8 things to know before filing a Patent in India

Vikram ThakurPatents0 Comments

Filing a patent in India - The legal requirements

The life of every patent starts with the filing of a patent application. Whether you are planning to file a patent yourself or not, you should be aware of two important steps which should ideally be accomplished even before deciding to file a patent and going through the 3 to 5 years long process of getting a patent granted.

  1. The first step is to decide if filing a patent is actually worth the investment. This step generally involves conducting a patentability search to find similar technologies and evaluating the chances of getting a patent granted.

The search helps to avoid instances where you may happen to file a patent over something which was already existing and end up losing a lot of money and time.

  1. The second step involves the preparation of a patent application. It is worthwhile to note that preparing or drafting a patent application is not an easy task as the patent application draft is a techno-legal document and the scope of protection is directly proportional to the quality of the patent specification drafted.

In our opinion, what a skilled draftsman brings to the table cannot be matched by doing it yourself. However, there could be factors like costs which may make it difficult for you to engage a patent expert. In the latter case, you should be prepared to do a lot of reading to ensure that you are doing justice to your patent application.

Note: Provisional patent filing in India starts as low as ₹2 3,999 ₹17,999 + govt. fees. (Request free quote)

This post will focus on 8 important things which each patent applicant should be aware of even before or during the patent preparation and filing process in India:

  1. Who can apply for a patent in India?
  2. Where can you file a patent?
  3. Patent filing modes – Electronic or physical
  4. Should you hire a patent agent / attorney or do it yourself?
  5. Language, paper size, fonts for patent filing in India
  6. Types of patent applications in India
  7. Term of a patent in India
  8. Cost of filing a patent application in India

1. Who is entitled to apply for a patent in India?

Under the Indian Patent Act (Section 6), an application for a patent in India can be made by:

  1. An inventor,
  2. An assignee, or
  3. A legal representative of a deceased person.

An application can also be made jointly by one or more of the aforementioned applicant types. An applicant can hence include individuals, companies, government agencies, universities, etc. as long as they can be classified as one of the three types mentioned above.

2. Jurisdiction for filing patent applications in India – Where to file?

Unlike many other countries where there is a single patent office in the entire country, there are 4 patent offices in India located at Kolkata, Mumbai, Delhi and Chennai. Each of the Indian patent offices have territorial jurisdiction which determines where the patent applicant needs to file their application.

You can’t simply file a patent application in any of the four patent offices. The appropriate patent office is determined according to the territorial limits where the applicant (or the first applicant in case of a joint applicants):

  • resides,
  • has domicile,
  • has a place of business, or
  • invention originally originated.

For applicants having no business place or domicile in India, the address for service in India (generally the patent agents address) will be used for determining the appropriate office.

Office Territorial Jurisdiction
Patent Office Branch, Mumbai The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli
Patent Office Branch, Chennai The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep, Telangana
Patent Office Branch, New Delhi The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Patent Office, Kolkata The rest of India.

3. Patent filing types in India

Once, the determination of the appropriate patent office has been made, the next stage is to submit your patent application. The patent application can be submitted via two modes in India:

  1. Electronic filing or the e-filing mode
  2. Physical filing or the paper filing mode

3.1 Electronic filing (e-filing) of patent applications in India

The e-filing mode has been taking prominence in terms of patent filings with more patent applicants / agents opting to use the e-filing system vis-à-vis the physical filing route.

Over the years, the Indian patent office has also been moving towards digitization of patent records and has been urging patent applicants / agents to use the e- filing platform, thereby eliminate errors while scanning physical records and making the process easier, faster and more efficient for both the patent applicants and the patent office.

In order to further incentivize online filings, the Indian patent office also notified that patent applicants will be required to pay an additional 10% government fee for physical filings. This subtle increase for physical filings has led to an effect whereby a lot of applicants are moving over to the e-filing system.

Traditionally, many patent firms used to physically file patent applications due to the online system not being very reliable and the need to not change long standing practices. The increase in fee for paper filings has led to a lot of firms now adopting the e-filing system in order to avoid charging their clients additional government fee.

Furthermore, the online system has become more reliable over the years and now even includes the option of filing other forms as well. The convenience of simply filling online beats the effort to prepare a form, submit to the office, pay and wait for receipt.

Moreover, patent applicants are not limited by the patent office timings and can practically file their applications at any time of the day. Further, the applicants located in other cities don’t have to travel anywhere and can practically do it easily online.

3.2 Physical filing (or paper filings)

Physical filings have traditionally been the way patents have been filed in India for decades. However, considering the advantages to applicants, patent agents and the patent office, the e-filing system is gaining more traction.

However, it may not be possible to completely eliminate the physical filing system completely. Many developed nations still allow for the physical filing system but the filing numbers will over the years are bound be reduce.

Also, not everything is currently available in the e-filing system and for some unique scenarios the applicants need to undertake requests physically at the Indian patent office.

