Patent Prosecution in India: Part 1 of 3

Patent Prosecution in India: Part 1 of 3

In this three-part series on “Patent Prosecution in India,” we hope to provide you with important information to consider when seeking patent protection in India.  In part one of the series, our colleagues at Kan and Krishme have shared a handy chart outlining the filing requirements in India vs. the United States:

  INDIA U.S.A.
Priority Document Due at the time of the application filing or three months from the invitation from the patent office. Due within four months from the date of actual filing or within 16 months from the filing date of the prior foreign application.
Translation Verified English translation is a mandatory requirement of the priority document. It should be filed in the Indian Patent Office with the patent application or within three months of the date of invitation from the Indian Patent Office.

Foreign language application is allowed.

An English translation can be submitted later.

 

Assignment document 

(between inventor and Applicant)

Mandatory requirement when the inventor has assigned the rights to the Applicant at the time of national phase entry.

The said document should be filed within six months of the filing deadline in the country.

Only the inventor(s) can be the Applicant.

 

Power of Attorney Mandatory requirement.

Executed Declaration and Power of Attorney is required.

 

Request for Examination Must be made within 48 months from the priority date/ date of filing, whichever is earlier.

All of the application shall be examined. When the application is filed, the official fee for the examination is paid.

 

Time limits for response to communications from the examiner A period specified by India Patents Act is 12 months from the date of issuance of the first examination report.

A shortened statutory period for reply is set to expire three months or 30 days, whichever is longer, from the mailing date of the communication to the Applicant.

Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may the reply be timely filed within six months from the mailing date of the communication.

Divisional Application

 

i) This type of application is often the result of a “restriction requirement” by an examiner, because a patent can only claim a single invention under 37 CFR 1.475 (Unity of Invention).

ii) It can be filed up to the grant date of the first mentioned application or parent application.

iii) In India, a divisional application out of divisional cannot be filed.

i) If two or more independent and distinct inventions are claimed in one application, the application is restricted to one of the inventions. Then, a divisional application may be filed.

ii) A divisional application out of divisional can be filed.

 

Patent of Addition

 

Can be filed for some improvements or enhancements in the invention.

 

Continuation, in part, can be filed for enhancements or improvements in the invention.

 

Amendments to claims/specification

 

Can be filed up to grant date and after the grant of the patent.

 

Can be filed before and after first office action.

 

Filing of details of corresponding foreign applications

 

Should be filed within six months from the date of filing of the application.

Information disclosure statement obligated as far as application is pending.

 

Foreign Filing License

 

No resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of the patent.

US Residents must obtain a foreign filing license before filing a patent application in any foreign country. This can be done by filing a petition.

The license is usually granted 6 months from the filing date.

Opposition

Pre-grant Opposition: Can occur from the date of publication until granted date

Post-grant Opposition: Can occur after the granted date but before the expiry of the period of one year from the date of publication of granted date

No provision of pre-grant opposition.

Post-grant Opposition:

i) Exists in the form of re-examination.

ii) Can be filed by anyone at any time during the enforceability of patent.

iii) Prescribed fee is required.

 

For additional information on patenting in India, or any other PCT country in the inovia agent network, download our free PCT e-kit here. Be sure to check back tomorrow for part two of our series, “Patent Prosecution in India.”