Patent Prosecution in India includes the following stages:

1.     Filing of patent application

2.     Publication of patent application on request or after 18 months from date of filing or priority whichever earlier

3.     Filing of request for Examination within 31 months from date of application or priority whichever is earlier

4.     Issuance if First Examination Report containing all the objections to grant of patent for complying within 6 months from date of issuance of same

5.     Responding to the examination report and compliance within 6 months from date of issuance of examination report or within extended period of upto 3 months.

6.     Hearing with Controller, if requested within prescribed time

7.   Adjudication on/ Acceptance of patent application

11.   Grant of Letter Patent Document by Patent office 

Publication: The Patent applications in India are ordinarily published after 18 months from date of filing or priority whichever earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by Controller of Patents or Central Government. From the date of publication the applicant for patent has same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication of application subject to Indian Limitation Act.

Pre- Grant Opposition: From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application provided a request for examination has been filed. Thereupon, the patent shall not be granted until the opposition is set aside.

Examination:For substantive examination of the patent application in India a request for examination has to be filed within 31 months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction whichever is later. In case of divisional applications the request has to be made within periods stated above or within 6 months from date of filing of divisional application whichever is later.

It is possible to expedite examination of Patent Application in India.Now the expedited examination is possible for following cases:

• Where Indian is indicated as ISA or elected as IPEA in corresponding PCT Application
• If Applicant is start up
• If Applicant is small entity
• If Applicant/s is/are natural persons/ and at least one of them is female
• If Applicant is Govt Department
• If Applicant is an institution established by a Central, Provincial or state Act, and which is owned or controlled by the Govt.
• If Applicant is Govt company
• If Applicant is an institution wholly or substantially financed by the Govt.
• If invention pertains to a notified sector
• If there is an agreement with a foreign patent office and Applicant is eligible under such arrangement

There is no distinction between Indian or Foreign Applicant and the Rules are applicable to any foreign applicant too. The requisite documents have also been indicated where ever possible.

For last category, currently there is PPH (Patent Prosecution Highway) with Japan Patent office and only 100 applications are allowed to participate. Currently more than 75 applications have opted for same (one application can’t file more than 10 requests). 

Patent Grant:Once the applicant satisfies all the objections of the Examiner and complies with all the requirements under the Indian Patents Act and the Patents Rules, Letters Patent Documents is issued to the applicant.

Post Grant Opposition:In India patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.

Duration of Patent and Renewal:Duration of Patent in India is 20 years from date of filing in India for ordinary as well as conventional patent applications and for PCT national phase patent applications 20 years from date of filing of International PCT application. After grant of patent renewal fee has to be paid in respect of 3rd year onwards till the 20th year and must be paid before the expiration of respective years. The Pending Annuity as on date of Grant shall be paid within 3 months from the date of Grant. The patent shall be revoked if renewal fee is not paid in prescribed time and during the period between the revocation of patent till it is restored, the patentee cannot take any action against any infringement of patent by anyone.

Statement as to working of Patent in India: Now statement as to working of granted patent is to be filed for every 3 years.