Patent Registration Process in India

Protecting your invention through a patent is a critical step in safeguarding your intellectual property. Whether you're filing an Ordinary Indian Patent Application, a PCT National Phase Application, or a Convention Application, understanding the registration process, timelines, and required documents is essential. This blog provides a detailed, stage-wise explanation of the Indian patent registration process, with a focus on both Indian and international applicants.

Types of Patent Applications in India

1. Ordinary Indian Patent Application

• Filed directly in India without claiming any priority from earlier applications.
• Provisional Specification can be filed initially to secure a priority date, followed by a Complete Specification within 12 months.

2. PCT National Phase Application

• Filed by international applicants entering the Indian national phase of a Patent Cooperation Treaty (PCT) application.
• Provisional Specification is not permitted; a Complete Specification must be submitted.
• Priority documents and the International Search Report (ISR) are required.

3. Convention Application

• Filed in India by applicants who have already filed a patent application in a convention country (under the Paris Convention) within 12 months.
• Provisional Specification is not permitted; a Complete Specification must be submitted.
• Certified copies of the priority document are mandatory.

Step-by-Step Patent Registration Process

Step 1: Patentability Search (Optional but Recommended)

Conduct a patentability search to ensure your invention is novel, inventive, and industrially applicable.

• Timeline: 1-2 weeks
• Documents Required: Brief description of the invention, drawings (if any)

Step 2: Drafting and Filing the Patent Application

This is the first official step in protecting your invention.

Documents Required:

• For All Applications:
  • Form-1: Application for Grant of Patent
  • Form-2: Complete or Provisional Specification (Provisional allowed only for Ordinary Applications)
  • Form-3: Statement and Undertaking regarding Foreign Applications
  • Form-5: Declaration of Inventorship
  • Form-9: Request for Publication (optional, to expedite publication)
  • Abstract and Drawings (if applicable)
  • Power of Attorney (if filed through a patent agent)
• For PCT and Convention Applications:
  • Certified Priority Document
  • International Search Report (ISR) for PCT applications
  • English translations (if priority documents are in a non-English language)

Timelines:

• Ordinary Applications: Provisional Specification filing grants a 12-month period to file the Complete Specification.
• PCT and Convention Applications: Filing the Complete Specification is mandatory at the outset.

Step 3: Publication of the Patent Application

Patent applications are published in the Patent Journal 18 months from the priority date. For faster publication, applicants can file Form-9.

• Timeline: 18 months (ordinary process) or 1 month (with Form-9)
• Documents Required: Form-9 (if opting for early publication)

Step 4: Examination of the Application

The application is scrutinized for compliance with patentability criteria.

Options for Requesting Examination:

1. Ordinary Examination (Form-18):
   • Applicants must file Form-18 to request an examination.
   • Examination proceeds in the order of requests received.
2. Expedited Examination (Form-18A):
   • Available for specific categories of applicants, such as:
     • Startups
     • Small Entities
     • Women Applicants (individuals)
     • Indian applicants electing India as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) in their PCT application.
     • Government Entity and Govt. funded companies
     • Patent applications applied under some international agreement.
   • Benefits: Significantly faster processing of the First Examination Report (FER).
3. Express Examination:
   • Specifically available for PCT National Phase Applications.
   • Enables accelerated processing before expiry of 31 months from the priority date.

Timeline:

• Ordinary Examination: FER issued within 6-9 months of Form-18 filing.
• Expedited Examination: FER issued within 1-3 months of Form-18A filing.
• Express Examination: Timelines depend on case-specific prioritization.

Documents Required:

• Form-18 or Form-18A
• Proof of eligibility for expedited examination (if applicable)

Step 5: Responding to Examination Report

Applicants must address objections raised in the FER within 6 months (extendable by 3 months).

• Timeline: Up to 9 months
• Documents Required: Reply to FER, amended claims/specifications (if required)

Step 6: Grant of Patent

If the examiner is satisfied with the responses, the patent is granted and published in the Patent Journal.

• Timeline: Typically within 1-2 months after acceptance of responses.
• Documents Required: No additional documents required at this stage.

Timelines at a Glance

Key Considerations for International Applicants

• PCT National Phase Deadline: 31 months from the international filing date.
• Convention Application Deadline: 12 months from the priority date.
• Priority Documents: Certified priority documents (and translations if necessary) are mandatory for both PCT and Convention Applications.

