A patent is a document conferring on applicants, the exclusive right to the invention throughout India. In India, Patents Act is governed by the Indian Patent Office, under the Government of India.
The process of getting a patent in India involves multiple steps and takes a significant amount of time. Typically, the time taken for the patent process is typically between 3-5 years (unless fast track option is availed) and involves a series of steps.
In this article, we will look into all the important steps in the patent process in India:
Step 1 – Patentability search
A patentability search helps to discover related prior arts which can cause problems with the grant of your patent application. It is recommended to conduct a detailed patent search before filing a patent application.
The objective of the patent search is to find out if there is anything out there that is substantially similar to your invention. This helps you to decide whether to proceed with the patent application or not. In case a negative opinion is obtained after the patent search, it saves a lot of cost and time, which would have been spent on filing process and eventually getting the application rejected.
In certain cases, some applicants who prefer to quickly protect their filing date, directly file a provisional patent application and skip the patentability search initially. However, they may conduct a patent search at a later point or generally before 12 months complete patent application deadline, to evaluate the possibility of a patent grant, before investing additional money for filing a complete patent application or seeking protecting in other countries. Patentability search is optional but is usually recommended by experts.
| Factor | Description |
|---|---|
| Purpose | To discover prior art that could interfere with the patent grant. |
| Optional or Mandatory | This step is optional but highly recommended by experts. |
| Timing | It is generally conducted before filing the patent application. However, it can also be done at a later point, typically before the 12 months complete patent application deadline. |
| Role in Decision Making | The search results help decide whether to proceed with the patent application or not. |
| Advantages | Helps save time and costs by identifying potential issues before filing the patent application. |
| Special Cases | Some applicants, looking to quickly secure their filing date, may initially skip the patentability search and directly file a provisional patent application. |
Step 2 – Patent drafting
It is one of the most important stages in the patent process.
A patent draft is a techno-legal document and defines the scope and meaning of the invention. The strength & quality of a patent is directly proportional to the quality of the patent draft. Hence, it is advisable to spend considerable time and effort during this stage to ensure the best quality patent draft is filed with the patent office.
Depending on the state of your invention, you make decide to first file a provisional patent application and follow it up with a complete patent application within 12 months. However, if your invention is complete, you can also consider filing a complete patent application directly.
| Factor | Description |
|---|---|
| Purpose | To create a techno-legal document that defines the scope and meaning of the invention. |
| Importance | It’s a crucial step in the patent process as the strength and quality of a patent is directly proportional to the quality of the patent draft. |
| Provisional vs Complete | A provisional patent application can be drafted and filed when the invention is still under development. A complete patent application should be filed within 12 months of the provisional application. |
| Timing | Drafting is done after a decision to proceed with the patent application is made, typically post the patentability search. |
| Role of Experts | It’s advisable to have patent experts involved in this process due to its technical and legal complexities. |
| Filing | After drafting and approval by the client, the patent draft is filed with the patent office as part of the patent application. |
| Result | Upon successful processing of the payment and application, an application number is assigned by the patent office. |
Step 3 – Patent filing in India
Once the patent has been drafted and approved by the client, the next step is to file the application with the patent office.
Depending on the stage of the invention, either a provisional patent application or a complete patent application can be drafted and filed.
Once the filing is done, an application number is assigned by the patent office on successful processing of the payment.
In case a provisional patent application was drafted and filed, a complete patent application must be mandatorily drafted and filed with 12 months from the date of filing of a provisional patent application.
International Filing – Convention filing or PCT filing
If you are interested in protecting your inventions in other countries outside India, the same can be done via the PCT filing route or Convention filing route. However, the same needs to be done within 12 months from the first filing date.
It is a good idea to discuss your intention of protecting your invention in other countries prior to filing your application. Since the costs for protecting your inventions in other countries can be considerably higher, having an idea will help in planning your patent strategy and budget better.
| Type | Description |
|---|---|
| Provisional patent application | Can be filed quickly to protect the filing date. A complete application must be filed within 12 months. |
| Complete patent application | Can be filed directly if the invention is complete, or within 12 months of a provisional application. |
| Convention filing or PCT filing | Protects inventions in other countries outside India, needs to be done within 12 months from the first filing date, and should always be accompanied with a complete specification. |
Step 4 – Publication of patent application
Every patent application will ordinarily get published after 18 months from the first filing date. This is an automatic step in the process and doesn’t require any additional request.
If you are looking to get your patent application published earlier than 18 months, you can file a request for early publication (Form 9) with the patent office for early publication. Once a request is filed for early publication, it is normally published within one month of the early publication request.
