Patent filing requirements in indiaAuthor: Sudhir Kumar
To minimize the cost of Patent filing and prosecution in India, there are number of things an attorney should take in to account.
In the event you are filing a PCT national phase application, provide your associate in India following information:
(i) Application details including title of the invention, names, addresses and Nationality of the inventors; applicants.
(ii) Complete specification as filed before the International office with claims, drawings and abstract.
(iii) English translation of the International Application if filed and published in language other than English.
(iv) Certified copy of the priority document/s if Form PCT/IB/304 is not available
(v) English translation of the priority documents, if filed and published in language other than English
Priority documents are to be filed in India within 31 months from date of priority, therefore if Form PCT/IB/304 is not available, provide your associate the certified copy of priority documents along with your instruction, so that all documentation can be completed on time.
Where the International application or the priority application are in language other than English, provide an English translation of the same to your associate.
Demand from your associate that power of authority as well as other formal documents be sent to you for execution.
The following requirements can be complied within 6 months from date of filing of the application, if your associate charges for late submission of documents these documents/information can be supplied along with the instructions to file the application.
- Where the Applicant is not the inventor, provide your associate with the Assignment deed or any other document by which the inventor/s have assigned their rights to the Applicant.
- Details and status of corresponding Applications in other countries for the same or substantially the same invention.
It will not only save the filing cost but also will minimize your prosecution cost as you would not be required to file petitions along with official fee for not complying with the formal requirements on time and seeking extension of time.
In India, the Patent rights accrues from the date of publication of application in India, it is therefore advisable to ensure speedy publication of the application. Ordinarily in case of the PCT national phase applications the statutory period of waiting till publication i.e. 18 months is already over, therefore the associate should be advised to expedite the publication by chasing the concerned authorities.
A Patent application in India is not examined unless a request for Examination is filed within 48 months from the date of priority. The ordinary time frame from filing of request to issuance of examination report is 18-24 months therefore it is also advisable to file the request for examination as soon as possible (not to wait for 48 months deadline) to expedite the grant in India.
The time frame for putting the application in order of Grant is 12 months from date of issuance of the examination report, but it is advisable to file the response and initiate the discussion with the examiner as soon as possible to avoid any last minute hassles.
Under the Draft Rules Patent (Amendment) Rules, 2010 following Rules are proposed to be introduced, therefore the descriptions as well as claims shall be provided in a supporting format:
1. All Documents must be filed electronically duly authenticated by Applicant or Agent.
2. Filing of documents except drawings and affidavits:
(i) Typewritten or printed in Hindi or English (unless directed or allowed by Controller) in large and legible characters not less than 0.28 cm in height and 1.5 spacing in between lines
(ii) A-4 paper with margin of 4 cm on top and left side and 3 cm on right and bottom.
(iii) Numbered in consecutive Arabic numerals at centre of bottom of sheet;
(iv) Numbering every fifth line of each page of description and claims at right half of the left margin;
(v) Signature other than in English and Hindi to be accompanied by a transliteration in English or Hindi capital letters;
3. In case of sequence listing of nucleotides or amino acids sequences, same must be filed in computer readable form (ASCII text file) along with fee (not applicable earlier)
4. here online transmission cannot be initiated or could not be completed for whatever reasons, document can be handed over or send by post to Patent office within the stipulated time frame.
5. Amended as well as superseded documents to be submitted electronically. Every new or amended document be marked at Header of documents as Amended along with undertaking that unamended pages are the same as originally submitted.
Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at firstname.lastname@example.org. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.