Steps and procedure for getting patent in India

Steps and procedure for getting patent in India

To understand the steps involved in getting patent for your invention in more clearer way let’s assume 3 illustration as below,

1. You (the inventor): who has innovative idea to patent

inventor in india
2. Patent professional (Patent agent or attorney)

Patent agent or attorney in india

3. Patent office (controller, examiner and other staff)

patent office

We would be seeing what is the involvement of each one of them at every step while getting patent. along the way we would also be seeing relevant forms and costs involved at each stage. So, let’s get started…

Step 1: Idea incubation phase

idea incubation phase

Every invention has its beginning in an Idea. In this phase you capture your idea properly, get clarity on each element of innovative idea, do fill in the blanks with appropriate research and experimentation.

Include drawings, diagrams or sketches explaining working of invention. the drawings and diagrams should be designed so as to explain the working of the invention in better way with visual illustrations. they play an important role in understanding your invention.

Once you have your innovative idea completely captured with all technical details, then you perform a preliminary search. This search is for finding answers to questions which builds a working disclosure of the invention.

Some of the questions in invention disclosure form would be:

  • What is my idea / invention about? How does it work?
  • What problem my innovative idea is solving
  • What is the field of my invention
  • What are the advantages of my innovative idea
  • What are elements or components of my innovative idea
  • Can I draw a block diagram or device or flowchart or sketch that explains my invention in better way
  • What are advantages of my invention over existing knowledge that is prior arts
  • Who are the competitors with what product or service.. etc.. 

This is most important phase for inventor where an idea is taken from ideation phase to a working invention disclosure that can be discussed with a patent agent or attorney. For this important section we have a complete section about actions to take and worksheets Refer section on “Idea incubation phase”

Responsibilities

Inventor inventor in india Collect relevant details on innovative idea and create comprehensive invention disclosure
Patent agent or attorney Patent agent or attorney in india Receive invention disclosure, perform patentability search, provide opinion and Draft patent application
Patent office patent office  

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Costs: There are no costs involved at idea incubation phase

The Outcome of this step:

The outcome of idea incubation phase is creating of working invention disclosure which covers all aspects of your invention completely. And which is ready to be shared with patent professional.

check our detailed section on  Idea incubation phase : from idea to complete invention disclosure  

Step 2 : Patentability search (optional step)

In this step, the patent agent or attorney who is working on your invention helps you in finding out whether your invention meets all patentability criteria which are :

  • Novelty
  • Non-obviousness
  • Industrial application 

The patentability search is aimed towards finding out the novelty and non-obviousness of the invention, the search identifies the closes possible prior arts (known to public) relating to your invention and based on the results obtained an opinion about the patentability of your invention may be provided by patent professional.

Based on the results found and reviewed in a patentability search report, the patentability opinion may be positive, negative or neutral. A positive patentability opinion indicates, you stand a good chance to get your patent granted for your invention.

The patentability report and opinion helps you decide whether to go ahead with the patent or not, chances are what you thought as novel might already been patented or know to public in some form of information. Hence this reports saves lots of time, efforts and cost of the inventor by helping him decide whether to go ahead with the patent filing process or not.

Responsibilities

Inventor inventor in india answering questions by patent professional, reviewing patentability search report and closest possible prior arts.
Patent agent or attorney Patent agent or attorney in india understand invention disclosure and performing patentability search, prepare report and give opinion on patentability
Patent office patent office  

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Costs : the professional fees for patent professional can range from Rs. 10,000 to Rs. 30,000 for performing a patentability search

Time : the time required is about 5-7 working days

Note: in spite of all these benefits of the patentability search, this is an optional step. You can choose to directly file the patent application without going for patentability search, which is Not recommended by the way.

For more details on this Refer section on “ patentability search or novelty search 

Step 3 : Patent drafting / writing

 

Patent drafting is the stage where your invention disclosure and patentability search report is used to create the patent application.

Patent drafting / writing is a specialized job, it requires years of practice and experience with patent law to draft a good patent application. To get an idea just read some of the granted patents from your domain. Patent is a techno-legal document, technical as well as legal. Writing patent as a project report or a technical thesis (on your own ) and submitting it to patent office would be a mistake which can cause loss of opportunity to patent your invention.

