Many inventors and organization looking to file patent in India needs to understand various steps and stages involved in it’s procedure. Here we will be talking about these stages one by one:
1. Patentability/Prior Art Search – This is the first stage. The prior art search is done to know the various relevant prior arts with respect to the invention. A prior art search is done to analyse the patentability of an invention. It is always needed and has to be performed by the inventor himself or by the attorney or agent (preferred). This stage guides a way of drafting the patent application in a manner that it can withstand the examination procedure and get the grant. The prior art search increases the chances of enforcing the patent during an invalidation or infringement case. The normal charge presented by the attorneys to their clients is INR 15000-50000.
2. Patent Drafting – The second stage is the patent drafting stage. In this stage the patent application is drafted in techno-legal format applicable as per the rule and acts. The drafting should be done by an expert i.e. an experienced patent agent or attorney because once drafted and filed, the patent application cannot be amended (atleast the specification). So to ensure a grantable and enforceable patent application an inventor should put the cost aside and seek the help of an experienced patent drafter for drafting the application (in case the inventor has previous experience of drafting patent applications then he or she can do it of own). The normal charge presented by the attorneys for this purpose to their clients is INR 25,000-100,000.
3. Patent Filing – In this stage, the inventor has to fill official forms and power of authority (if attorney/agent services are taken). Also if inventor has only idea or a semi developed intellectually property then he should register a Provisional Patent Application (PPA) and before completion of one year duration from the date of filing of Provisional Application, he/she should file a Complete Specification with all the final detail about the product/intellect.
OR, The inventor can directly file the complete specification if he/she has fully developed product/intellect with him/her.
The first filing date achieved through filing either PPA or complete specification is said as Priority Date. This date is most important in life of patent as in case of invalidation, infringement, prosecution and litigation, the prior arts or references cited with priority one year preceding of the currently discussed priority date.
4.Patent Publication – The publication usually takes place after 18 months from the filing date. The publication happens automatically after the completion of 18 months. The patent application is published in the patent journal of the patent office. The inventor can also apply for early publication which enables him or her to get the application published in just 2 months from the priority date. This reduces the 18 month time duration to just 2 months and the patent application enters into examination stage.
5. Pre-Grant Opposition – Section 25(1) of the Indian patent (Amendment) Act 2005 provides a provision for filing a pre-grant opposition against a patent application. Under this provision any person, any third party or the Government may challenge the application of grant of patent and inform to the controller of Patents of the opposition, in writing against the grant of a patent after the application for a patent has been published and/but before the grant of the patent.
6. Patent Examination –A request for examination has to be filed by the applicant or his agent or any interested party within 48 months from the date of priority or filing, whichever is earlier. Patent examination is a multi-step procedure and it may take 6 months to 2 years to get a grant. The request for examination is filed on form 18 in India. The applicant received an FER (first examination report). The FER comprises various objections/rejection, if the patent application is not in accordance with the norms patent act and rules. A reply has to be filed within 6 months from the generation of FER. The controller calls for an hearing if still the objection are pending.
7. Patent Grant – After the patent is successfully prosecuted, a grant certificate is issued from the patent office.
8. Post grant opposition – After the grant, the patent application is open for opposition for a time period of 12 months. This is called as post-grant opposition. The patent is valid till that time.
After that the inventor has to pay annuity fee for 20 years to keep his/her patent alive and afloat.
If you are an inventor or an organization who wants to protect/register their IP, a consultant like us (ANS IP – www.ansipms.com) would undergo the basic procedure of signing an NDA.
Signing of an NDA – If the inventor is going for a patent procedure through a patent agent or attorney, then he or she must in enter into a strong NDA with the receiving party (patent agent or attorney or an IPR firm). This always ensures secrecy of IP and avoids information leaks during a patent registration procedure.