How to go about patent filing in India: All you need to know (2024)

Intellectual Property has always played an increasingly significant role in today’s technology-driven society. Patents are an important asset for an organization. Hence, the innovative strength of an organization can be measured through its patenting activities. Not just the number of patents, it's also the quality of patents that makes the corporation more demanding. Grant of a patent is a long process that entails multiple checks on novelty, non- obviousness, and industrial applicability of the invention.

A patent, granted by the government, gives an exclusive right to an inventor to make, use, and sell his invention. This exclusive right is for a limited period of 20 years from the date of filing. The fundamental idea is to safeguard the inventions that are created and therefore, encourage more developments. Let us look into the steps involved in a patent filing in India.

Step 1: Conceiving your Invention
This is the first step for an inventor who wants to go ahead with his or her invention. It is important to collect as much information as possible. Some of the pertinent questions that the inventor must think through are: what is the field of the invention, what are the advantages, how will it help in improving already existing solutions? Not all inventions are patentable subject matter. Section 3 of the Patents Act provides those subject matter which are not patentable. Therefore, while conceiving, the inventor must be clear that the invention does not fall under any of such categories which are not patentable.

Step 2: Patent Search and Drafting
After getting clarity over the invention, the inventor must do a patentability search. This is important since it will help in understanding whether the invention is novel or not. All inventions must meet the novelty criteria under the Patents Act. The patentability opinion can be examined upon conducting an extensive search and forming a patentability report. The patentability search identifies the closest possible prior arts (known to the public) relating to the invention and based on the results obtained, an opinion about the patentability of that invention may be provided which can be positive, negative, or neutral. Nevertheless, one can choose to directly file the application, but a patentability search is highly recommended.

The next step which follows is effective drafting of the patent application. The application consists of various parts such as Claims, Background, Description, Drawing (if any), Abstract, and Summary. All such parts must be carefully drafted to provide effective disclosure of the invention. It is advised that utmost care and precision must be taken while drafting the application.

Step 3- Filing the Patent Application
This is where the actual process starts. After drafting the patent application, this can be filed in the government patent office as per the application form in Form 1. A receipt would be generated with the patent application number. One can also file a provisional patent application, in case; the invention is at an early stage under Form 2. The benefit of filing a provisional application is that one can secure a prior date of filing which is crucial in the patent world. Also, one gets 12 months to file the complete specification. In the case of start-ups and small entities, the application form in Form 28 must be used to file for patents.

Step 4- Publication of the Application

After filing the complete specification, the application is published after 18 months from the date of filing. There is no need for any special requirement from the applicant for publication. In case, the applicant does not want to wait till the expiry of 18 months, an early publication request can be made along with prescribed fees by filing Form 9. Generally, the patent application is published within one month from the request of early publication.

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Rule 24 of the Patent Rules 2003- The period for which an application for patent shall not ordinarily be open to the public under sub-section (1) of section 11A shall be eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier. Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of the request for publication under rule 24A.

Rule 24A- A request for publication under sub-section (2) of section 11 A shall be made in Form 9. After publication, any person may oppose the grant of a patent by way of the pre-grant opposition. Section 25(1) of the Patents Act 1970 states that where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of a patent on the grounds stated in Sections 25(1)(a) to (k). This is known as pre-grant opposition. The controller can decide on the merits and can notify the applicant regarding the opposition, after which the applicant needs to submit his or her reply, and a subsequent decision can be taken thereof.

Step 5- Request for Examination
Unlike the publication, the examination is not an automatic process and the applicant is required to request the patent office to examine the patent application. The normal request must be filed within 48 months from the date of filing of an application, under Form 18. Upon such request, the controller gives the application to a patent examiner who examines it with different patentability criteria, which are novelty, non-obviousness or inventive step, and capable of industrial applicability thereby, providing the applicant with the First Examination Report (FER). The applicant can also file a request for expedited examination of the application under Form 18A. Rule 24C- An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or (b) that the applicant is a startup.

Step 6- Respond to the Objections
The applicant needs to respond to the objection received from the patent office by way of the First Examination Report. The applicant is expected to file a written response to the objection raised in the examination report. The applicant can prove the patentability of the invention and try negating the entire objection being raised. Physical hearing or video conferencing can also be requested, as the case may be.

Step 7- Grant of Patent
After addressing all objections, the application would be placed for a grant once it is found to be meeting all patentability requirements, and finally, the patent will be granted to the applicant. The grant of a patent is notified in the patent journal which is published from time to time.

Any person interested may file a post-grant opposition within 12 months from the date of publication of the grant of patents, by providing a notice of opposition to the controller. Section 25(2) of the Patents Act 1970 states that at any time after the grant of patent, but before the expiry of a period of one year from the date of publication of the grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds stated in Sections 25(2)(a) to (k).

(The writer is an Associate with Khurana & Khurana Advocates and IP Attorneys, a leading IP and Commercial law firm in India with presence internationally across countries.)