Indian Patent Office: AS Designated (Or Elected) Office
Indian Patent Office: AS Designated (Or Elected) Office
CONTENTS
THE ENTRY INTO THE NATIONAL PHASE — SUMMARY
THE PROCEDURE IN THE NATIONAL PHASE
ANNEXES
Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.I
Application for Grant of Patent (Form 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.II
Provisional/Complete Specification (Form 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.III
Statement and Undertaking under Section 8 (Form 3) . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.IV
Request for Extension of Time (Form 4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.V
Declaration as to Inventorship (Form 5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.VI
Claim or Request Regarding any Change in Applicant for Patent (Form 6) . . . . . . . . . . . Annex IN.VII
Notice of Opposition (Form 7A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.VIII
Notice of post-grant Opposition (Form 7) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.IX
Request or Claim Regarding Mention of Inventor as such in a Patent (Form 8) . . . . . . . . Annex IN.X
Request for Publication (Form 9) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.XI
Application for Amendment of the Application for Patent/Complete Specification (Form 13) Annex IN.XII
Notice of Opposition to Amendment/Restoration/Surrender of Patent/Grant of Compulsory
License or Revision of Terms thereof or to Correction of Clerical Errors (Form 14) . . . Annex IN.XIII
Application for the Restoration of Patent (Form 15) . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.XIV
Application for Registration of Title/Interest in a Patent or Share in it or Registration
of any Document Purporting to Affect Proprietorship of the Patent (Form 16) . . . . . . . Annex IN.XV
Request/Express Request for Examination of Application for Patent (Form 18) . . . . . . . . Annex IN.XVI
Request for expedited Examination of Application for Patent (Form 18A) . . . . . . . . . . . . Annex IN.XVII
Request for Permission for Making Patent Application outside India (Form 25) . . . . . . . Annex IN.XVIII
Form for Authorisation of a Patent Agent/or any person in a Matter or
Proceeding under the Act (Form 26) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.XIX
Form to be Submitted by a Small Entity (Form 28) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Annex IN.XX
Request for withdrawal of the Application for the Patent (Form 29) . . . . . . . . . . . . . . . . Annex IN.XXI
List of abbreviations:
Office: Indian Patent Office
Controller: Controller of Patents
PA: The Patents Act, 1970 as amended by the Patents (Amendment) Act, 2005
PR: The Patents Rules, 2003 as amended by the Patents (Amendment) Rules, 2016
Required contents of the translation for Under PCT Article 22: Description, claims (if amended, both as
entry into the national phase:1 originally filed and as amended, together with any statement under
PCT Article 19), any text matter of drawings, abstract
Under PCT Article 39(1): Description, claims, any text matter of
drawings, abstract (if any of those parts has been amended, both as
originally filed and as amended by the annexes to the international
preliminary examination report)
Is a copy of the international application A copy is required only if the applicant has not received
required? Form PCT/IB/308 and the Indian Patent Office has not received a
copy of the international application from the International Bureau
under PCT Article 20.
______________
1 Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1), or at the time of any earlier express
request by the applicant to proceed earlier with the national phase.
2 The Office’s fee schedule is available at: www.ipindia.nic.in/writereaddata/portal/ipoformupload/1_11_1/fees.pdf
3 Subject to a maximum of INR 24,000.
4 Subject to a maximum of INR 120,000.
5 Not allowed.
Special requirements of the Office Name, address and nationality of the inventor if they have not been
(PCT Rule 51bis):6 furnished in the “Request” part of the international application7
Instrument of assignment or transfer where the applicant is not the
inventor7
Document evidencing a change of name of the applicant if the
change occurred after the international filing date and has not been
reflected in a notification from the International Bureau
(Form PCT/IB/306)
Declaration of inventorship by the applicant7
Address for service in India (but no representation by an agent is
required)
Power of attorney if an agent is appointed
Verification of translation
Furnishing, where applicable, of a nucleotide and/or amino acid
sequence listing in electronic form
Who can act as agent? Any patent agent registered to practice before the Office
______________
6 If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to
comply with the requirement within a time limit fixed in the invitation.
