Procedure for

Filing Patent
 Patent Applicant
1. True and first inventor
2. Assignee of the inventor-any person, firm, government; along with
assignment deed.
3. Legal Representative of the inventor
Filing by Foreign Applicants-Based on reciprocity
Joint Application
Unity of Invention
 Forms of Application
1. Indian Patent Office
2. National Phase Application under PCT
3. Convention Application

Either as Provisional Application or Complete Application.

 DOCUMENTS
• Form 1- Application for Grant of Patent
• Form 2- Provisional or Complete Specification
• Form 3- Statement and Undertaking by the applicant
• Form 5- Declaration as to inventorship (Maximum Within 1 month of CS )
• Form 26- Authorization of the patent Agent, if the application is filed
through a patent agent.
 Priority Date
• Critical date for the Patent office to determine Novelty and Non-
obviousness.
• In case of multiple priority dates, the prior date will be considered.
• PCT- the date of first filing will be considered as priority date.
• Post-dating allowed upto 6 months from date of application.
• Information about foreign applications.
• Foreign filing permit.
 Examination
• Request for Examination- Within 48 months from the date of filing or
priority.
• Examination done by Controller in co-ordination with the Patent examiner.
• Controller refers the Application to the Examiner within 1 month to check
on:
1. The formalities of the Application
2. Substantial part of the Application
• Examiner's report- within 1-3 months from date of reference
• Controller reviews the report and disposes it off within 30 days from reciept
of report.
• FER-First Examination Report sent by Controller to Applicant withing 6
months of request for examination: Either favorable or not:
• If not- then on procedural or substantive objections clearly mentioned.
• Options available with the Applicant:
1. Contest the objections of the Controller
2. Amend the patent application as per the Controller's decision
3. Request the Controller for a hearing
4. Withdraw the Patent application
 Publication
• Patent Application is kept secret for a period of 18 months.
• Publication within 1 month after expiry of 18 months from date of filing.
• Rights of Patent Applicant start from the Date of Publication.
• Open for opposition from interested parties for atleast 6 months from date
of publication.
• Publication not done if:
1. Secrecy directions issues with regard to the application
2. Application has been withdrawn or
3. Application has been abandoned.
 Pre-Grant Opposition
• Within 6 months of Publication on the following grounds:
1. The applicant for the patent wrongfully obtained the invention
2. The invention that forms part of the patent application lacks novelty and/or
inventive step.
3. Non-patentable subject-matter.
4. Specification lacks sufficient disclosure or is not enabled.
5. Applicant withheld information required by the patent office.
6. Convention application not filed within 12 months of first application in a
convention country.
7. Complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention.
8. The invention forms part of traditional knowledge anywhere in the world.
The applicant must respond to the objections within 3 months from the date
of receiving the notice.
• Patent Grant and Publication
• Post-grant Opposition within 12 months from the date of publication.
• Opposition Notice to be replied to within 2 months of its receipt.
• Opposition Board of 3 members constituted- report to be submitted within
3 months from its reference.
• Hearing by the Controller, Decision on whether to- maintain, revoke or
require to amend the Patent.
 Appeals
• Intellectual Property Appellate Board (IPAB)
• On April 4, 2021, the President of India, promulgated the Tribunals Reforms
(Rationalisation and Conditions of Service) Ordinance, 2021
(‘Ordinance’), inter alia, abolishing the Intellectual Property Appellate Board
by amending the Copyright Act, 1957, the Patents Act, 1970 the Trade Marks
Act, 1999, Geographical Indication of Goods Act, 2000, and the Protection
of Plant Varieties and Farmers’ Rights Act, 2001.
 Patent Maintenance
1. Patent Renewal Fees
• If not paid- the patent lapses.
• No infringement proceeding for actions during the lapse of patent.
2. Statement of Working of Patent
Extent to which patent has been commercially worked in India.
3. Patent Marking
4. Patent Register.
 Patent Year Individual / Small Standard Renewal
Entity Renewal Fee Fee
3rd 800 / 2000 4000
4th 800 / 2000 4000
5th 800 / 2000 4000
6th 800 / 2000 4000

Patent
7th 2400 / 6000 12000
8th 2400 / 6000 12000
9th 2400 / 6000 12000

Renewal 10th
11th
2400 / 6000
4800 / 12000
12000
24000
12th 4800 / 12000 24000

Fees 13th
14th
4800 / 12000
4800 / 12000
24000
24000
15th 4800 / 12000 24000
16th 8000 / 20000 40000
17th 8000 / 20000 40000
18th 8000 / 20000 40000
19th 8000 / 20000 40000
20th 8000 / 20000 40000