Patent Filing in India - DIY Guide for Innovators
Our brain generates lot of ideas in our daily life that can bring enormous changes in the society. According to a research study it is found that only 6 percent of the ideas become commercially successful. The rest of the ideas are either dumped or are not commercially viable. Turning an innovative idea into a product is not an easy challenge. You have to do your market research, identify what your idea will bring to customers, prepare a business plan, and develop an MVP (minimum viable product). All of these tasks are challenging. The problem is even bigger if you don’t have the right skills or if you are working full time. Not having the proper support for even the best of ideas can kill them. This article acts as a DIY (do it yourself) guide for an innovator who can follow below steps to evaluate her/his idea and how to get a patent for same.
As per the World Intellectual Property Organization (WIPO), an idea or invention is novel/new if it was not known to the public before the date of filing of the patent application or the priority date claimed. Further, to get a patent of your idea, it should not be obvious to a person skilled in the art (Technician having all knowledge of the technical field of the invention).
First step after having an idea is to perform a search on free search engines like Google patents, lens.org, research scholar, science direct, etc. to check if any similar idea already exists. After performing an exhaustive search on available free patent and non-patent databases, if you don’t identify any prior art related to your idea, then it is possible that your idea is novel, and you can get intellectual property rights through a patent. In case you identify any prior art that is similar to your idea, then also you can further work on the idea to look for design arounds.
Although free databases have certain limitations in performing a comprehensive search (refer to link), they do help in evaluating the idea’s novelty. However, it is recommended to get a Novelty Search performed by a professional prior art searcher.
Once you find your idea/invention has more chances to be novel after the patentability/novelty search, you can file a provisional patent application. In provisional patent application, you need to submit Title, Background (Problem) and Summary (Broad description of how you are solving the problem and how it is different than the existing solutions). Indian Patent Office charges you INR 1,750/- and there are additional Forms like Form 1, 2 and 3 that also need to be submitted.
Form 1 – Form 1 is an application for grant of a patent. This application must be submitted within 6 months of filing the first application (provisional; or complete if you have directly filed complete specification.
This application includes various details related to applicant and inventor like address, email, contact no., etc. Therefore, this form needs to be filled with utmost care as any wrong information can create problems in communication between Indian patent office (IPO) and applicant. This form must be signed by all the inventors and applicants and any irrelevant portion of the form must be scored out.
Form 2 – This form is meant for submitting the specification of provisional application/ complete specification. In case of provisional specification, write ‘provisional specification’ in type of application section and mention title & names of applicants with address. Form 2 is a first page of your specification, followed by Title, Field of Invention, Background and Summary of your invention.
Please note that your complete specification should not deviate from the idea summarized in the provisional application like you are not allowed to add a feature that does not correlate with the idea shared in provisional application, otherwise your application can be rejected by an examiner, or it might become an easy cause of invalidation if you get grant of your patent.
Form 3 – This form is used to inform the IPO if you have filed any corresponding patent application outside India or not.
Please note that in case you are unable to fill the section within given space in the forms, don’t try to fill large amount of information within small space which is unreadable in fact add information by adding space like in case of more than 1 applicant, add a row for other applicants using MS word format.
If you are filling the form offline, then take care of adding space as per amount of information to be filled in MS word and then taking printouts. Further, try to fill the form neatly without using strikethroughs, only score out sections which are to be left blank.
This step of filing provisional application can be chosen either before approaching a prior art searcher for novelty/patentability identification or you can get a Non-Disclosure Agreement (NDA) signed with the prior art searcher and after identifying novelty/patentability, file a provisional application.
Provisional application format is an advantage to an inventor in following ways:
There is no need to provide Claims and full description of the invention, just summarize your invention and file it.
This format gives you an opportunity to work on your idea and submit the final application with claims or full specification within 1 year after filing provisional application without any chance of theft of your idea.
You get priority of your idea so that if your idea is novel, after filing provisional application no one else can claim your idea after your filing date.
This application format is cost-effective and allows you to file your patent application without breaking the bank.
You can use the term ‘Patent Pending’ in public domain and it is legally justified.
After filing provisional application, you need to file complete specification with Claims within 12 months from the date of filing provisional application. In non-provisional or complete specification, you need to provide claims, abstract, description in which claims are heart of a patent and you get patent on your claims. For drafting application, you can contact a patent drafting and filing firm that can help you in drafting your patent application and filing the same. You need to submit Form 2, 5 and 18 (If you have filed provisional application prior to complete specification else you need to include Form 1 and 3 also).
Note: You can directly file non-provisional application without filing provisional application.
Form 2 – In complete specification, tick ‘complete specification’ in type of application and mention the Title & name of applicants with application number which you receive from the IPO after you file first application (Provisional or Non-provisional). Followed by Form 2, add Abstract, Description (with Field of Invention, Background, Summary and detailed description with respect to drawings), Claims and Drawings.
Claims should be started from separate page and same is the case with Drawings also otherwise your application will not be accepted. Refer rules of IPO while preparing complete specification including margin of page, line number, etc.
Form 5 – This form is a declaration of inventorship rights like who are the inventors of the patent application with their signatures.
Form 18 – This form is a request for examination for which IPO charges you INR 4,400. This form can be filed within 48 months from the priority date of your patent application. However, as early you file this form as earlier examination starts with further proceedings like First Examination Report (FER).
From the date of filing your application (from the date when you first filed your application like provisional filing date or non-provisional filing date), your patent application gets published on the IPO website within 18 months. However, if you want your patent application published within 1 month then you can file Form 9 also for INR 2500.
After you have filed a request for examination, your patent application will be examined, and you can get first examination report (FER) from the Indian Patent Office (IPO) in which an examiner can list some prior arts against your inventions or other objections. FER might seem annoying at the first instance to an inventor who has filed the patent for the first time. The FER is more like a query of an examiner in which you get time of 6 months after receiving FER on your registered E-mail ID to answer the queries. Most patent application get FER and if you are able to convince the examiner regarding novelty of your idea, you can have the patent granted. Even after filing response to FER, you might get other objections again from the Examiner and again you get timeframe to submit the response. There are various communication means for convincing the examiner like email, a telephonic interview, and/or face-to-face hearing. If everything goes well, you get the patent against your idea.
It is evident from the above discussion that prosecution plays the main role for the grant of a patent application. Thus, it is recommended to seek advice from experts that assist you at each step of prosecution because even the slightest mistake may result in rejection or abandonment of your patent application.
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