How to File a Patent in India: Complete Guide to Process, Documents & Legal Requirements

In this competitive world, it is equally important to protect newcomers’ ideas and inventions as it is to make them. A patent is a legal right granted and used by the Government of India that permits the inventor to stop others from making, using or selling the inventor’s invention without permission. As regards patents in India, the Patents Act, 1970 and its subsequent amendments, are binders. Filing for a patent protects an innovation and helps inventors as well as businesses to get commercial advantages. In this article we will simply discuss the process, documents, and legal rules related to patent filing in India.

Who Can Apply for a Patent?

The Patents Act, 1970 lays out clearly, who is eligible to apply for a patent application in India. As per Section 6, the following individuals or entities can apply:

1. The True and First Inventor: The actual person who created or made the invention;
2. An Assignee: If the Inventor has transferred their rights by an assignment someone (for example, company or employer) can apply;
3. Legal Representative of a Deceased Inventor: If the deceased inventor has died, anyone claiming legal rights can apply;

It is important to note that the Act states that a person who discovers by chance and is not an inventor is not considered a true inventor;

The filing may be done by the applicant themselves or through a registered patent agent by submitting to the Indian Patent Office prescribed forms and fees;

What Can and Cannot Be Patented in India

Not every invention or discovery can be patented. The Patents Act, 1970 includes specific subject matter requirements before being eligible for a patent.

Patentable Subject Matter (section 2(1)(j) and 2(1)(ja))

A patentable invention has to meet three tests in India:

• Novelty: It must be “novel” or “new”. In other words, it must not be known or used anywhere in the world.
• Inventive Step: To be considered a patentable invention it has to result in a technical advancement or improvement that is not obvious to a qualified person.
• Industrial Applicability: The invention must be capable of being made or used in an industry.

Patentable subject matter includes new machines, articles or compositions and improvements or new processes (methods) involving manufacture or technology.

Non-Patentable Subject Matter (sections 3 & 4)

The Act also identifies some exclusions, including:

• Scientific principles, mathematical formulae, or laws of nature
• Any “method” of doing business or computer program “per se”
• Any method of treatment (medical)
• Plants or animals (other than microorganisms)
• Any patentable concept which is frivolous, contrary to morals or natural laws, or contrary to the public health
• Any inventions relating to atomic energy (w.r.t. section 4)

Types of Patent Applications in India

The Indian Patent Office provides different types of applications based on how the actual inventor is situated. It is important for the inventor to know the types available so he/she can choose wisely:

Provisional Application

• Filed before the invention is completed, but the inventor wishes to secure a priority date.
• The inventor must file a complete specification within 12 months.

Complete Application

• Full and final details of the invention.
• If the inventor has not previously filed a provisional application, the inventor may file exclusively or straight to a complete application.

Ordinary Application

• Filed in India without any claim of priority from any other application (in India or international).

Convention Application

• If the inventor filed in a country that is a member of the Paris Convention, he/she may still file in India within 12 months of the original application, and simultaneously claim that priority date.

PCT Application (Patent Cooperation Treaty)

• An inventor can submit one international application that can be pursued later in India and other member countries.
• PCT applications facilitate protection in multiple countries.

Divisional Application

• If an application contains more than one invention, the application could be divisible into multiple applications. 

Patent of Addition

• A filer’s application for improvement or addition to an invention under existing patent (independent of PCT for divided application clause).

Each application has different legal effects but the object however is the same to protect the inventor’s rights.

Documents Required for Patent Filing

Filing a patent in India will involve forms and documents as outlined in the Patents Rules, 2003 to give the complete information required by the Patent Office pertaining to the invention and who the applicant is.

These forms and documents include:

1. Application Form (Form 1): This consists of basic information of the applicant, type of application, some declarations etc.
2. Provisional or Complete Specification (Form 2): This is the heart of the patent application. A provisional specification can be filed when the invention is incomplete and a complete specification has all title, background, summary, description and the claims.
3. Statement and Undertaking (Form 3): The details of any foreign patent applications made on the same invention must be disclosed.
4. Declaration of Inventorship (Form 5): To declare the true and first inventor(s).
5. Power of Attorney (Form 26): If a patent agent is going to file on behalf of the applicant Form 26 will be needed.
6. Priority Document: Only if the application claims priority from a foreign patent application will this be needed.
7. Other Supporting Documents: Drawings of the invention (if applicable). And assignment deed if the applicant is not the original inventor.

