Patent Filing & Grant Procedures Pooja Shreepooja@selvamandselvam.inwww.selvamandselvam.com

Who can Apply?• Any person claiming to be the true and first

inventor of the invention;• Any person being the assignee of the person

claiming to be the true and first inventor in respect of the right to make such an application;

• Any legal representative of any deceased person who immediately before his death was entitled to make such application.

• An application may be made by any of the persons referred; either alone or jointly with other persons. (Section 6 of the Patent Act, 1970)

Where to Apply?

• The head office for Patent Administration in India is at Kolkata.

• Patent offices have 4 four branches based on territorial jurisdictions:

MUMBAI- The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli.

CHENNAI- The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep.

NEW DELHI- The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.

KOLKATA- The rest of India.

Patent Specification• The description of the invention is called specification.

• A provisional specification usually contains only a brief description of the invention and need not contain claims.• The complete specification contains the full description of the invention. It comprises of a title, field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract.• Complete specification must be filed within 12 months from the date of filing of the provisional specification.• Best case scenario for early stages in the research and development for an invention is to opt for provisional specifications.• Claims are a vital component in the patent specification as it is the legal operative part which defines and determines the legal protection sought for.

The Filing Procedure at a GlanceFiling patent application

Pre-Grant Publication

Early Publication Publication after 18 months

Request for Examination Examination Report

Objections Complied with

Response to Office Action

Patent Granted

Post-Grant Publication Renewal

How to Apply?• The procedure for the grant of a patent starts with

filing of the patent application along with the prescribed fees at the appropriate patent office.

• The pre-grant publication is generally done after 18 months from the date of filing of the patent application.

• But, there is a provision for early publication wherein by filing Form-9 along with prescribed fees the applicant can request an early publication before 18 months. (Section 11 A)

• Such application will be published within 1 month from date of request for early publication.

Request for Examination• The patent application will be examined only

after receiving request for examination. • The applicant or any other interested person

shall make a request for examination after the pre-grant publication and within 48 months from the date of filing the patent application.

Objections• The application shall be examined and a first

examination report stating the objections will be communicated to the applicant.

• A response to the objections raised in the examination report shall be filed by the applicant.

• The objections need to be complied with and accordingly the application ought to be amended.

• If the applicant does not comply with the objections within 12 months from date of examination report, the application shall be abandoned.

Grant of Patent• The application would be placed in

order for grant once the objections have been complied with and it is found to be meeting all patentability requirements.

• The grant of patent is notified in the patent journal which is published time to time. 

• At that time, oppositions may be filed on limited grounds, and hearing is not mandatory.

Post-Grant Opposition (Section 25(2))• After the patent is granted, the

application and other related documents will be open for public inspection.

• Thereafter, at any time after the grant but before the expiry of a period of 1 year from the date of publication, oppositions can be filed on substantive grounds.

• The constituted opposition board will hear and examine the matter and accordingly the patent will either be maintained or amended or revoked by order.

• The entire patent grant process generally takes at least 2 years.

Duration of Patent• The term of a patent is 20 years from the date

of filing the patent application.• A patent is required to be maintained by paying

annuity fees. If not paid, the patent will cease.

If you have any questions, feedback or suggestions please do write to me: pooja@selvamandselvam.in