Patent Prosecution

By

Dr. C.S. Jyothirmayee

URDIP
March 12, 2011
Email: jyothics@urdip.res.in
Ordinary Application

 Application for Patent of Addition

 Divisional Application (in case of plurality of

inventions disclosed in the main application)

 Convention application , claiming priority date

on the basis of filing in Convention Countries

 National Phase Application under PCT

 Filing an application for patent

 Date of priority is the date of filing

 Filing a request for examination

 No examination without a request for examination

 Date of filing the request for examination is the

basis for the prosecution
 Non-technical requirements

 Technical requirements
 Application form in duplicate (Form 1)
 Provisional or complete specification in duplicate. If the
provisional specification is filed, it must be followed by the
complete specification within 12 months (Form 2)
 Drawing in duplicate (if necessary)
 Abstract of the invention in duplicate
 Information & undertaking listing the number, filing date &
current status of each foreign patent application in duplicate
(Form 3)
 Priority document (if priority date is claimed) in convention
application, when directed by the Controller
 Declaration of inventor-ship where provisional specification is
followed by complete specification or in case of convention/PCT
national phase application (Form 5)
 Power of attorney (if filed through Patent Agent).
 Fee (to be paid in cash/by cheque/by demand draft) (See
Schedule I)
 All documents and copies of documents except
affidavits and drawings shall be in written or type
written or printed format

 Language- English or Hindi (unless or otherwise as

directed or allowed by the controller)

 Letters should be large and legible

 Use of deep indelible ink

 Lines widely spaced upon one side only of strong

white paper of size A-4
 Margin of at least 4 cms on top and left hand
part and 3 cms on the bottom and right hand
part of each sheet

Names and address of applicants and other

persons shall be given in full together with their
nationality and such other particulars, if any as
are necessary for identification
1. Filing a provisional patent application/specification

2. Filing a complete patent application/specification

3. Filing a patent application in a foreign country/

Convention application

4. Filing a Patent Cooperation Treaty (PCT)

application
1. Filing a provisional patent application

The following specification describes the Invention.

 A complete patent application has to be filed

within 12 months from the date of filing the
provisional application
 A provisional patent application is filed to
secure a priority date for your invention
The following specification particularly describes the invention and the
manner in which it is to be performed

 Contents of the specification

 Title of the invention
 Technical field of invention
 Prior art with shortcomings
 Problem with the existing art
 Proposed technical solution
 Brief description of the accompanying
drawings
 Detailed description of the invention
 Examples
 Claims
 File a complete application in the patent
office of convention country within 12
months of the priority date of basic
application

Patent office of any convention

countries (list of contracting countries -
eg. Paris convention)
 Protection of your invention in more number of
countries

 Get 30-31 months duration from the priority

date to file patent applications in each country

 Only complete patent applications are accepted

as PCT applications
Other types of Patent Application

 Application for Patent of Addition (granted for

Improvement or Modification of the already
patented invention, for an unexpired term of the
main patent)

 Divisional Application (in case of plurality of

inventions disclosed in the main application)
Indian Patenting Process Timeline
 Patent Application Filing
Procedure/Process in India

 To file a patent application, a set of forms

has to be submitted to the patent office

 Forms can be submitted online (

https://www.ipindiaonline.gov.in/on_line/)
if you have a class 3 digital certificate

 You can send true copies (hard copies) to

the patent office
 Office Territorial Jurisdiction

Patent Office Branch, 

Mumbai
The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and
Chhattisgarh and the Union Territories of Daman and Diu & Dadra
and Nagar Haveli
Patent Office Branch,
Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and
the Union Territories of Pondicherry and Lakshadweep
Patent Office Branch,
New Delhi
The States of Haryana, Himachal Pradesh,Jammu and Kashmir,
Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union
Territory of Chandigarh
Patent Office,
Kolkata
The rest of India
        
       

Form Title Fee (INR) Comment

         
         

Application for Grant

1000 4000 Mandatory
of Patent
1
Provisional/Complete
No fee* No fee* Mandatory
2 Specification
Statement and
Undertaking Under No fee No fee Mandatory
3 Section 8
Declaration as to
No fee No fee Mandatory
5 Inventorship
Request for
2500 10000 Optional
9 Publication
Request for
Examination of 2500 10000 Mandatory
18 Application for Patent
A fee of 100/sheet (natural person) and
400/sheet (other than natural person) is
applicable for each sheet exceeding 30 sheets in
a patent specification

Further, a fee of 200/claim (natural person)

and 800/claim (other than natural person) is
applicable for each claim exceeding 10 claims in
the patent specification

Forms 1, 2, 3 and 5 can be submitted online

Form 1 - Application for Grant of Patent

Name and address of the inventor(s)

