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When an applicant decides whether to file a patent in India with the Indian Patent Office (IPO), it is important to consider that an allowed set of US or European claims generally will overcome the first objection, however, it is not guaranteed.
In India applicant can claim Small entity or start-up status to lower the fees and there are certain criteria and documentary proof that need to be satisfied for claiming Small entity or Startup status in India.
For claiming small entity status:
Necessary documentary proof to substantiate the turnover and investment such as the Latest filed balance sheet, annual statement etc. to file with the Indian Patent Office.
For claiming a startup status:
1) a certificate evidencing the date of incorporation of the entity.
2) financial statements of the organization from the incorporation till date which would help in establishing that the gross amount of revenue is less than the threshold value.
3) If possible, any information/document evidencing that the organization/entity is working towards innovation, development, or improvement of products or processes or services, or if it is a scalable business model with a high potential of employment generation or wealth creation.
The national phase deadline in India is 31 months from the priority date.
Amendments such as those filed in the international phase before the ISA or IPEA are only allowed at the time of National Phase entry in India. Therefore, the claims on record of PCT have to be filed. However, if the Applicant wishes to reduce the number of claims by way of deletion of claims, that is allowed. While deciding on the deletion of claims, the Applicant should keep in mind that the claims first filed in India define the scope of protection. Therefore, the re-addition of canceled claims at a later stage may get difficult and can be done only at the discretion of the Controller.
Any other voluntary amendment (such as mergers, the addition of words and claims or deletion of words, change in dependencies etc.) can only be pursued after National Phase entry.
Please note that the IPO released the guidelines for the implementation of the Bilateral PPH pilot project. However, currently the same is only between India and Japan; and is applicable for Patent applications that are initiated in the Office of the IPO or the JPO. Therefore, it is not possible to file a request for PPH in the matter, on the basis of the US-granted patent.
A request for the examination must be filed within 48 months from the priority date if claiming priority in India.
In a promising development and one of the most awaited ones, the Indian Patent Office website has been updated to allow extensions of up to six months for - National Phase entry and Request for examination deadlines.
Previously, there was some ambiguity surrounding the applicability of the extensions provided by the Patent (Amendment) Rules, 2024, notified by the Indian Ministry of Commerce and Industry on March 15, 2024. However, with the recent update of the e-portal, these previously non-extendible deadlines have now become extendible, as also indicated in our earlier newsletter, accessible here.
The key pointers are:
Deadlines for National Phase entry and request for examination are extendible/ delay condonable under Rule 138
The timeline prescribed for doing these acts can be extended or any delay can be condoned for a period of up to six months.
Said request can be filed any number of times before the expiry of the extended (six months) period.
Such request shall be made in Form 4
Extending the deadlines by a total of six months will incur an official fee of USD 3750 (Official fee of approximately USD 625 (INR 50,000) for each month’s extension).
Certain other tasks which are extendible under Rule 138 (as per the changes made on the e-filing module) are:
Extension for FER response submission u/r 24B(6) and u/r 24C(11) (recently updated on IPO’s portal)
Removal of objection under prior claiming (recently updated on IPO’s portal)
Time for the applicant to respond to notice under Rule 55(3) of pre-grant opposition
Notice of post-grant opposition
Filing opposition to post-patent amendments (recently updated on IPO’s portal)
Request to be heard in the matter of restoration of patent(recently updated on IPO’s portal)
Opposition to the restoration of patent (recently updated on IPO’s portal)
Payment of unpaid renewal fees upon restoration (recently updated on IPO’s portal
In the past, there has been considerable litigation over missed deadlines that were not extendable under the previous rules and the removal of such exceptions brings significant relief to applicants, albeit at a high cost.
If a divisional application is desired, then it must be filed before or at the time of paying the grant fee.
Please be apprised that a divisional application is maintainable in India only for a distinct invention disclosed in the parent application.
In this respect the current stance of the Indian Patent Office (IPO) is that divisional applications are filed in response to the examination reports which bring upon an objection regarding the lack of unity of inventions under Section 10 (5) of the Indian Patents Act, 1970. When filed suo moto, an objection on maintainability of the divisional application is raised in view of Section 16(1) of the Act, wherein the existence of plurality of inventions of the parent application which necessitated filing of the divisional application should be established to the Examiner during the prosecution of the divisional application.
In a case with no objection pertaining to lack of unity of invention raised, it is advisable to file a divisional application only if there is a possibility of explaining to the Examiner the existence of a plurality of inventions in the parent application which necessitated the filing of the divisional.
Furthermore, a divisional application must be filed before a decision is issued in respect of the parent application. Please note that as the IPO does not issue a Notice of Intention to Grant, the application may be granted as soon as we file written submissions in response to the hearing notice. Therefore, in case the Applicant wishes to file a voluntary divisional application, it is advisable to file the same before filing the written submissions, as in case the present application gets granted immediately after filing the written submissions, the Applicant would miss the opportunity to file a divisional application.
There is no official grant fee in India. Annual maintenance fees are applicable from the 3rd to 20th years and are due after completing the patent registration procedure.