Chapter 3

Filing of Patent Application

03.01

Applicant

 

An Application for a Patent for an invention may be made by any of the following persons either alone or jointly with any other person:

  • True and first inventor
  • True and first inventor’s assignee
  • Legal representative of deceased true and first inventor or his/her assignee

 

The term "person" as defined in the Patents Act includes Government. The term “person” as defined in the General Clauses Act, 1897 includes any company or association or body of individuals, whether incorporated or not. In the case of a limited partnership, the Application may be in the names of all personally responsible partners.

 

True and first inventor does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India. The applicant is required to disclose the name, address and nationality of the true and first inventor.

 

Assignee can be a natural person or other than a legal person such as a registered company, a research organization, an educational institute or Government. Assignee includes assignee of an assignee also. Wherever, the inventor(s) is/are not the applicant, a proof of right to apply by way of an endorsement in the Application form (Form 1) or an assignment deed shall be submitted. 

 

Legal representative means a person who in law represents the estate of a deceased person. In such a case, the Legal Representative may be required to file appropriate legal instruments as Proof of Right.

 

In case of a convention application, the legal representative or assignee of the applicant in the Convention country can also file a Patent Application in India.

Section 6, 134, 135

Form-1

03.01.01

Procedure to be followed in case of death of applicant, or in case the legal entity ceases to exist, substitution or addition of applicant.

  1. If the applicant dies before the grant of patent, a request may be made by a person who would, by virtue of an assignment or agreement made in writing, or by operation of law, be entitled to an interest in the patent. If one or more of the joint applicant(s) die(s) before the grant of the patent, the survivor(s) may, with the consent of the legal representative of the deceased, request for proceeding the application in the name of survivor(s). 
  2. This procedure is also applicable to a legal entity, which ceased to exist before the grant of patent, as well to joint applicants where one of the applicants dies. In all these cases, when a request is made in Form-6, the Controller may allow such substitution. However, in case of joint applicants, the substitution can only be made with the consent of all the other joint applicants.

When there is a dispute between the joint applicants, regarding such substitution, after giving opportunity to all the applicants, the Controller may give such directions as he thinks fit for enabling the application to proceed with. Accordingly, the Controller may direct that the application shall proceed in the name of one or more of the parties alone. Such directions may also relate to the manner in which the application should proceed.

Further, the Controller shall not issue any such direction unless:

                      i.            the invention is identified in the agreement or assignment by reference to the number of application for the patent, or

                    ii.            an acknowledgement, indicating that the assignment or agreement relates to the invention in respect of which the application is made, is produced before the Controller, or

                  iii.            the rights of the claimant in respect of the invention have been finally established by decision of a court.

Section 20

Form-6

03.02

Jurisdiction

 

Unlike many other Countries, for the purpose of facilitating the registration of patents, Indian Patent Office functions from four locations viz. Kolkata, Delhi, Chennai and Mumbai.

 

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

Territorial Jurisdiction

Mumbai

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

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.

Chennai

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

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)

 

When a patent application is filed with an appropriate office, it shall be processed by that office ordinarily.

 

The appropriate office for filing a divisional patent application is the office where the main application is filed, as a divisional application needs to be examined vis-à-vis its main application.

(for Divisional Applications, please see Chapter 6)

 

A foreign applicant is required to give an address for service in India and the jurisdiction will be accordingly decided.

 

Appropriate office in relation to International Applications under Patent Co-operation Treaty and the National Phase Applications (for the PCT Applications and National Phase Applications, please see Chapter 7):

(1) The receiving office, designated office and elected office for the purposes of International Applications filed under the Treaty shall be the appropriate office in accordance with Rule 4.

(2) An International Application under the PCT shall be filed at and processed by the appropriate office in accordance with the provisions of Chapter III of the Patents Rules, 2006, the Treaty and the Regulations established under the PCT.

Section 16, 74.

Rule 4, 5.

 

03.03

Type of Patent Applications

1.      Ordinary Application, i.e., an Application which has been filed directly in the Indian Patent Office.

2.      Convention Application.

3.      PCT Application.

4.      Divisional Application, which can result from division of a Patent Application.

5.      Patent of Addition, which may be filed subsequent to the Filing of an Application for Patent, for an improvement or modification.

Section 7, 54, 135

03.04

Filing of a patent application

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. However, a provisional specification cannot be filed in case of a Convention Application (either directly or through PCT routes)  (For further description of Provisional/Complete Specifications please see Chapter 5)

Normal fee shall be applicable for applications containing upto thirty pages in specification and upto 10 claims. If the specification exceeds thirty pages or claims are more than ten in number, additional fee as given in First Schedule is payable.

