Training Session: 1 Indian Patent Process: Study of Forms Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Presentation by
Aruna Mukundd

2. Types of Application
 Ordinary Application- without any claim for priority
made under any convention and without reference to
any other application
 Every application has to specify that the applicant is in
possession of the invention and shall also state the
name and address of the first and true inventor.

3.  The following documents must accompany an application:
 A. Provisional or Complete Specification in Form 2 and
drawings if any
 Statement and Undertaking regarding foreign filing details
in respect of the same or substantially same invention in
Form 3
 Declaration as to inventor ship in Form 5
 Power of Attorney, if application is made through a patent
agent
 Proof of right if the application is made by the assignee

4.  B. International/PCT Application: filed in
accordance with PCT
 Has to be filed within 31 months from the
international filing date
 Has to be accompanied by CS
 national phase entry cannot be postponed and the
non-compliance of the requirements would cause the
application to be treated as abandoned.

5.  C. Convention Application: A convention country
is any country which is a signatory or a party to an
international or bi-lateral treaty or convention or
arrangement to which India is a signatory or party
whereby privileges granted to their citizens are
likewise granted to Indian citizens.
 Convention application to be filed within 12
months from the date of filing a similar
application in the convention country.
 If any of the documents filed are in a foreign language,
translation of the document has to be submitted

6.  D. Application for Addition: enables the applicant to
apply for an improvement or modifications made on
the invention disclosed in the complete specification.
Improvement- must be more than a mere workshop
improvement.
 E. Divisional Application: an application divided out
of parent application
 Applicants, at their own request, before the grant of
patent, divide the application and file two or more
applications as desired for the invention.

7. Filing an Application for Patent
 Single inventive concept- one application should be
filed for each invention or inventive concept.
 Who is entitled to file
 true and first inventor
 True and first inventor‘s assignee
 Legal representative of deceased true and first inventor
or his/her assignee
PS/CS in Form 2
 An application is filed at the appropriate Patent Office
based on residence or principal place of business or
from the place where the invention originated

8. Provisional application :
 This application is filed to secure priority.
 In order to ensure that the invention fulfils the novelty
criteria of patentability, the Patent Act allows for filing
of provisional application as soon as the inventor
conceives the idea of an invention.
 Once the provisional specification has been filed,
complete specification must be filed within 12 months
from the date of filing of provisional application.
 Time-limit to foreign file the application is 1 year from
date of filing of provisional application/first filing

9. Complete application pursuant to
provisional.
 Within 12 months of filing provisional application,
complete application has to be filed.
 PCT application can also be filed pursuant to provisional
application, within 1 year of filing provisional application.
Complete application:
 Required to be filed with claims.
 As provisional application is only used to secure priority of
the application, filing of the same is an optional but an
advisable step. The applicant can directly file a complete
application as well.
 Time-limit to foreign file the application is 1 year from date
of filing of complete application.

10.  The Specification shall be signed by the agent/applicant
with date on the last page of the Specification
 The drawing sheets should bear the signature of an
applicant or his agent in the right hand bottom corner
 If the Application pertains to a biological material obtained
from India, the applicant is required to submit the
permission from the National Biodiversity Authority any
time before the grant of the patent.
 Fee: 1000/4000 (upto 30 pages and 10 claims)
 100/400 for each extra page
 200/800 for each extra claim

11. Application for Grant (Form 1)
 Has to be filed within 6 months from the date of filing
 To be filed in hard copy in duplicate along with POA and
filing receipt.
 Furnish the following details in Form 1:
a. Full name of the Applicant, nationality and address
b. Full name of the inventors, nationality and address
c. Priority details, if any
d Title of the invention
e. Signatures of the inventors
f. Application number
g. Patent Agents signature

12. Duty to Disclose (Form 3)
 disclose information regarding corresponding applications filed
in other countries.
 Form 3 (u/s 8): information regarding corresponding
applications at the time of filing the Indian application or within
6 months from the date of filing the application in India.
 keep the Controller of Patents informed of every other
application filed outside India subsequent to the filing of the
Indian application
 furnish details regarding the prosecution of corresponding
applications in other countries, if the Controller so requires.
 If an applicant to fails to comply with these obligations, it can be
a ground for opposition under Section 25 (h)

13. Declaration as to inventorship
(Form 5)
 shall be filed in Form 5 for Applications accompanying
a Complete Specification or a Convention Application
or a PCT Application designating India.
 Controller may allow Form-5 to be filed within one
month from the date of filing of application, if a
request is made to the Controller in Form-4.