7 This requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.
PCT Art.. 22 IN.01 FORMS FOR ENTERING THE NATIONAL PHASE. The Office has a form
PR Rule 20(7)
(Form 1 – see Annex IN.II) for providing details of an international application entering the
national phase. This form should preferably be used. PCT applicants are not, in accordance
with Article 22, required, at this stage, to furnish all the items set out in Box 10 of the form,
namely the statement of undertaking nor any priority document or translations thereof.
PR Rule 20(3) IN.02 TRANSLATION (VERIFICATION). The required verification of the translation of
the international application and of any other document, which was not either filed or published
in English, consists of a simple statement by the applicant, or the person duly authorized by the
applicant, to the effect that the translation is correct and complete.
PA Sec. 57 IN.03 TRANSLATION (CORRECTION). Errors in the translation of the international
PR Rule 81(1)
application can be corrected with reference to the text of the international application as filed
(see National Phase, paragraphs 6.002 and 6.003). A request for correction or amendment must
be made on Form 13 (see Annex IN.XII) together with the payment of the prescribed fee.
PA Sec. 142 IN.04 FEES (MANNER OF PAYMENT). The manner of payment of the fees indicated in
PR Rule 7
First the Summary and in this Chapter is outlined in Annex IN.I.
Schedule
PR Rule 7 IN.05 CLAIMS FEE. The claims fee is calculated on the basis of the number of claims
First
Schedule contained in the international application at the time of national phase entry including, where
amendments have been filed during the international phase, the claims as amended under
PCT Article 19 or 34(2). Where the applicant fails to pay the correct amount of the claims fee
within the prescribed time limit, the application will be deemed not to have been filed under
Section 142(3) of the Patents Act, 1970 (for the amount of the claims fee see Annex IN.I).
PA Sec. 53 IN.06 RENEWAL FEES. After a patent has been granted, renewal fees must be paid for
142
PR Rule 80 maintaining the patent in force. The renewal fees indicated in Annex IN.I shall be payable to the
office at the expiry of the second year from the date of the patent. Further renewal fees are due
before the expiry of each succeeding year. If the renewal fee is not paid within the prescribed
time limit, the patent will cease to have effect. However, a patent may be restored provided that
an application for restoration is made on Form 15 (see Annex IN.XIV) within 18 months from
the date of cessation (see paragraph IN.15). Where the patent is granted later than two years
after filing, the fees which have become due must be paid within three months of grant
(extendable up to an additional six months using Form 4 (see Annex IN.V)). Thereafter every
renewal fee becomes due before the anniversary of the granted patent. A request for renewal of
a patent must be made on plain paper accompanied by the prescribed fee (see Annex IN.I).
PA Sec. 127 IN.07 REPRESENTATION. An applicant, irrespective of whether or not he is a national
132
135 of or a resident in India, is not required to be represented by an agent, but he is required to have
PR Rules 5 an address for service (for notices and other communications) in India. If an agent is appointed
to represent the applicant, a written authorization should be filed on Form 26 (see
Annex IN.XIX) or a power of attorney should be submitted.
PA Sec. 8 IN.08 STATEMENT CONCERNING CORRESPONDING APPLICATIONS IN
PR Rule 12
OTHER COUNTRIES. The applicant must file within six months from the date of entry into
the national phase, a statement concerning any corresponding applications filed in other
countries. The statement must be made on Form 3 (see Annex IN.IV) which includes an
undertaking that the applicant will update the statement. No fee is required.
(5 December 2019)
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Page 6 PCT Applicant’s Guide – National Phase – National Chapter – IN
PCT Art. 28 IN.09 AMENDMENT OF THE APPLICATION; TIME LIMITS . The applicant may,
41
PA Secs. 57 to 59 at any time before the patent is granted, make amendments to his application during the
PR Rule 81 national phase provided that these do not exceed the scope of the application as originally filed.