Section 7

First Schedule

03.04.01

Contents of Patent Application

A patent application should contain:

(for filing of International Application please see Chapter 7)

  1. Application for grant of patent in Form-1.
  2. Applicant has to obtain a proof of right to file the application from the inventor. The Proof of Right is either an endorsement at the end of the Application Form-1 or a separate assignment.
  3. Provisional / complete specification in Form-2.
  4. Statement and undertaking under Section 8 in Form-3, if applicable.

An applicant must file Form 3 either along with the application or within 6 months from the date of application.

  1. Declaration as to inventorship shall be filed in Form 5 for Applications accompanying a Complete Specification or a Convention Application or a PCT Application designating India. However, the Controller may allow Form-5 to be filed within one month from the date of filing of application, if a request is made to the Controller in Form-4. 
  2. Power of authority in Form-26, if filed through a Patent Agent. In case a general power of authority has already been filed in another application, a self attested copy of the same may be filed by the Agent. In case the original general power of authority has been filed in another jurisdiction, that fact may also be mentioned in the self attested copy.
  3. Priority document is required in the following cases:

a.       Convention Application (under Paris Convention).

b.      PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made under the PCT have not been fulfilled.

The priority document may be filed along with the application or before the expiry of eighteen months from the date of priority, so as to enable publication of the application. In case of a request for early publication, the priority document shall be filed before/along with such request.

  1. Every application shall bear the Signature of the applicant or authorized person / Patent Agent along with name and date in the appropriate space provided in the forms.
  2. The Specification shall be signed by the agent/applicant with date on the last page of the Specification. The drawing sheets should bear the signature of an applicant or his agent in the right hand bottom corner.
  3. If the Application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent. However, it would be sufficient if the permission from the National Biodiversity Authority is submitted before the grant of the patent.
  4. The Application form shall also indicate clearly the source of geographical origin of any biological material used in the Specification, wherever applicable.

Section 7.

Rule 8, 12, 13, 135.

Form-1, 2, 3, 5, 26.

Section 6 of the Biological Diversity Act, 2002.

Rule 17.1 of Regulations made under the PCT.

 

 

 

03.04.02

E-filing:

  1. The Patent Office provides the facility to file a Patent Application online from the native place of the agent of the applicant or applicant through e-filing.
  2. For e-filing, applicant / agent must have a digital signature. For the first time, applicant / agent has to register as a new user and has to create login ID and password on the Patent office portal. (http://www.ipindia.nic.in).
  3. A preliminary Software (Client Software) has to be downloaded from the above-mentioned site and has to be installed on the host computer. With the help of said software, an XML file gets generated and all the relevant documents (i.e. Form 1, Form 2, Form 3, etc.) in soft copy have to be uploaded. An Application number and CBR receipt gets generated after successful uploading.
  4. Major objectives and purpose of providing the facilities of e-filing is to save time and other hazards to protect the priority date of Application and time line to enter into National Phase Application, Patent of Addition and Divisional Application within time frame, in case of last moment instruction from applicant to agent.
  5. The applicant / agent will receive the filing receipt and CBR immediately after acceptance of Application in the software, with Patent Application number, date and time of filing.
  6. The Office is in the process of upgrading the e-filing platform so as to enable an applicant to file all subsequent papers electronically. It is also proposed to make e-filing compulsory in the near future.

Rule 6

03.04.02.01

Steps for e-filing of Patent Application

  1. For using this Portal click on link 'On-line Registration for New User'.
  2. Complete On-line Registration process for getting User ID & Password.
  3. Login to e-Patent portal after successful registration.
  4. Download Client Software for preparing Patent Application(s) offline.
  5. Complete the Patent Application offline and generate an XML file using Client Software.
  6. After creating Application (XML) file offline, digitally sign the XML file (Max. file size permitted 15 MB) for uploading to the IPO Server.
  7. Login to e-Patent portal for uploading Application XML file on IPO Server.
  8. Upload & submit digitally signed XML file to IPO Server.
  9. Process the Application for EFT (Electronic Fee Transaction).
  10. Review Application Status on e-Patent Portal.
  11. On successful EFT, acknowledgement details would be displayed/ generated.
  12. Print the Acknowledgement.
  13. Detailed user manual in pdf format is uploaded on the official website where Certifying Authority, Authorised Bank, Prerequisites of e-filing, Procedure and guidelines of e-filing of Patent Applications are described in detail.