Step-by-Step Patent Filing Process

Filing a patent in India entails a few prescribed legal steps and doing so essentially allows you to raise the odds of a patent being granted.

Step 1: Conduct a Patent Search

• Prior to filing, make sure there are no similar inventions
• You can use the Indian Patent Advanced Search System (InPASS), which should enable you to search for prior patents.

Step 2: Draft the Application   

• Make sure you decide between a provisional specification or a complete specification draft.
• You will be required to draft claims, a description of the invention, complete drawings. It is suggested to get some professional help from a patent agent.

Step 3: File the Application     

• File the patent application by online mode or visiting at the Indian Patent Office (Delhi, Mumbai, Chennai or Kolkata).
• An application number and a filing date will be then provided to you.

Step 4: Publication of Application       

• Applications are automatically published after 18 months also; one can request early publication with Form 9.

Step 5: Request for Examination (RFE)

• Submit Form 18 to request examination within 48 months of the priority date.

Step 6: Responding to Objections

• You must respond to the FER within 6 months (3-month extension permitted), using a written reply or attending a hearing.

Step 7: Granting of Patent

• If all objections are cleared, then the Patent Office will grant a patent and it will be published in the Patent Journal.
• At this stage, you are the patentee and you are entitled to exclusive rights of the invention.

Step 8: Renewal and Maintenance

• Pay annual renewal fees from the 3rd year onwards until 20 years to keep the granted patent active.

This step-by-step shows how you can legal rights and assist with reducing potential delays in the process.

Timeline and Fees for Patents in India

Knowing the time frame and expense allow inventors to better prepare when submitting a patent application.

Time Frame:

1. Patent search & drafting: 1 to 3 months (depending on complexity)
2. Filing the application: Regimen of filing kicks in on the day the application was filed
3. Publication: Automatically occurs after 18 months or can request early publication
4. Request for Examination (RFE): Require to file within 48 months of filing
5. Examination and objections: Usually take 12-36 months; but the time to respond depends on the applicant
6. Grant of Patent: On having cleared objections, patent is granted; the entire time frame is generally from 3-5 years, longer for complicated inventions.

Fees (as applicable from Indian Patent Office):

Filing fee: depends on type:

• Individual(s)/Startup(s) – lesser fee
• MSMEs – moderate fee
• Large Companies – standard fees

Examination fee – fee at time of filing Form 18

Renewal Fees – from third year, each year higher fees until year 20

After Grant: Rights and Obligations of Patentees

Upon receiving a patent in India, the inventor (patentee) is granted certain rights and duties under the Patents Act, 1970.

Rights of a Patentee (Section 48)

A patentee may:

• Make, use, sell or import the subject matter of the patent.
• License the invention to others for royalties.
• Stop others from using the invention without their consent.

These rights permit the inventor to exploit the innovation and obtain profits.

Obligations of a Patentee

• Annual Renewal Fees (Section 53): Once a patent is granted, the patentee has annual fees to pay from the third year on.
• Working the Patent: The invention must be available in India and non-working is subject to compulsory licensing for the public benefit.
• Disclosure: The patentee must disclose the facts to the Patent Office and the true details, also, any false information may lead to revocation of the patent.

Patent Opposition and Infringement

Patent Opposition

1. Pre-Grant Opposition (Section 25(1))
2. Any person can object to a patent application before it is granted.
3. A third party will usually object on the grounds that; the application lacks novelty, the application is obvious; or, the application is for non-patentable subject matter.
4. Post-Grant Opposition (Section 25(2))
5. Similar to pre-grant opposition, any third party could submit an opposition with respect to a patent filed within one year of granting the patent. 
6. Common grounds for opposition will usually be that the invention is not new, there is no inventive step, or the patent was not adequately disclosed. 
7. After reviewing the opposition, the Controller of Patents will decide whether to maintain it, amend it, or revoke it. 

Patent Infringement

Infringement occurs when a third party uses the patent, sells the patent or imports the patent without authorization from the patentee.

Remedies available include:

• Injunctions – to prevent such person from continuing to infringe the patent,
• Damages or accounts of profits – for the loss suffered by the patentee, and based on precedents, at the discretion of the courts, 
• Seizure of infringing products – in a serious situation of the infringement.

A patent owner or patentee should always be vigilant in the marketplace, active, and take the steps necessary to defend their patent from unlicensed use to collect monetary compensation and to protect their invention and commercial interests.

FAQs about How to file a patent in India