The applicant may amend the patent application or the complete specification or any document
related thereto, at the discretion of the Controller, by filing a formal request on Form 13 (see
Annex IN.XII) and paying the prescribed fees (see Annex IN.I). It should be noted that
amendments may only be requested during the national phase proceedings and not before or at
the time of national phase entry. An application for amendments may also be filed after the
grant of patent. However, such amendments can only be filed by way of disclaimer, correction
or explanation as prescribed under Section 59 of the Patents Act. Where an amendment is made
after the grant of patent, any interested person may oppose the amendment of the patent
application by filing a notice of opposition on Form 14 (see Annex IN.XIII) within three months
from publication of the amended application in the Official Journal of the Indian Patent Office.
PA Sec. 11A IN.10 PUBLICATION OF APPLICATION. All applications for patents are published
PR Rule 24
and open to the public after the expiry of 18 months from the priority date except for
applications which are provisional or withdrawn or have secrecy provisions under the Act.
PA Sec. 25(1) IN.11 PRE-GRANT OPPOSITION. Any person may, at any time after the publication of
PR Rule 55
the application but before the grant of the patent, file an opposition to the grant of the patent on
Form 7(A) (see Annex IN.VIII) with the Controller with a copy to the applicant. A statement in
support of the opposition should also be filed, together with evidence, if any, and a request for a
hearing, if so desired.
PA Sec. 11B IN.12 REQUEST FOR EXAMINATION. A patent application shall not be examined
PR Rule 24B
20(4)(ii) unless the applicant or any other interested person makes a request for such examination in the
prescribed manner within 48 months from the date of priority of the application (if applicable) or
from the date of filing of the patent application, whichever is earlier. Such a request must be
made on Form 18 (see Annex IN.XVI).
PA Sec. 11B IN.13 REQUEST FOR EXPEDITED EXAMINATION. An applicant may file a request
PR Rule 24A-C
for expedited examination on Form 18A (see Annex IN.XVII) and pay the fee
indicated in Annex IN.I. The request must be filed by electronic means within the period
prescribed in Rule 24B. A request for expedited examination can only be filed where:
- the Office has been specified as the competent International Searching Authority or
International Preliminary Examination Authority in the corresponding international application,
or
- the applicant is a startup, or
- the applicant is a small entity, or
- if the applicant is a natural person or in the case of joint applicants, all the applicants
are natural persons, then the applicant or at least one of the applicants is a female, or
- the applicant is a department of the Government, or
- the applicant is an institution established by a Central, Provincial or State Act, which
is owned or controlled by the Government, or
- the applicant is a Government company as defined in clause (45) of section 2 of the
Companies Act, 2013 (18 of 2013), or
- the applicant is an institution wholly or substantially financed by the Government, or
- the application pertains to a sector which is notified by the Central Government on the
basis of a request from the head of a department of the Central Government, or
- the applicant is eligible under an arrangement for processing a patent application
pursuant to an agreement between the Indian Patent Office and a foreign Patent Office.
(5 December 2019)
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PCT Applicant’s Guide – National Phase – National Chapter – IN Page 7
A request for examination may be converted into a request for expedited examination, subject to
the furnishing of the required documents and the payment of a balance fee (see Annex IN.I.)
The request to convert the request for examination into a request for expedited examination must
be accompanied by a request for publication under Rule 24A, except where the application has
been published or where a request for publication under Rule 24A has already been filed.
PA Sec. 11B IN.14 REQUEST FOR WITHDRAWAL OF APPLICATION. An applicant may file a
PR Rule 26
request for withdrawal of the application under paragraph 4(i) of Section 11B and Rule 26 on
Form 29 (see Annex IN.XXI). If the application is withdrawn after the filing of a request for
examination but before the issuance of the first statement of objection, the fee may be refunded
under Rule 7(4A) as indicated in Annex IN.I.