Conclusion

The Indian patent registration process has distinct options and requirements for different types of applicants. Expedited Examination (Form-18A) is a strategic choice for startups, small entities, women applicants, and others seeking faster processing. Express Examination offers a further acceleration for PCT applicants. Understanding these options can help you tailor your approach to the specific needs of your invention.

For professional assistance with drafting, filing, or managing your patent application, connect with Intellect Bastion, your reliable partner in intellectual property rights.

Visit Intellect Bastion or contact us directly for expert guidance.

Industrial Design Registration Process in India

Industrial design registration safeguards the visual or aesthetic features of a product, such as its shape, configuration, pattern, or ornamentation. It ensures exclusive rights to the design, preventing unauthorized replication or imitation. This guide provides a comprehensive overview of the industrial design registration process in India, catering to both domestic applicants and international applicants seeking protection.

What is an Industrial Design?

An industrial design refers to the ornamental or aesthetic aspects of a product, such as its:

• Shape
• Configuration
• Pattern
• Composition of colors or lines applied to an article.

Key Criteria for Registration:

• Novelty: The design must be new or original.
• Visual Appeal: The design should be applied to an article and be visible during regular use.
• Non-functional: The design must not serve a functional purpose but should enhance the product's appearance.

Who Can Apply for Design Registration?

The following entities are eligible:

• Indian Applicants: Individuals, companies, or organizations seeking exclusive protection in India.
• International Applicants: Applicants from countries under the Paris Convention or World Trade Organization (WTO) seeking protection in India.

Types of Applications

1. Ordinary Applications

Filed by applicants directly with the Design Office in India.

2. Convention Applications

Filed in India by claiming priority from an earlier application in a convention country. The priority must be claimed within 6 months of the earlier filing date.

Step-by-Step Design Registration Process

Step 1: Conduct a Design Search (Optional but Recommended)

Before filing, it is advisable to conduct a search to ensure that the design is not already registered.

Documents Required:

• A clear representation of the design (images or drawings).
• Class details of the article (as per the Locarno Classification).

Timeline: 1-2 days

Step 2: Filing the Design Application

The application must be filed with the Controller General of Patents, Designs, and Trade Marks (CGPDTM) along with all necessary documents.

Forms to Use:

• Form-1: For application submission.
• Form-21: Power of Attorney (if filed through an agent).

Documents Required:

1. Representations of the Design: High-quality drawings or images showing all views.
2. Class and Sub-class Information: Based on the Locarno Classification.
3. Applicant Details: Name, address, and nationality.
4. Priority Documents: For Convention Applications (certified copies required).
5. Power of Attorney: If filed through an attorney.

Timeline: Immediate acknowledgment upon filing.

Step 3: Examination of the Application

The application undergoes examination to verify compliance with the Designs Act, 2000. The examiner checks for novelty, originality, and applicability to the specified article.

Possible Outcomes:

• Accepted: The design proceeds to registration.
• Objections Raised: The applicant must respond to the objections with appropriate justifications or amendments.

Timeline: 1-2 months

Documents Required (if objections are raised):

• Reply to the examination report.
• Revised representations, if applicable.

Step 4: Registration of Design

If the application passes examination or objections are resolved, the design is registered, and a Certificate of Registration is issued.

Timeline: 2-3 months

Documents Required: None (certificate issued automatically).

Step 5: Publication in the Official Journal

The registered design is published in the Official Design Journal, making it public knowledge and open to opposition.

Timeline: Published shortly after registration.

Step 6: Renewal of Design

The registration is initially valid for 10 years and can be renewed for an additional 5 years by filing a renewal application.

Forms to Use:

• Form-3: For renewal application.

Timeline: Renewal must be filed before the expiration of the initial term.

Timelines at a Glance

Key Considerations for International Applicants

• Convention Priority: If claiming priority from a convention country, submit certified priority documents within 3 months of filing in India.
• Locarno Classification: Ensure the design aligns with the classification system used internationally.

Benefits of Design Registration

1. Exclusive Rights: Prevents unauthorized use or imitation of the design.
2. Market Differentiation: Enhances product appeal and marketability.
3. Legal Protection: Provides statutory rights to take action against infringement.
4. Asset Creation: Registered designs can be licensed, assigned, or sold.

Conclusion

The industrial design registration process in India is straightforward but requires attention to detail to ensure compliance. Domestic and international applicants must understand the requirements and adhere to the prescribed timelines for successful registration.

For professional assistance with design filing, prosecution, or strategy, reach out to Intellect Bastion, your trusted intellectual property partner.

Visit Intellect Bastion or contact us directly for expert guidance on protecting your industrial designs in India.