There are many rules and care to be taken while drafting claims, writing detailed descriptions, writing different embodiments of the invention, describing inventive step etc…

This is one of the most important step in life cycle of a patent and a good patent application written by an experienced patent agent / attorney should survive not only through the examination phase till the grant of patent but also it should survive the commercialization phase where actual money is made by licensing or selling patent rights, where competitors should not be able to work around your patent. Writing such patent application is a skill and that’s what explained in detail in our section on “Preparing patent application (patent drafting)” in “working with patent agent or attorney”

 

Responsibilities

Inventor inventor in india answering questions by patent professional, identifying the inventive step and providing detailed disclosure if required. Review patent application.
Patent agent or attorney Patent agent or attorney in india writing patent application that provides maximum possible protection to invention, following all rules for writing patent application.
Patent office patent office  

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Costs: the professional fees for patent professional can range from Rs. 25,000 to Rs. 40,000 for patent drafting.

Time : the time required is about 8-15 working days

The outcome of this step:

The outcome of this patent drafting stage is :

  • A completed patent application that can be filed to patent office
  • A patent application well written by an experienced patent agent / attorney that survives through the examination phase, till the grant of patent and commercialization phase.

For more details check section on “ patent drafting or patent writing ”

Step 4 : Filing patent application

 

Filing patent application in to patent office:

Based on the readiness of your invention, the decision has to be made whether to go for provisional patent application or complete patent application. If you are not quite ready with complete invention and requires further research and development yet you don’t want to lose on priority date for filing patent application then going for provisional patent application is recommended.

There are many advantages for filing provisional patent application which are discussed in detail in a separate chapter about “filing patent application”

The patents are territorial in nature, so if you file patent in India, you are getting protection in India only. You cannot stop use of invention outside India then. Therefore, if you desire that your invention should be protected in multiple countries, depending on your preference of countries Different options, paths and strategies for filing patent application is to be adopted with the guidance of patent agent / attorney.

International patent application:

the details about patent filing is explained in sectionfiling patent application

 

Responsibilities

Inventor inventor in india reviewing patent application. Signing formalities like forms, (power of attorney) to submit along with the patent application.
Patent agent or attorney Patent agent or attorney in india preparing patent application for filing. Recommending best filing route and options for international patent application (if required). Submitting relevant forms and fees in prescribed manner
Patent office patent office

receive patent application and provide the receipt along with date and time of filing the patent application.

 

Costs: there is no professional fees for patent filing patent application (provided fees is paid for patentability search and patent drafting )

Government forms and fees: Relevant form for patent application is Form 1

There are many things needed to consider before giving an exact fees amount, as it depends on number of sheets in patent specification, number of claims etc. but below are approximate costing for this stage.

 

Individual inventors Small Entity Other than small entity
Application for grant of patent 1600 4000

8000

Time : the time required is less than 1 day (if filed online)

 

Step 5: Publication of application

Generally the application is automatically published after 18 months from the filing date. No fees or action is required by inventor. If you don’t want to wait till the expiry of 18 months, An early publication request can be made along with prescribed fees.

The early publication request can be made (optional step) with form 9 and by paying prescribed fess as per table below; in general the patent application is published within a month form request for early publication.

 

Responsibilities

Inventor inventor in india optional step of filing early publication request along with Form 9 and Fees.
Patent agent or attorney Patent agent or attorney in india optional step of filing early publication request along with Form 9 and Fees.
Patent office patent office

the patent application is automatically published or if requested early publication is done.

 

Government forms and fees:

Form 9. Remember, these is no fees for publication of application automatically after 18 months of filing date. The fees mentioned below is for optional step if you want to go for early publication request.

Individual inventors Small Entity Other than small entity

Request for early publication

2500 6250

12500

For more details check section on “ Steps and procedure and cost for getting patent in India 

Step 6: Request for examination (RFE)

The patent application is examined only after receiving request for examination that is RFE. The inventor / applicant need to file a request for examination (RFE) within 48 months of filing date or priority date. This RFE is made with form 18 and the government fees for the same is mentioned in table below.