E-filing user manual

03.04.03

Leaving and serving documents at Patent Office

  1. Any Application, notice or other document authorised or required to be filed, left, made or given at the Patent office, or to the Controller or to any other person under the Act or these rules, may be tendered by hand or sent by a letter addressed to the Controller at the appropriate Office or to that person through post or registered post or speed post or courier service or by electronic transmission duly authenticated.
  2. If it is sent by post or registered post or speed post or courier service or by electronic transmission duly authenticated, it shall be deemed to have been filed, left, made or given at the time when the mail containing the same would have been delivered in the ordinary course of post or registered post or speed post or courier service, or by electronic transmission duly authenticated, as the case may be. In proving such sending, it shall be sufficient to show that the mail was properly addressed and transmitted.
  3. In case of a postal or courier delay, the Controller follows the provisions of the above paragraph with regard to the date of receipt of the document.
  4. Any written communication addressed to a patentee at his address as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the Application or notice of opposition, or given for service, shall be deemed to be properly addressed.
  5. All notices and all written communications addressed to a patentee, or to any applicant or opponent in any proceedings under the Act or these rules, and all documents forwarded to the patentee or to the said applicant or opponent, shall, except when they are sent by special messenger, be sent by registered post or speed post or courier service or by electronic transmission duly authenticated.
  6. The date of a notice or a written communication addressed to a patentee or to any applicant or opponent in any proceedings under the Act and these rules shall be the date of dispatch of the said notice or written communication, by registered post or speed post or courier or fax or electronic transmission duly authenticated, as the case may be, unless otherwise specified under the Act or these rules.
  7. In case of delay in receipt of a document or a communication sent by the Patent office to a party to any proceedings under the Act or these rules, the delay in transmitting or resubmitting a document to the Patent office or doing any act by the party may be condoned by  the  Controller if a  petition  for such condoning  of delay is made by the party to the Controller immediately after the receipt of the document or a communication along with a statement regarding the circumstances of the fact and evidence in support of the statement:

        Provided that the delay condoned by the Controller shall not exceed the period between the date on which the party was supposed to have received the document or communication by ordinary course of mail or electronic transmission and the actual date of receipt of the same.

Rule 6

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

03.04.04

Receiving documents in Office:

  1. The application and any other documents with accompanying fees and/or without accompanying fees is received at the Patent Office at separate counters known as Fee Counter (FC) and Non-Fee Counter (NFC) respectively.
  2. Both the counters stand closed at 5 pm for facilitating further processing and no papers will be received after 5 pm.
  3. All documents by post/courier are received at a separate counter. The fee bearing documents are sent to the fee counter and the non-fee bearing documents are sent to the non-fee counter.
  4. The staff at the fee counter makes relevant entries in the module and generates the Cash Book Receipts (CBRs). The staff at the non-fee counter makes relevant entry in the document receipt module.
  5. The staff at the fee counter stamps the documents so received and enters the CBR number, date, amount of fee received, application number, patent number or other relevant entries. The staff at the non-fee counter also stamps the documents after making entries in the module.
  6. The documents from both the counters are sent on an hourly basis to the Electronic Data Processing (EDP) Section for digitization.
  7. Documents requiring no digitization are sent to the concerned section on daily basis.

 

03.04.05

Language and Paper size etc.

All documents and copies of documents to be furnished shall be written or typewritten or printed either in Hindi or in English language in large and legible characters with deep indelible ink with lines widely spaced upon one side only of strong white paper of a size A4 with a margin of at least 4 centimeters on the top and left hand part and 3 centimeters on the bottom and right hand part thereof.

It is desirable that the documents are prepared with lines spacing of 1 1/2 or double space in non-script type font (e.g., Arial, Times Roman, or Courier), preferably in a font size of 12.

Signature

Any signature which is not legible or which is written in a script other than Hindi or English shall be accompanied by a transcription of the name either in Hindi or in English in block letters.

Rule 9

03.04.06

Sequence listing

In case the Application for Patent discloses sequence listing of nucleotides and/or amino acids, the same shall be filed in electronic form. However, the fee with respect to the equivalent number of pages shall be payable.

Rule 9

03.04.07

Fee:

1.      Fee payable under the Act may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated. If the draft or cheque is sent by post, the fee shall be deemed to have been paid on the date on which the draft or cheque would have reached the Controller in the ordinary course of mail.

2.      Where a fee is payable in respect of a document, the entire fee shall accompany the document.

3.      Where a fee is payable in respect of the doing of an act by the Controller, the Controller shall not do that act until the fee has been paid.

4.      In case an application processed by a natural person is fully or partially transferred to a person other than a natural person, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than a natural person in the same matter shall be paid by the new applicant with the request for transfer.

5.      Fee once paid in respect of any proceedings shall not be ordinarily refunded whether the proceedings have taken place or not.

6.      Prescribed fee for various proceedings under the Act is given in First Schedule.

Section 142

Rule 7

First Schedule

 

 

 

03.05

Processing of Application

 

03.05.01

Initial processing

  1. On receipt of an application, the Office accords a date and serial number to it. PCT national phase Applications and non-PCT Applications are identified by separate serial numbers.
  2. All applications and other documents are digitized, verified, screened, classified and uploaded to the internal server of the Office.
  3. Patent applications and other documents are arranged in a file wrapper and the Bibliographic sheet is prepared and pasted on the file cover, so that the files move on for storing in the compactors.
  4. The Application is screened for:
    1. International Patent Classification.
    2. Technical field of invention for allocation to an examiner in the respective field.
    3. Relevance to defence or atomic energy.
    4. Correcting/completing the abstract, if required. If found not proper, the abstract will be recasted suitably, so as to provide better information to third parties. However, such amendments should not result in a change in the nature of invention. 
  5. Requests for examination are also accorded separate serial number.