PA Sec. 25(2) IN.16 POST-GRANT OPPOSITION. At any time after the grant of the patent but before
PR Rule 55A
the expiry of a period of one year from the date of publication of the grant of the patent, any
person may file a notice of opposition on Form 7 (see Annex IN.IX).
PCT Art. 25 IN.17 REVIEW UNDER ARTICLE 25 OF THE PCT. The applicable procedure is
PCT Rule 51
outlined in paragraphs 6.018 to 6.021 of the National Phase.
PCT Art 24(2) IN.18 EXCUSE OF DELAYS IN MEETING TIME LIMITS. Reference is made to
48(2)
PCT Rule 49.6 paragraphs 6.022 to 6.027 of the National Phase.
PA Sec. 24B IN.19 Where, during the national phase, the applicant wishes to extend a time limit for
53(2)
142(4) performing certain acts relating to the patent application, such as:
PR Rule 6(6) – filing of a statement and undertaking regarding foreign applications (Form 3 – see
13(6)
55(4) Annex IN.IV)
80(1A) – filing of a declaration of inventorship (to be made using Form 5 – see Annex IN.VI)
130 – filing of a request for renewal of a patent (Rule 80(1A))
137
138 – filing a petition to review an order of the Controller under Section 77(1)(f)
24B(6) – payment of accumulated renewal fees under Section 142(4) after the grant of the
24C(11) patent
he should furnish Form 4 (see Annex IN.V) before the expiry of the time limit together with
payment of the prescribed fee. The time limit may then be extended if the Controller thinks fit
and so directs.
The Controller has the power to extend the time limit up to one month beyond that prescribed in
the patent rules provided that the fee for such request is paid in advance (Rule 138). It should be
noted that the extended time limit does not apply to the filing of a national phase application
(Rule 20(4)(i)), of a translation of amended claims (Rule 20(6)), of a priority document
(Rule 21), of a request for examination (Section 24B(1), the time limit for putting the application
in order for grant under Rule 24B(5) and (6) and 24C(10) and 11, the applicant’s statement and
evidence in the opposition proceedings (Rule 55(4)), the payment of renewal fees (Rule 80(1A))
and the time limit for filing an application for review of a decision or setting aside of orders of
the Controller (Rule 130(1) and (2)).
(5 December 2019)
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Page 8 PCT Applicant’s Guide – National Phase – National Chapter – IN
PR Rule 6(6) The Controller may also excuse the delay in transmitting or resubmitting a document to the
Office or performing any act by a party, if a petition to excuse such a delay is made by the party
to the Controller along with a statement regarding the circumstances of the delay and evidence
in support of the statement. The evidence must, to the satisfaction of the Controller, show that
the delay was due to war, revolution, civil disorder, strike, natural calamity, a general
unavailability of electronic communication services or other like reason in the locality where the
party resides or has his place of business, and that such situation was of such severity that it
disrupted the normal communication in that area and that the relevant action was taken as soon
as reasonably possible but not later than one month from the date when such situation had
ceased to exist. The maximum delay shall not exceed six months from the expiry of the
prescribed period, whichever is earlier.
PA Secs. 60 to 62 IN.20 RESTORATION OF A LAPSED PATENT. Where a patent has lapsed by reason
PR Rules 84 to 86
of failure to pay any renewal fee, the patentee or his representative may, within 18 months from
the date on which the patent ceased to have effect, make a request for restoration of the patent
using Form 15 (see Annex IN.XIV). If the Controller is satisfied that the failure to pay the
renewal fee was unintentional and that there has been no undue delay in the making of the
request for restoration, he will publish the request for restoration in the prescribed manner, and
within the prescribed period. Any interested person may oppose the restoration of the patent by
filing an opposition on Form 14 (see Annex IN.XIII). The Controller shall publish his decision
concerning restoration of a lapsed patent.
