PART 2 OF 8

Patent Filing Procedures

Hands-on patent filing at Indian Patent Office with Forms 1, 2, 3, 5 and prosecution workflow

1. Overview of Indian Patent Office

The Indian Patent Office (IPO) operates under the Controller General of Patents, Designs and Trademarks. Patent applications can be filed at any of the four patent offices located in Kolkata, Delhi, Mumbai, and Chennai, with jurisdiction determined by the applicant's residence or place of business.

Patent Office Jurisdictions

Kolkata: West Bengal, Odisha, Bihar, Jharkhand, NE States, A&N Islands

Delhi: Delhi, UP, Punjab, Haryana, HP, J&K, Rajasthan, Uttarakhand, Chandigarh

Mumbai: Maharashtra, Gujarat, Goa, MP, Chhattisgarh, D&N Haveli, Daman & Diu

Chennai: TN, Kerala, AP, Telangana, Karnataka, Puducherry, Lakshadweep

2. Types of Patent Applications

Application Type Description Key Considerations
Ordinary Application Fresh application without claiming priority Complete specification required within 12 months if filed with provisional
Convention Application Claims priority from foreign filing Must be filed within 12 months of first filing
PCT National Phase Entry from PCT international application 31 months from priority date; Form 1A required
Divisional Application Divided from pending application Used when claims multiple inventions
Patent of Addition Improvement/modification to granted patent Tied to main patent term

3. Essential Patent Forms

FORM 1 Application for Grant of Patent

Applicant Details Name, address, nationality of all applicants
Title of Invention Concise, technical title describing the invention
Application Type Ordinary, Convention, PCT-NP, Divisional, Patent of Addition
Priority Claim Foreign filing details if claiming convention priority
Declaration Applicant is true and first inventor or assignee

FORM 2 Complete/Provisional Specification

Title Must match title in Form 1
Field of Invention Technical field to which invention relates
Background/Prior Art Description of existing technology and problems
Summary of Invention Brief overview of invention and its advantages
Detailed Description Complete disclosure enabling person skilled in art
Claims Define scope of protection sought (complete spec only)
Abstract 150-word summary for search purposes

FORM 3 Statement and Undertaking under Section 8

Foreign Applications Details of all corresponding foreign patent applications
Status Updates Undertaking to inform about foreign application status
Search Reports Submit search/examination reports from foreign offices
Filing Timeline Within 6 months of filing in India

FORM 5 Declaration as to Inventorship

Inventor Details Full name and address of each inventor
Derivation Statement How applicant derived right from inventor (if different)
Declaration Belief that named persons are true inventors

4. Patent Filing Process

1
Prior Art Search

Conduct comprehensive search of existing patents, publications, and products to assess novelty and inventive step before filing.

2
Prepare Specification

Draft provisional (if early filing needed) or complete specification with claims defining the scope of protection.

3
File Application

Submit Form 1, Form 2, Form 3, Form 5 with requisite fees through online e-Filing portal (ipindiaonline.gov.in).

4
Publication

Application published after 18 months from priority/filing date. Early publication possible on Form 9 with fee.

5
Request for Examination

File Form 18 within 48 months from priority date (mandatory - otherwise deemed withdrawn).

6
Examination

Controller issues First Examination Report (FER). Applicant must respond within 6 months.

7
Grant

If all objections resolved and no pre-grant opposition, patent granted and published in Patent Journal.

5. Patent Fees Structure

Form/Fee Type Natural Person Startup Others
Application (Form 1) Rs. 1,600 Rs. 4,000 Rs. 8,000
Complete Specification (30+ pages) +Rs. 320/page +Rs. 800/page +Rs. 1,600/page
Claims (11+ claims) Rs. 320/claim Rs. 800/claim Rs. 1,600/claim
Request for Examination (Form 18) Rs. 4,000 Rs. 10,000 Rs. 20,000
Early Publication (Form 9) Rs. 2,500 Rs. 6,250 Rs. 12,500

Startup Recognition

Startups recognized by DPIIT are eligible for 80% fee reduction in patent filing. Form 28 (Declaration of Startup) must be filed along with certificate of recognition.

6. Examination and Prosecution

First Examination Report (FER)

The FER may contain objections related to:

  • Formal Objections: Issues with forms, documents, or procedural requirements
  • Section 3 Objections: Subject matter not patentable (e.g., Section 3(k) for software)
  • Novelty Objections: Prior art citations showing lack of novelty
  • Inventive Step: Obvious over cited prior art
  • Sufficiency: Specification not enabling enough
  • Unity of Invention: Claims cover multiple distinct inventions

Response Strategy

  • Analyze all cited prior art documents thoroughly
  • Prepare detailed technical arguments distinguishing invention
  • Amend claims if necessary to overcome objections
  • File response within 6 months of FER date
  • Request hearing if complex issues require oral arguments

7. Key Deadlines

Action Deadline Consequence of Missing
Complete Specification (if provisional filed) 12 months from provisional Application deemed abandoned
Request for Examination 48 months from priority Application deemed withdrawn
Response to FER 6 months from FER Application deemed abandoned
Convention Application 12 months from first filing Priority claim lost
PCT National Phase Entry 31 months from priority Cannot enter India