 

 

 

 

03.05.02

Scrutiny of application

  1. The Office checks whether the Application has been filed in appropriate jurisdiction (for jurisdiction please see 03.02). If the jurisdiction is not appropriate, the application shall not be taken on record and the applicant is informed accordingly.
  2. The Office checks for proof of right to file the application (See 03.04). If the proof of right is not filed along with the application, it shall be filed within a period of six months from the date of filing of the application. Otherwise, the applicant shall file the same along with a petition under Rule 137/138.
  3. The Office checks whether the application and other documents have been filed in the prescribed format i.e. prescribed forms, request, petitions, assignment deeds, translation etc. Further, the Office checks whether:

a)      the documents are prepared on a proper sized paper, typed in appropriate font with proper spacing,

b)      the documents are duly signed.

c)      abstract, drawings (if any) have been filed in proper format,

d)     meaningful Claim(s) are present in a complete Specification,

e)      Power of Attorney or attested copy of General Power of Attorney (if any) is filed,

f)       Form-5 has been filed(along with complete after Provisional or for filing PCT-NP/ Convention  Application),

g)      the invention has been assigned to another person and Form 6 has been duly filed. If the right is assigned from an individual to a legal entity, the legal entity is invited to pay the balance fees.

 

 

 

 

 

 

03.05.03

Secrecy Directions and consequences thereof

  1. If in the opinion of the Controller an invention pertains to a subject matter relevant for the purpose of defence as notified by the Central Government, the Controller issues a secrecy direction prohibiting the publication of the application to the applicant and refers the matter to the Central Government for their consideration as to whether the application is prejudicial to the defence of India.
  2. The Central Government, after considering the merits of the secrecy direction, may give notice to the Controller as to whether the secrecy direction needs to be continued or not.
  3. The Central Government reviews the matter at an interval of six months. The applicant may request for a reconsideration of the secrecy direction and if the same is found reasonable by the Controller, he may request the Central Government for a review.
  4. If the Central Government is of the opinion that an invention in respect of which the Controller has not imposed a secrecy direction and is relevant for defence purposes, it may at any time before the grant of the patent notify the Controller to that effect. Thereupon, the Controller invokes the provisions of Section 35(1).
  5. So long as any directions under Section 35 are in force, the Controller shall not take a decision on grant/refusal of the application.

Section 35, 36, 37, 38

 

03.05.04

Inventions relating to Atomic Energy

  1. No Patent is granted in respect of an invention relating to atomic energy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962.
  2. According to Section 20(1) of Atomic Energy Act, atomic energy means energy released from atomic nuclei as a result of any process including the fission and fusion processes. Under this Act, "prescribed substances" means any substance including any mineral which the Central Government may, by notification, prescribe, being a substance which in its opinion is or may be used for the production or use of atomic energy or research into matters connected therewith and includes uranium, plutonium, thorium, beryllium, deuterium or any of these respective derivative or compounds or any other materials containing any of the aforesaid substances. The Act defines the term "radioactive substances" or "radioactive material" as any substance or material, which spontaneously emits, radiation in excess of the levels prescribed by notification by the Central Government. “Prescribed Substances, Prescribed equipment and Technology” have been notified by the Government of India, Department of Atomic Energy vide S.O.61(E), published in the Gazette of India (extraordinary, Part II, Section 3, sub-section (ii), dated 20th January, 2006.
  3. Any person desiring to apply for a patent abroad for an invention relating to or which he has reason to believe relates to atomic energy shall obtain prior permission from the Central Government before making the application abroad or communicating the invention to any person abroad, unless six weeks have elapsed since his request for permission was made to the Central Government and no reply was received by him.
  4. Upon screening, if an Application is found to be falling within the purview of the Atomic Energy Act, the Controller refers the Application to the Central Government.
  5. The Central Government upon consideration may issue a direction to the Controller, which is binding.
  6. The opinion of the Central Government is not open to an appeal.

Section 4.

Section 20 of the Atomic Energy Act, 1963.

S.O.61(E)

03.06

Withdrawal of patent application

The applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in writing and by paying the prescribed fee.

However, if the applicant makes a request for withdrawal within 15 months from the date of filing or priority of the application, whichever is earlier, the application will not be published. It is desirable that the applicant specifies in the request that such withdrawal is under Section 11A(3)(c).

Section 11A(3)(c), 11B(4).

First Schedule

 

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