When filing a patent application in India, several documents and information are required to be submitted before the Indian Patent Office (IPO). To begin with, a provisional or complete specification in either English or Hindi must be filed along with the application. Applicants may choose to file a provisional application to lock in an earlier effective filing date, but its corresponding complete specification must be filed within 12 months of the provisional application, for it to be considered further. Drawings, if any, should be filed with the application as well. The timelines for submitting these documents are strict and absolute, and no extensions are available.
Details of Inventor/Applicant
The details of the inventor and applicant also need to be submitted with the application, such as the name, address and nationality of the inventor and the applicant. For the submission of these details, no extensions are available, but names of inventors may be added or amended subsequently by filing an appropriate request. Such a request can be filed by the original applicant or the inventor who wishes to be so added, singly or jointly. However, an affidavit shall be required from all the other inventors confirming the change.
Proof of Right
Where the inventor and the applicant are different persons, an assignment agreement, also known as a "Proof of Right" granting the applicant the right to file the patent application, must accompany the application. A six-month extension from the date of the application to submit this may be permissible at the discretion of the Controller of the IPO.
When filed by Patent Agent
The default filer of a patent application is the applicant/s and/or the inventor/s. Where there are multiple applicants or inventors, any one of these persons may file the application. If, as is often the case, the application is filed by a patent agent and not by the applicant/s or the inventor/s themselves, then a Power of Attorney (from the applicant/inventor in favour of the patent agent) also needs to be submitted within 3 months of the application date. An extension may be obtained by (i) filing a request for extension before this three-month period expires, or (ii) filing a petition for condonation of delay after the period expires. The grant of such an extension, however, is at the discretion of the Controller.
Details of corresponding patent applications filed abroad (Section 8)
As per Section 8 of the Indian Patents Act, 1970, details of corresponding applications filed in other countries must be submitted within 6 months of the date of filing the application in India. When corresponding applications are filed after the Indian application, their details must be provided in India within six months of their filing abroad.
An extension is allowable by filing a request before the expiry of the time limit or by filing a petition after the expiry of this time limit. This too, however, is at the discretion of the Controller.
National Phase Applications
A national phase application is the second of the two main phases for filing applications under the Patent Cooperation Treaty (PCT). The "national" phase follows the "international" phase if the applicant decides to pursue their application before the regional or national patent offices to obtain protection locally. In national phase applications, a verified English translation of the PCT application is required. (For a detailed explanation of different kinds of application, see here: https://www.obhanandassociates.com/blog/types-of-patent-applications-in-india/) The applicants appointed patent agent can verify the English translation of the PCT application on behalf of the applicant and this needs to be submitted within 31 months of the priority date. No extensions are permitted.
A priority document refers to the earlier filed patent application that forms the basis of claiming a priority date in India. A certified copy of the priority document needs to be submitted within three months from the date of the communication by the IPO of such requirement.
If the priority document is not in English, then its English translation verified by a translator must be submitted for the national phase application, in the following instances:
- When the validity of the priority claim is necessary to determine if the invention concerned is patentable, or
- When the international application filed prior to the national phase application was incomplete and the applicant claims that the missing information was fully contained in the priority document, within three months from the date of communication by the IPO of such requirement.
For all other instances where documents are not in English, the English translation may be required as per the Controller's discretion.
A convention application is an application for a patent filed at the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries. (For a detailed explanation on convention applications, see here: https://www.obhanandassociates.com/blog/types-of-patent-applications-in-india/) In convention applications, a certified copy of the priority document must be submitted. This must be filed within three months from the date of communication by the IPO of such requirement. No extension is permissible. If the priority document is not in English, then its English translation verified by a certified translator should be submitted within the same time frame (see previous section).
Start-up or Small Entity
If an applicant is filing under the category of a start-up or a small entity, proof of its status as a start-up or small entity must accompany the application. (For more information on start-ups and small entities, see here: https://www.obhanandassociates.com/blog/patent-applicants-in-india-special-privileges-for-start-ups-and-small-entities/) There are no extensions available for the submission of the proof of status
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