Timelines in patent practice

OMS PATENT SERVICES PVT LTD

Timelines in Patent Practice

By: Rashmi Hegde


IntroductionIndian patent practice is full of meeting time deadlines.For every action there is a time limit. There is no action that does not have time limit.Time limits for various actions while prosecuting a patent application and also for post grant procedures have been either specifically provided in the Patents Act or prescribed through the Patents Rules. These time limits are required to be followed strictly by every person concerned.Each country follows its own predefined procedure of receiving patent applications, examining the applications and granting patents or rejecting patent grants. Based on the procedure followed by a patent office, the time required to have a patent granted to our invention can vary.


Application Filing“Patent filing” can be defined as a process of submitting an application in a patent office, requesting grant of patent to our invention.Four patent filing optionsFiling a provisional patent applicationFiling a complete patent application in our countryFiling a patent application in a foreign countryFiling a Patent Cooperation Treaty (PCT) application


Patent filing options


Indian Patenting Process Timeline


Different Forms

Filing a patent application in the Indian Patent Office is the first step towards securing a patent to our invention in India.

To file a patent application, a set of forms has to be submitted to the patent office.

The forms can be submitted online if we have a class 3 digital certificate. Alternatively, we can send true copies (hard copies) to the patent office. The patent office charges 10% additional fee if applications are filed offline.


To file a patent application, we will have to submit form 1, form 2, form 3 and form 5. Subsequent to filing these forms with the appropriate fees, we will receive a patent application number from the patent office. We can choose to file form 9 (optional) and form 18 along with filing a complete application or after filing a complete application.


Form 1- Application for Grant of Patent As the name suggests, this form is an application for grant of

patent in India. Has to be filed within 6 months from the date of filing. It includes following information. Name and address of the inventor(s) Name and address of the applicant(s) Priority details, if any Title of the invention Signature of the inventers Application number Patent agents signature


Form 2 – Provisional/Complete Specification

Form 2 is used to furnish our patent specification. The patent specification can be provisional or a complete patent specification depending on the type of patent application (provisional or complete) we are filing. If we are filing a provisional patent application, then we need to use the following preamble in the first page of Form 2: “The following specification describes the invention”

If we are filing a complete patent application, then we need use to the following preamble in the first page of Form 2: “The following specification particularly describes the invention and the manner in which it is to be performed”


Form 3 – Statement and Undertaking Under Section 8

Form 3 is used to furnish information/actions relating to patent applications filed in other countries for the current invention. Additionally, any information relating to the rights corresponding to the present patent application has to be furnished.


Form 9 – Request for Publication

If this form is not filed, then the patent specification will be published by the patent office after 18 months from the priority date.

By filing this form, we can generally have our patent specification published within 1 month from filing this form.

The patent rights start from the date of publication of the patent application (enforceable after grant of patent).


Form 18 – Request for Examination of Application for Patent

The patent office will not consider the patent application for examination unless this form is filed.

This form can be filed within 48 months from the priority date.

If we wish to expedite the patenting process, filing of form 9 and 18 at an early stage should be done.


Thank you

Timelines in patent practice

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