Once the inventor decides to protect his/her invention, the inventor needs to file a patent application for the invention, and this post attempts to throw some light on patent procedure in brief. Before getting into the actual procedure, it is important to know certain basic questions on patent filing.
What are the patentability criteria?
Before filing patent application, it is important to check whether your invention meets patentability criteria which are subject matter, novelty and inventive step. Not all inventions can be patented, as the Patent Act applies only to specific patentable subject matter . To know whether the invention satisfies the novelty and inventive step it is recommended to do a patent search before filing patent application. This is not mandatory but it is highly recommended as it gives the inventor a perfect idea of the chances of getting the grant.
Once the invention meets the patentability criteria, the inventor can go ahead with patent filing.
What is patent draft? Who can draft?
In order to file a patent application the most important factor is preparing a patent specification. Drafting the patent specification is highly skilled job as the patent application needs to be drafted in a clear way with detailed description of the invention as per the standard format of the Indian Patent Office.
The patent application may be drafted by the inventor himself, but it is advisable to take help of the professional for drafting patent application, as the grant for patent is based on the examination of the drafted patent application.
Once the patent specification is drafted the next step is to file a patent application. The patent application is accompanied with a set of forms which are submitted to the patent office.
Who can file a patent?
The patent application can be filed by the inventor or the patent agent or the patent attorney who represents the inventor.
Where to file a patent?
The patent application can be filed at any of the four offices in India located at Kolkata, New Delhi, Chennai and Mumbai. The appropriate patent office for filing is determined based on the applicant’s location such as where he/she resides, place of business, place where the invention is originated. The patent application can be filed online to the concerned patent office through IP India website.
Patent Filing Procedure
The patent filing procedure has a time constraint. The patent specification filed can be provisional or complete. If a provisional specification is filed first, then the complete specification needs to be filed at any time within 12 months from the provisional filing date (priority date). If the complete specification is not filed within the prescribed time window, the provisional application lapses.
Once the patent application is filed, the patent application is published within 18 months from the priority date. The inventor or the assignee needs to make request for examination of the patent application filed to the controller of Indian Patent Office within 48 months from the priority date.
Generally within 12 months from date of filing the request for examination, first examination report is issued by the Indian Patent Office and sent to the inventor or assignee. During the first examination stage, the examiner prepares the examination report incorporating all the objections related to the patent application. The objections are clearly mentioned for an inventor or assignee to understand. The first examination report may either be favourable or adverse to the inventor. If the report is adverse, it normally contains objections related to errors in forms or fees or any objections related to the patentability requirements. Once the first examination report is sent, the inventor or assignee needs to file a response within 6 months.
The inventor can draft a response by amending the application in order to overcome the objection raised in first examination report. Once the response is filed based on the response either second examination report is sent or the inventor is called for the hearing within 1 month from the date of receiving the first examination report. The patent may be granted or rejected based on that. Another possibility is that based on response to the first examination report, the grant or rejection of the patent application is decided. The inventor can also withdraw the patent application any time after filing of application and before grant of the patent application by filing a request for the same with the requisite fee.
It is advisable to take professional help to avoid any sort of hassle. At Ediplis Counsels, we offer a full range of patent-related services, which could be used by you to protect your invention.