4. Do It yourself or hire a patent agent / attorney

The next important question to ask is if you wish to prepare and file a patent application yourself or hire a patent firm with experienced patent agents or attorneys. It is an important question to answer and many factors including your budget will definitely determine whether you hire a patent expert or not.

However, it is certainly advisable to hire a patent expert to help you with the patent filing and prosecution till the final decision on grant is made.

Note: In case you are looking for skilled patent experts, we can connect you with premier patent firms and professionals suited for your business that too in your budget.

Some of the advantages of hiring an expert are outlined below:

4.1 Superior quality of the patent application

A patent application is not your typical filing where you prepare a simple form and file. The core of your patent application is the patent specification which contains the disclosure about your invention and is written in a techno-legal manner.

Drafting a patent specification takes time and has to be done in a manner to ensure that you are able to hopefully one day once the patent is granted, derive commercial advantage from your patent. The protection granted on a patent is based on the specification and more specifically based on the ‘Claims’ included in the specification. Improperly drafted specification can turn out to be a major difference between you making tons of money, versus competitors making a simple change to design around your patent. If patents are core to your business, doing it yourself may not be the best strategy.

4.2 Patent Deadline management by expert will give you peace of mind

Managing deadlines may seem like a simple task to do but it is absolutely not when we are talking about patent deadlines. Unlike other registration processes (like trademarks), where if you miss a deadline, you can refile your applications; the deadlines in patents are much more critical.

Consider an example where you have filed a new patent application. You get 12 months from your date of filing to file applications in foreign countries (if you are interested). Suppose you think of filing patent applications in other countries only after 2 years and are not aware of the 12-month deadline, you will be disappointed to note that the option of filing in foreign countries is lost and you have practically given out your possible patent rights in these countries for free.

In another example, let’s say that you have filed a new patent application in India. You are required to make a request for examination within 48 months from your filing date. If you fail to remember this deadline and don’t file the request for examination within the required time, you patent application will be considered to be abandoned and can’t be revived.

So, think hard if you can take such chances with your patent application. If your budget still doesn’t permit you to hire a patent agent, then make sure that you have all the deadlines researched out and you don’t end up missing on either of them.

4.3 Formulating your patent protection & strategy

If you or your company is of the innovative types and keeping coming up with new inventions, it is important to have a patent strategy and process in your organization to uncover inventions and strategically protect them for maximum commercial advantage.

Further, having a patent expert can also help to ensure that you or your company is not violating patent rights of third parties when launching your products or services in the market. Organizations are looking to file for patents for various reasons but they completely overlook the activity of ensuring that they themselves don’t violate anyone else’s patent rights. It is equally important to not violate others patents as it is to protect your invention.

To conclude, if you are serious about protecting your invention and / or not violating others patent rights and not be dreading to keep track of critical deadlines, you should definitely consider hiring a patent firm to help you navigate the complex world of patents.

5. Language, paper size, fonts for patent filing in India

The official languages for patent filings in India are English and Hindi. Majority of patent filings done in India are in English. However, the patent office has designated examiners who can examine the applications in Hindi as well.

If a patent application is filed in another country in that patent office’s official language (e.g. German, French, Chinese, Japanese, etc.), and a corresponding application is filed in India (either through the Paris Convention route or the PCT route), a translation would be required to be provided in either of the official languages in India.

All patent filings are to be done on a strong white A4 sheet paper on one side only.

All documents should be written or typewritten or printed in large and legible characters in non-script type font (e.g., Arial, Times Roman, or Courier) in a font size of 12 (preferably) with a line spacing of 1.5 to 2.

The documents should maintain a margin of 4 cm on the top and left hand part and 3 cm on the bottom and right hand part.

Criteria Guidelines
Paper type Strong white paper
Paper size A4
Page Print Single side printing
Font Non-script type font (e.g., Arial, Times Roman, or Courier)
Font size 12 preferably
Line Spacing 1.5 to 2
Margins Top – 4 cm, Left – 4 cm, Bottom – 3 cm, Right – 3 cm
Language English or Hindi

6. Types of patent applications in India

An applicant for a patent can file the following applications:

6.1 Ordinary patent application – The first application which is filed in India directly with the Indian Patent Office without claiming any priority is known as the ordinary application.

An ordinary patent application may contain two types of specification:

  • Provisional application – An ordinary patent application which is accompanied by a provisional specification is called as a provisional patent application.
  • Complete application – An ordinary patent application which is accompanied by a complete specification is called as a complete application. In other countries like USA, it is also known as a Non-provisional patent application.

6. 2 PCT application – The Patent Cooperation Treaty (PCT) allows for patent applicants to use the PCT system to file for patent protection in each of the PCT member countries (148 countries as of 10th May, 2016). The PCT system acts as an international filing route which provides the patent applicants time and cost advantage.

Under the PCT application system, two types of application can be filed, which are:

  • PCT International application – PCT International application is filed when the patent applicant wishes to protect their invention in multiple countries. Instead of filing a number of patent applications in each of the countries they are interested in, they can file a single PCT International application and reserve their right of seeking patent protection in each of the PCT member nations.