PA Sec. 117A IN.21 APPEAL. Applicants may appeal to the Appellate Board against any decision, order
or direction of the Controller as provided for in the Patents Act Section 117A(2). Appeals shall
be made in writing and submitted within three months from the date of the decision, order or
direction of the Controller, or within such further time limit as the Appellate Board may allow.
PA Rule 9(3) IN.22 NUCLEOTIDE AND AMINO ACID SEQUENCES. Where the international
application contains disclosure of one or more nucleotide and/or amino acid sequences, the
applicant must furnish a sequence listing in electronic form. No paper copy of the sequence
listing is required.
(5 December 2019)
IN
PCT Applicant’s Guide – National Phase – National Chapter – IN Annex IN.I, page 1
FEES1
1
The Office’s fee schedule is available at: www.ipindia.nic.in/form-and-fees.htm
2
This amount is applicable in case of filing by a “small entity”. For further details on the entitlement to and the establishment of
“small entity” status, see Form 28 (Annex IN.XX).
3 Subject to a maximum of INR 24,000.
4
Subject to a maximum of INR 120,000.
5
Not allowed.
6 If the application is withdrawn before the issuance of a first statement of objection using Form 29 (see Annex XXI), the fee may be
refunded up to 90%.
7
The request for expedited examination must be filed by electronic means.
(26 March 2020)
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Annex IN.I, page 2 PCT Applicant’s Guide – National Phase – National Chapter – IN
Patents
Form
No. Item Electronic filing Physical (paper) filing
Natural Small Others, Natural Small Others,
person(s) entity8, alone or person(s) entity8, alone or
and/or with and/or with
startup alone or natural startup alone or natural
with person(s) with person(s)
natural and/or natural and/or
person(s) startup person(s) startup
and/or and/or and/or and/or
startup small startup small
entity entity
4 Request for an extension of time limit under
Sections 53(2) and 142(4), Rules 13(6), 80(1A) and
130 (per month, for each month for which the
extension is sought) ................... 480 1,200 2,400 530 1,300 2,600
4 Request for an extension of time limit under
Rule 24B(5) (per month, for each month for which
the extension is sought) . . . . . . . . . . . . . . . . . . 1,000 2,000 4,000 1,100 2,200 4,400
4 Request for an extension of time limit under
Rule 24C(11) (per month, for each month for which
the extension is sought) . . . . . . . . . . . . . . . . . . 2,000 5,000 10,000 2,200 5,500 11,000
15 Request for restoration of patent:
— under Section 60 . . . . . . . . . . . . . . . . . . . . . 2,400 6,000 12,000 2,650 6,600 13,200
— additional fee under Rule 86(1). . . . . . . . . . . . 4,800 12,000 24,000 5,300 13,200 26,400
7 Notice of opposition to an application under Section
25(2) 2,400 6,000 12,000 2,600 6,600 13,200
14 Notice of opposition to an application under
Sections 57(4), 61(1) and 87(2) . . . . . . . . . . . . . 2,400 6,000 12,000 2,650 6,600 13,200
The payment of fees must be effected in Indian rupees. All payments must be made together with the filing
of the form related to the fee to be paid, and indicate the application number (national, if already known;
international, if the national number is not yet known), the name of the applicant and type of fee being paid.
Payments may be made by one of the following means: cash, banker’s cheque, electronic means or by bank
draft payable to the Controller of Patents at any accepted bank in India where the Office namely, Chennai, Delhi,
Kolkata or Mumbai is situated.
8
See footnote 2.
(26 March 2020)
IN
PCT Applicant’s Guide – National Phase – National Chapter – IN Annex IN.II, page 1
(1 December 2011)
IN
PCT Applicant’s Guide – National Phase – National Chapter – IN Annex IN.IV, page 1
(1 December 2011)
IN
PCT Applicant’s Guide – National Phase – National Chapter – IN Annex IN.VII
(1 December 2011)
IN
PCT Applicant’s Guide – National Phase – National Chapter – IN Annex IN.VIII