Up on receiving this request the controller gives your patent application to a patent examiner who performs searches for checking patentability of the invention (as per patentability criteria’s). and then the examiner creates a first examination report FER of the patent application.

The first examination report submitted to controller by examiner generally contains prior arts (existing documents before the date of filing) which are similar to the claimed invention, and any objections raised regarding patentability requirements for the invention. Same examination report (with objections) is communicated to you (inventor) / patent applicant.

 

Responsibilities

Inventor inventor in india the patent agent or patent attorney makes request for examination on behalf of you. or request for Expedited examination with form 18 A if applicable
Patent agent or attorney Patent agent or attorney in india request for examination is submitted with Form 18 and Fees. or request for Expedited examination with form 18 A if applicable
Patent office patent office

receive request for examination and examiner check patent application for patentability and other criteria and generates First examination report

 

Government forms and fees:

Form 18. The fees for request for examination RFE is as below.

Individual inventors Small Entity Other than small entity
Request for examination 4000 10000

20000

For more details check section on “ Stages from filing to grant of patent in India 

Step 7: Response to objections

Majority of patent applicants (inventors) will receive some type of objections based on examination report. The best thing to do it analyze the examination report with patent agent / attorney and creating a response to the objections raised in the examination report. This is a chance for an inventor to communicate his novelty and non obviousness of the invention based on the kind of objections received.

You (as inventor) / applicant supposed to answer the objection raised within 12 months from the date on which the First examination report is forwarded to you.

The inventor and patent agent create and send a response to the objections that tries to prove to controller that his invention is indeed patentable and satisfies all patentability criteria’s.

Or optionally accepts the objections and amends the patent application as pointed out in First examination report.

If the controller is satisfied with the response to the objections or the amended patent application. Up on finding the patent application in order of grant, The patent is granted to you (inventor) / applicant as early as possible !!! with a seal of patent office and the date of grant is registered in register of patents.

 

Responsibilities

Inventor inventor in india help patent agent in technical matters of invention (If required) with drafting response for objections.
Patent agent or attorney Patent agent or attorney in india draft the response to objections raised with the help of inventor. Or amend the patent application accordingly. Request for hearing if desired.
Patent office patent office

receive response of objections and decide whether a hearing is needed and whether to grant patent or not

Professional Fees:

The patent agent /attorney may charge a professional fees to respond to objections based on complexity of the objections and number of objections received. The fees for response to objections varies from Rs. 6000 to Rs. 25000 depending up on complexity, subject matter and number of objections.

For more details check section on “ Stages from filing to grant of patent in India 

Step 8: Grant of patent

The application would be placed in order for grant once it is found to be meeting all patentability requirements. The patent is granted to you (inventor) / applicant as soon as possible with the seal form patent office and The grant of patent is notified in the patent journal which is published time to time.

 

Responsibilities

Inventor inventor in india patent is granted to you. As per section 48 you get right to exclude others from using, selling offering for sale, importing your patented invention
Patent agent or attorney Patent agent or attorney in india Inform inventor about procedures, renewals and communication to patent office after grant of patent
Patent office patent office

Grant the patent for invention or reject the patent based on response to objections raised. Notify grant of patent in patent journal.

For more details check section on grant of patent 

After Grant of patent and proceedings

  • what after Grant of patent
  • What rights you can practice on grant of patent
  • Different strategies to monetize your patent that is making money with your patent
  • Patent infringement
  • Patent enforcement
  • Patent renewals
  • Deciding about royalties or selling patent

check our detailed section on After Grant of patent and proceedings

video on Complete flow chart for innovative idea to granted patent in India

About 

Registered Patent Agent India (IN/PA 2352) with bachelors degree in electronics and telecommunication engineering. Working in patents and IPR field since 12+ years. associated with leading Intellectual Property firms in India Successfully helping inventors and businesses in securing their Intellectual Property Rights (IPR) including Patents, Trademarks, Designs & Copyrights along with Contract & Commercial Matters.