Patent Registration in India Patent Procedure: Publication, Examination, Response, Opposition, Grant, Annuity Fee

The patent prosecution phase includes all the communications to and from the Indian Patent Office from the time of filing the patent application to grant of patent. After the patent grant, the patent will be in force only when the patentee pays the annuity fee regularly.

In the patent registration process, we provide end-to-end patent prosecution services that include a request for early publication, request for examination, preparing a response to examination report, pre-grant opposition, post-grant opposition, strategising amendments for maximising impact, attending hearings whenever required and tracking the application during examination till grant.

Our specialised team consisting of patent agents and patent attorneys has an understanding of the intrinsic values of the patent well as the experience of successfully handling patent prosecution and patent registration in India, and are fully acquainted with the legalities of patent prosecution procedures in India.

Request for early publication:

A patent application is published automatically in the official journal after 18 months from the date of filing or priority date of the filing. The patent application becomes a part of prior art after the publication. An applicant may request for early publication before the expiry of 18 months. There are merits and demerits of early publication of the application. We strategically advise our client and weigh the pros and cons of early publication of the application based on the client’s requirement. Contact now!

Request for examination:

A request for examination is important in patent registration and can be filed within 48 months from the date of filing or priority date of the filing. The request is generally made using a prescribed form along paying the examination fee. In case, the request is not filed within the prescribed time, then the patent application will be deemed to be withdrawn. After filing the request for examination, the controllers refers the application to the examiner. The request for examination can be filed after the publication of the application or along with the request for early publication or at the time of filing based on the need of clients. Further, the Applicant can file the expedited examination in India based on the eligibility. Contact now!

Response to examination report:

After the examination is conducted under section 12 and 13 of the Indian Patent Act 1970, the Patent Office will issue an examination report to the applicant, and the report may contain the objections related to formalities of application and patentability of invention in accordance with Indian Patent Act. Thereafter the applicant is required to comply with the requirements within 6 months from the date of the report. We, at Intepat, diligently analyse the objection raised in the examination report, and strategically draft the response based on the cited prior art, and amend the patent claims or specification if needed to comply the objections. Contact now!

Pre-grant opposition:

The pre-grant opposition under section 25(1) can be filed by any third party before the date of grant. An application of representation for opposition to the grant of a patent is filed in a prescribed form without any statutory fee. The grounds of opposition can include one or more grounds mentioned under the section 25(1), sub section (2), sub-section (3) of section 29, or section 8 of Indian Patent Act. The patent applicant may contest the opposition. We assist our client in preparing, drafting and filing the pre-grant opposition proceedings before patent registration in India. Contact now!

Post-grant opposition:

The post-grant opposition under section 25(2) can be filed by any third party at any time after the grant but before the expiry of 1 year from the date of publication of patent grant. A notice of opposition is filed in a prescribed form along with the prescribed fee. The grounds of opposition can include one or more grounds mentioned under the section 25(2), subsection (2), sub-section (3) of section 29, or section 8 of Indian Patent Act. The patentee may contest the opposition. We assist our client in preparing, drafting and filing the post-grant opposition proceedings after patent registration in India. Contact now!

Patent annuity fee:

The order of patent grant is given if all the requirements of the Patent Act are met. The term of a patent is 20 years from the date of filing or priority date of filing. However, the national phase PCT application in India, the term of the patent is 20 years from the International filing date. The annuity fee for patent has to be to be paid from 3rd year until 20th year from the filing date of application. We, at Intepat, will send an automatic reminder for making patent annuity fee within the timeline through our system, and assist our client in filing patent annuity fee of the patent. Contact now!

Statement and undertaking:

Filing a statement and undertaking under section (8) is a crucial step in the patent registration in India. The statement and undertaking are filed in a prescribed form without any statutory fee. The applicant needs to undertake that he would keep the Controller informed in writing about the details regarding corresponding applications for patents filed outside India from time to time. We, at Intepat, will send an automatic reminder to provide the corresponding foreign patent filing details and submit the statement within the prescribed timeline. Contact now!

Statement of working of patent:

After a grant of a patent, filing a statement of working of the patent is mandatory and significant in patent registration in India process and it needs to be submitted to the Controller every year. The statement of working of the patent is filed in a prescribed form along with the details of working of the patent without any statutory fee. Failure to submit the information of working is punishable and it can attract a hefty fine up to INR10 Lacs. We, at Intepat, will send an automatic reminder for filing such statement within the timeline through our system, and assist our client in preparing and filing the statement of working of a patent. Contact now!

Obtaining certified copy:

There are instance to obtain the certified copy of patent documents from Indian patent office, as it may be required for legal proceeding or may require submitting the certified copy application to International bureau of WIPO, or may require to the submit the certified copy of application to the patent offices where conventional application is filed by claiming the priority of Indian application. We assist our client in preparing, file and obtaining the certified copy of patent documents in India for further processing. Contact now!

Obtaining foreign filing licence:

A request for permission for making patent application outside India is filed in a prescribed form along with the prescribed fee to obtain a foreign filing licence. The foreign filing licence is a written permission obtained from the Patent Office India. In case, the Indian applicant wishes to file a patent application outside India without first filing in India, then it is an obligation for him to obtain the foreign filing licence from the Indian Patent Office. It is mandatory for Indian applicants to obtain the licence before filing a patent application outside India and failure to meet such requirement may lead to heavy penalties. Therefore, we take diligent measure while filing a patent application outside India for our clients, and we assist our client in obtaining the foreign filing licence before filing outside India.

Alternatively, without obtaining the licence, an Indian applicant can file a patent application first in India, and thereafter can file the same application outside India only after 6 weeks from the date of filing of Indian application. Contact now!

Amendment of patent application and patent:

According to the section (57) of Indian Patent Act 1970, an applicant or patentee can file a request for amendment of an application or a complete specification or any documents relating thereto. The amendment for the application or patent can be filed at any time before or after a grant of the patent.

There are instances where the applicant or patentee may wish to transfer the patent rights to another person or may wish to include additional inventor(s) as the case may be. Further, there may be a need to change the applicant name or address or service address.

Before examination of the application, the applicant may wish to amend the specification or claims within the scope of the invention or may need to amend the same to overcome the objections during the examination. After a grant of the patent, the amendment can be requested for specification or claims or inclusion test results or details of the prototype, however, the amendment should fall within the scope of the original specification and/or claims. We, at Intepat, assist our client in filing the amendment of application or patent after the diligent review of the request.

For more information on patent registration and prosecution services, please send us your request using the below simple form and write to us at contact@intepat.com