E.g. An Indian company filing a patent application in India may be interested in protecting their inventions in 10-20 countries. But instead of filing in all of those 20 countries within the 12 months’ period, the applicant may decide to file a PCT International application and reserve his right (designate all member countries) in all the other PCT member countries as well. Thus, they have more time to decide if they want to file in all the 20 countries or not.

  • PCT National phase application – Once, a PCT application has been filed and India is included as a designated country (included by default during the filing system), a PCT national phase application in India has to be filed within 31 months from the earlier of date of priority or international filing date.E.g. A patent applicant in Germany filed a PCT International application and now wishes to file a patent application in India while claiming priority from the German patent application. The applicant can file a PCT national phase application in India within 31 months.

6.3 Convention application – A convention application is a system of filing a patent application in another Paris convention member country by claiming the priority rights under Paris Convention. As of 10th May, 2016; there are 176 Paris Convention members.

Like the PCT system, patent applicants can file an ordinary patent application in India and then file a convention application in Paris convention member countries and vice versa. But we will be focussing on convention applications filed in India by claiming priority rights from another convention member country.

Also, every convention application filed in India has to be accompanied by a complete specification.

E.g. the patent applicant files the first patent application in Australia and then files a convention application in India claiming priority rights from their Australian patent application.

6.4 Divisional application – If a patent application includes more than one invention, the patent applicant on his own may divide the application or based on an objection by the examiner may have to divide the patent application to ensure each patent application contains a single invention.

6.5 Patent of Addition application – A Patent of addition is filed for inventions which are improvements or modifications of an earlier filed patent by the same applicant. The patent of addition application does not necessarily need to involve any inventive step.

7. Patent term in India

The term of a patent in India is 20 years from the date of filing of the applicant provided it is renewed every year. In case of a PCT applications, the term of the patent will be 20 years from the international filing date under PCT.

The renewal fee is payable only after the patent has been granted in India and is applicable from the second year onwards. In case the patent is granted later than two years from the date of filing, the fee is payable after the grant but all renewal fee accrued since the second year needs to be paid within three months (or within extended period of 9 months) from the date of recording of the patent in the register.

8. Cost of filing a patent application in India

The cost of filing a patent application varies based on the type of patent application being filed.

The standard government fees for electronic and physical filing of patent applications is:

Natural person (in ₹)

Small entity (in ₹) Large entity (in ₹)
Fee for application for a grant of patent 1,600 / 1,750 4,000 / 4,400 8,000 / 8,800
Each additional page fee (upto 30 pages free) 160 / 180 400 / 440 800 / 880
Each additional claim fee (upto 10 claims free) 320 / 350 800 / 880 1600 / 1750

Note: The above table includes electronic filing fee / physical filing filing.

If you are looking to file an ordinary patent application in India, you can view our post on the cost estimates for patent applications in India. The said post provides an estimation of all government and professional fees for all important actions involved during the entire patent process in India including drafting & filing, examination, etc.

With respect to filing convention applications in India, the patent applicants need to pay only the filing fees while entering India based on the type of applicant, as mentioned in the above table. Further, in addition to the government fee, if you are engaging a patent agent / firm, the patent firm will charge a professional fee which may vary anywhere between ₹5,000 to ₹15,000 depending on the patent firm chosen. However, if your original filing is in a language which is not the official language of the Indian patent office (English or Hindi), then you may have to factor in the cost of translation as well.

The cost of filing a PCT national phase application is similar to the cost estimate provided for convention application filing.

A patent applicant with have to pay a significantly higher fee in case of PCT patent filings. A PCT international application is always accompanied with a complete specification. Hence, all the costs regarding the drafting of the patent has been undertaken already. The cost applicable for e-filing of PCT international applications are estimated as follows:

Fee for PCT Application filing with IN as the RO (e-filing)
S. No. Description Official fee (approx.) Professional fee
1. Preparing and Filing a New PCT Application claiming priority from Indian Application (Each application) NIL ₹ 8,000 to ₹ 20,000
·       Transmittal Fee ₹ 3,250 (Natural person);
₹ 8,800 (Small entity);
₹ 17,600 (other than small entity)*
·       International Filing Fee for Specification Up to 30 Pages $1363
·       Over and Above 30 Pages Per Page $15
·       Filing priority Document (if priority is claimed) ₹ 5,500
2. Request for search (Select 1 from the list below) NIL NA
·       United States of America (US) $2,080
·       Austria (AT) $2,084
·       Australia (AU) $1,560
·       China (CN) $330
·       Europe (EP) $2,097
·       Sweden (SE) $2,097
·       India (IN) Rs. 2,500 (Individual); Rs. 10,000(other than individuals)

Note: Official fee, Bank charges, exchange rates, patent office handling charges and late payment fee may be additional.

Further reading: It can take an average of 3 to 5 years to get a patent granted in India. The steps involved in the process and timelines are provided here for reference.

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