14. Foreign Filing License (Form 25)
 FFP must be obtained if an Indian resident makes or
even causes to make a foreign patent application
without filing corresponding Indian patent application
6 weeks prior to filing the foreign application.
 Does not apply to non-residents.
 The Controller issues a ‘written permit’ within 3 weeks
from the date of filing Form 25
 Liabilities for non-compliance include: refusing to
grant patent in India for the same invention, fine and
or imprisonment upto 2 years.

15. Publication (Form 9)
 Applications are published in the Patent Official Journal within
18 months from the date of filing or priority date, whichever is
earlier.
 Applicant has an option to request early publication from the
Controller using Form 9
 The public shall have access to the details of the application only
from the date of publication
 The application shall not be published if a secrecy direction is
given or if the application has been abandoned.
 Once published, the applicant will be entitled to like privileges
as that of the patentee from the date of publication except for the
ability to institute an infringement proceedings
 Fee: 2500/ 10,000

16. Request for Examination (Form 18)
 The application shall be taken up for examination only
when a request for the examination has been filed using
Form 18.
 The request can be made by either the applicant or by any
other interested person.
 (RFE) can be filed by either the applicant or by interested
person within a period of 48 months from the date of
priority or date of filing, whichever is earlier.
 The application is deemed to have been withdrawn on the
non-submission of request for examination within the
prescribed period
 Fee: 2500/ 10,000

17. FORM 4
• PURPOSE: For request for extension of time to:
1. pay renewal fees [u/s 53(2), 142(4) & rule 80(1A)];
2. to file Form 5 [rule 13(6)]
3. Application for review of decisions or setting aside of
orders of the Controller [rule 130]
• FEES: 300/1200 – per month of time
• To be filled in with all the details and requisite fees and
executed and filed in hard copy before the CoP in the IPO
of appropriate jurisdiction.

18. FORM 8
• PURPOSE: Application u/s 28(2,3,7) by an original
Inventor to the Controller as to be mentioned as
an Inventor of any Patent granted or applied for.
• FEES: 500/2000.
• To be filed in with all the details of proof of
inventor ship and requisite fees and executed and
filed in hard copy before the CoP in the IPO of
appropriate jurisdiction.

19. FORM 13
PURPOSE: On application for amendment of
application for patent/CS/other related
documents u/s 57.
• FEES: before grant: 500/1,000
after grant: 1,000/4,000
for change of
name/address/nationality/address for service:
200/800.
• To be filed in with all the details and requisite fees
and executed and filed in hard copy before the
CoP in the IPO of appropriate jurisdiction.

20. FORM 19
• PURPOSE: Application for revocation of Patent
u/s 85(1).
• FEES: 1,500/6,000
• To be filed in with all the details and requisite fees
and executed and filed in hard copy before the
CoP in the IPO of appropriate jurisdiction.

21. FORM 25
• PURPOSE: Application for permission for appying
patent outside India u/s 39 and Rule 71(1).
• FEES: 1,000/4,000
• To be filed in with all the details and requisite fees
and executed and filed in hard copy before the
CoP in the IPO of appropriate jurisdiction.

22. FORM 26
• PURPOSE: Authorisation of Patent Agent (Power
of Authority).
• FEES: No Fee
• To be filled in with all the details and requisite
fees (if applicable) and executed and filed in soft
copy in the website of the IPO in appropriate
jurisdiction alongwith Form – 2 or as sson as
within 6 months thereafter, it is advisable to
follow the former and file it with Form – 2 only.

23. FORM 27
• PURPOSE: Statement regrading working of a
Patented invention on a commercial scale in India
u/s 146(2) and Rule 131(1).
• FEES: No Fee
• To be filed in with all the details and requisite fees
and executed and filed in hard copy before the
CoP in the IPO of appropriate jurisdiction.