Application After preparing the Patent Specification, you can proceed with the patent application filing in India. Depending on the drafted specifications, applications can be either provisional or complete. The Provisional or Complete Specification is lodged in Form 2, whereas the Patent Application is in Form 1, in line with the Indian Patent Act. If you’ve filed a provisional patent specification, a complete one encompassing the inventor’s claims should be submitted within 12 months.

Step 4: Publicizing Patent for Opposition Post the patent application, the patent is listed in an official gazette for public scrutiny. This transparency enables the public to raise objections against the patent, provided they have valid reasons.

Step 5: Initiating Patent Examination The patent application undergoes examination only after an explicit examination request has been made. This request should be made within 48 months from the patent’s filing or its priority date. An assigned patent examiner then scrutinizes the application, releasing an examination report highlighting concerns. A response to this report must be dispatched within a year of its release. If needed, the examiner might summon the applicant or representative to a hearing to address these concerns, termed patent prosecution.

Grant of Patent Registration Upon successfully resolving the examination report’s concerns and the examiner’s satisfaction with the applicant’s clarifications, the patent application progresses to the final stage: the grant of a Patent Registration. This concludes the patent registration procedure. Conversely, if the counterarguments don’t convince the examiner, the application gets declined, necessitating the applicant to restart the entire patent process for subsequent protection in India.

Where to file a Patent Application

It’s filed at the appropriate patent office using Form-1 and a provisional/complete specification, along with the required fee. The following factors are used to determine a patent office’s jurisdiction:

• Place of residence, domicile, or business of the applicant (first mentioned applicant in the case of joint applicants).
• The place from where the invention originated.
• Address for service in India given by the applicant, when the applicant has no business or domicile place in India (Foreign applicants).

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

Delhi Patent Office Jurisdiction: 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 fall under the Delhi Patent Office jurisdiction.

Chennai Patent Office Jurisdiction: The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, and the Union Territories of Pondicherry and Lakshadweep fall under the Chennai Patent Office jurisdiction.

Kolkata Patent Office Jurisdiction: The rest of India, the States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh, and Union Territory of Andaman and Nicobar Islands fall under the Kolkata Patent Office jurisdiction.

Patent Renewal and Its Application Process in India

To ensure the continued protection of an invention, it’s essential to renew the patent regularly. If not renewed, the patent expires, and the invention becomes publicly accessible. In India, patent renewal is a yearly process carried out by the patentee by applying along with the requisite fees.

Restoration of a Patent If the patent expires due to non-renewal, one can apply for its restoration. To do so:

• File a restoration application using Form-15 within 18 months from the date the patent became inactive.
• Provide a statement describing the circumstances that led to the failure to renew the patent.
• Pay the prescribed restoration fee.
• Upon receiving the application, the Controller will evaluate the reasons for the delay. If deemed satisfactory, the patent may be restored.

It’s advisable to regularly track patent renewal dates or engage with a patent agency to manage these renewals, ensuring continuous protection for the invention.

Get Patent Registration with ASK Associates

ASK Associates is your trusted partner in safeguarding intellectual innovations. The patent registration process in India can be intricate, but with ASK Associates, it’s simplified. Our expert team, proficient in the Indian patent system, offers comprehensive assistance, ensuring your application is compliant and resilient. Choose ASK Associates to transform your innovative concepts into protected assets.