How can a Patent be filed

By | September 21, 2017

Patentability search:-

Before a patent application, it is important to conduct a patentability search in order to determine the invention is patentable or not. Patentability search includes an invention must be Novel, involve Inventive Step, Capable of being Industrial Application and should not be fall under non-patentable subject matter of Section-3 and Section-4 of Patents Act, 1970.

Filing of a patent application is a legal document to obtain a patent in India. A patent application has to be filed in a patent office as per the jurisdiction prescribed.

Who can apply for a patent?

Under Section-6 of the Patents Act, 1970, an application for an invention may be made by any of the following person;

  • 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;
  • Legal representative of any deceased true and first inventor or his/her assignee;

Where to file a patent application (Jurisdiction)?

There are four Indian Patent Office (IPO) for the purpose of facilitating the registration of patents in India i.e. Kolkata, Delhi, Mumbai, Chennai.

Jurisdiction of the patent office is to be decided by the following criteria:

  • Place of residence, domicile or business of the applicant.
  • The place from where the invention actually originated.
  • For a foreign applicant, the address for the service in India given by the applicant, when the applicant has no place or domicile in India.

Following are the four patent offices in India with territorial jurisdiction:-

Patent Office Territorial Jurisdiction
Delhi The State of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi, Territory of Chandigarh.
Kolkata Rest of India
Chennai The State of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territory of Pondicherry and Lakshadweep.
Mumbai The state of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, The Union Territories of Daman & Diu and Dadra & Nagar Haveli.

Following types of Patent Applications can be filed:-

  • Ordinary Application
  • Convention Application
  • PCT International Application
  • PCT National Phase Application
  • Application for Patent of Addition
  • Divisional Application

 Patent Application can be filed by the following two ways in Indian Patent Office (IPO):-

  • Offline Filing or Physical Filing
  • E-Filing

After the identification of patent office, filing needs to be done:-

Forms required at the time of filing:-

  • Form 1- Application for grant of patent
  • Form-2-Provisional/Complete specification
  • Form-3-Statement and Undertaking under Section-8(information pertaining to corresponding foreign applications)
  • Form-5-Declaration as to Inventorship
  • Form-26-Form for authorization of a patent agent/ or any person in a matter of proceeding under the Act.
  • Form-28-To be submitted by a small entity/startup (in case of small entity/startup)

Documents required at the time of filing:-

  • Declaration of Inventorship
  • Statement and Undertaking
  • Proof of right
  • Authorization of patent agent
  • Priority documents in case of Convention Application, PCT National Phase Application
  • Permission from the National Biodiversity Authority if the application pertains to a biological material.