Your rights on the patent application will start once the patent application is published. However, they can only take legal measures to enforce your rights against possible infringers only after the grant of the patent.
| Factor | Description |
|---|---|
| Automatic Publication | Every patent application gets automatically published 18 months from the first filing date. |
| Early Publication Request | Applicants can file a request for early publication (Form 9) to get their patent application published before 18 months. |
| Time Frame for Early Publication | Upon filing the request, the application is usually published within a month. |
| Legal Protection Start | Rights on the patent application begin once the patent application is published. |
| Legal Enforcement | Applicants can only take legal measures to enforce their rights against possible infringers after the patent is granted, not just published. |
Step 5 – Examination of patent application
Patent examination is the process by which an invention to be patented has its novelty and inventive step assessed.
The examination of the patent application doesn’t happen automatically; and it is the responsibility of the applicant to make sure that their application is examined.
To request the patent office to examine the patent application, the applicant has to make a ‘Request for Examination‘ (Form 18). The request has to be made within 31 months from the earlier filing date (or priority date, whichever is earlier). If a request is not made within the 31 months deadline in India, the patent application will be abandoned.
A request for expedited examination can also be filed to further fasten the examination process. Fast tracked applications typically get a final decision anywhere between 8-24 months, which is quite faster than the regular 3-5 years it takes normally.
Once the request for examination is made, the patent application will be examined in due course of time.
During examination, the examiner will conduct a patentability search to look for similar technologies to check if the patent application is filed for an invention, which is novel and inventive. Additionally, the examiner will also list any other issues from a patent law point of view, like patentable subject matter, etc.
Once the examination is conducted, the examiner will issue a First Examination Report (FER). The applicant has to respond to the first examination report within 6 months. The applicant may either agree to some of the objections or counter them. Sometimes the FER may be followed up by a Second Examination Report as well. Depending on the case, the examiner may also give an opportunity of being heard in the form of one to one hearing / interview.
The whole patent examination process is supposed to take up to 9 months before the final decision of patent grant is made by the examiner.
| Sub-Step | Brief Description |
|---|---|
| Request for Examination | An mandatory request to be made by the applicant within 31 months from the filing date. |
| Expedited Examination | An optional request for quicker examination, potentially leading to a decision in 8-18 months. |
| Examination Process | The application undergoes a thorough check for novelty, inventive step, and other patent law considerations. |
| First Examination Report (FER) | A report issued post-examination, requiring a response from the applicant within 6 months. 3 months extension possible. |
| Further Examination Reports and Interviews | Possibility of a second report or a hearing/interview depending on the case. |
| Final Decision | The final decision on patent grant is made, typically within 9 months of examination. |
Step 6 – Final decision on patent grant
After examining the patent application, the patent office will issue their final decision whether the patent is allowed, rejected or allowed with certain modifications.
Step 7 – Patent renewal
Once a patent is granted, it can be kept active for a maximum duration of 20 years in India. To keep it active, patent renewal has to be filed for each of the year you intend to keep your patent application active.
| Factor | Description |
|---|---|
| Renewal Period | Patents must be renewed every year, starting from the end of the 2nd year from the date of patent grant. |
| Maximum Validity | A patent can be renewed up to a maximum period of 20 years from the date of filing the patent application. |
| Failure to Renew | If not renewed, the patent lapses and enters the public domain. However, it can be restored within 18 months of lapse under certain conditions. |
| Renewal Fee | A prescribed fee must be paid to the Indian Patent Office during the renewal. The fee increases progressively with each year. |
| Late Renewal | Late renewals are possible within 6 months of lapse upon payment of a late fee. |
The patent process in India is a comprehensive journey that takes a significant amount of time, often 3-5 years. Each of these steps are intricate, involving various legal and technical considerations. For a thorough understanding of each step, including timelines, please refer to the table below:
| Step | Description | Timeline |
|---|---|---|
| Patentability search | A detailed search to discover related prior arts which can affect the grant of the patent application. | 1-7 days |
| Patent drafting | Creating a techno-legal document that defines the scope and meaning of the invention. | 2-15 days |
| Patent filing in India | Filing the application with the patent office and receiving an application number. Either a provisional or complete application can be filed. | 1-2 days |
| International Filing – Convention filing or PCT filing | If interested in protecting the inventions outside India, this can be done. | Within 12 months from the first filing date |
| Publication of patent application | Automatic publication of patent application. Can be done earlier upon request (Form 9). | 18 months or earlier if requested |
| Examination of patent application | Assessment of the invention’s novelty and inventive step. Requires filing a ‘Request for Examination’ (Form 18), responding to objections and attending hearing. | Request must be made within 31 months from the earlier filing date. Response to objections within 6 months. |
| Final decision on patent grant | The patent office’s decision on whether the patent is allowed, rejected, or allowed with modifications. | Within 3-5 years (typical timeframe) |
| Patent renewal | To keep the patent active, renewal needs to be filed each year for a maximum of 20 years in India. | Every year after grant up to 20 years |