What to expect when filing a patent in India?

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.

How to claim a different entity status when filing a patent in India?

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.

When to file an amendment for a patent in India?

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.

What are the PPH (Patent Proseuction Highway) requirements for a patent in India?

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.

When to file a divisional patent in India?

If a divisional application is desired, then it must be filed before or at the time of paying the grant fee.