Name and address of the applicant(s)
Information corresponding to prior patent applications
A local communication address (address in India) has to be
provided

Form 2 - Provisional/Complete Specification

 Provisional patent application, then use the following preamble in
the first page of Form 2:
The following specification describes the invention

 Complete patent application, then use the following preamble in

the first page of Form 2:
The following specification particularly describes the invention and
the manner in which it is to be performed
 FORM 1

• Application for grant of a patent

• Application for ordinary, convention, divisional,
patent of addition and national application
through PCT.
• Can be filed by an inventor or assignee.
• Can be filed by any individual or legal entity.
• No restriction on the number of applications
• A combination of individual and legal entity is
allowed
• Jurisdiction is decided on the address of the
first applicant
• Has a permission for endorsement/assigment
 PROOF OF RIGHT

Proof of right to make an application shall

be furnished along with form-1 or within 6
months from the date of filing the application

Extension of time till the date of

acceptance is possible by filing a petition
under section 7(2) and by remitting the fee of
Rs 4000/-
 Form 3 - Statement and Undertaking Under
Section 8

 keeping the patent office informed in writing the details

regarding corresponding applications for patents filed outside
India

Form 5 - Declaration as to Inventorship

 Declare the inventors of the subject matter sought to be

protected using the current patent application
 FORM 3

1. Mandatory if the applicant has filed in foreign country (ies)

either filing before or filing after the date of filing in India
2. The details of foreign filing, filed before the date of filing in
India shall be furnished along with the application or within
6 months as allowed by the controller
3. Extension of time is allowable by filing a petition under rule
138
4. Petition under rule 138 shall be filed before the expiry of 6
month period and maximum extension is allowed by only
one month
5. The details includes the name of the country, the
application number and the status of the application
6. The details shall be provided till the date of the grant
7. Failure to do so becomes one of the grounds for opposition
 FORM 4

It is an application form for making a

request to extend the prescribed time
limit

Can be filed only for the following

time limits
SECTION/R FREE TIME MAXIMUM WHEN TO
PURPOSE FEES
ULE AVAILABEL EXTENTION FILE
TIME During Rs 300 or Rs
S 53(2) and R
Renewal Fee NIL 6 months extendable 1200 per
80 (1-A)
period month

Renewal Fee 3 months from During Rs 300 or Rs

S 142 (4) immediately after the date of 6 months extendable 1200 per
grant recordal period month

Rs 300 or Rs
During one
R 13 (6) filing of Form 5 NIL one month + 1200 per
month
month

During Rs 300 or Rs
To file review
R130 One month One month extendable 1200 per
petition
period month
 FORM 5-DECLARATION OF
INVENTORSHIP
 Shall be filed along with the complete
specification which is filed after provisional
specification
 Shall be filed along with convention
application (no possibility of filing
provisional)
 Shall be filed along with national
phase application under PCT
Only opportunity to add additional
inventors
 These do not appear in the specification
itself

 At least one copy of the drawing shall be

prepared neatly and clearly on a durable
paper sheet

 Drawing shall be on a scale

sufficiently large to show the inventions
clearly and dimensions shall not be
marked on the drawings
 To provide technical information on the invention

 Shall commence with the title of the invention

and normally not more than 15 words

 The summary shall indicate clearly the

technical field to which the invention
belongs, technical problem to which the
invention relates and the solution to the
problem thorough the invention and the
principal use of uses of the invention and
contain not more than 150 words

 If necessary shall contain chemical

formula which characterizes the invention
 Form 9 - Request for Publication

Patent specification will be published by the patent office

after 18
months from the priority date

Patent specification published within 1 week from filing this

form

Patent rights start from the date of publication of the patent

application (enforceable after grant of patent)
o Date of filing is the date of filing either
provisional or complete specification

o First publication in the patent journal is

after the expiry of eighteen months from the
date of filing
Form 18 - Request for Examination of Application
for Patent

Can be filed within 48 months from the priority date

Mandatory: The patent office will not consider your patent

application for examination unless this form is filed

To expedite the patenting process, filing of form 9 and 18 at an

early stage is advised
 The fact of grant of patent will be published
in the patent journal as soon as patent is
granted

 The applicant/patentee is entitled to

institute any proceedings for infringement
with retrospective effect from the 18 month
publication

 Post grant opposition can be filed

within 12 months from the date of
publication of grant of patent
PCT Application Timeline
Single filing procedure for all countries
Sufficient time for translations
Drafted in accordance to PCT is valid everywhere
Flexibility of payment of fees
Advantage of maximum designation fee
Transmittal of Priority needn’t be monitored
Provision for withdrawals
Quality ISR and IPRP
Last minute foreign filings