10 steps to get a patent in India

Congratulations on your new invention! You may have done your homework on how patents can be valuable, and you may have decided to apply for a patent in India since it is a relevant and large market for you. The next question that comes to mind is, “what do you have to do to not only apply for an Indian patent but get it granted?” The process of getting a patent granted involves many steps, and is cumulatively referred to as “patent prosecution”. There are specially qualified professionals called patent agents who specialize in patent prosecution, and they can take you through the steps, however before you engage your patent agent, it is also important for you to be aware of what you are getting into. Hence, without further ado, we list the 10  steps involved in applying for and getting an Indian patent here.  

The steps to getting and maintaining an Indian patent are:

  1. Disclosure of Invention
  2. Patentability analysis
  3. Patent filing strategy
  4. Drafting Patent Application
  5. Filing the application
  6. Publication
  7. Examination
  8. Hearing
  9. Grant
  10. Renewal

Step 1: Disclosure of Invention.

If you engage a Patent Agent to help you to prepare and file your patent application, you will have to disclose your invention. Prior to this, you should execute a Non-disclosure agreement (NDA) with the patent professional, to safeguard confidentiality. When disclosing details about your invention, provide all information that will help your patent agent understand your invention. You can provide rough sketches or drawings like a block diagram for a system or a flowchart for a method that will help explain your invention better. 

For a step-by-step guide on how to fill the Invention form, click this link – 10 questions in an invention disclosure form – Metayage

Step 2: Patentability analysis. 

First, the invention disclosure has to be evaluated for subject matter eligibility. If these criteria are met, the next step is to check if the invention is novel and has an inventive step. For this, a search has to be performed to find prior art, which includes published patents and patent applications, publications, and products that are being sold in public. The patent search results can be used to differentiate your invention from the prior art and highlight the differences in the patent draft to strengthen the patent application. Anyone can do a basic keyword search online, but it takes expertise to find relevant prior art that affects novelty and non-obviousness. At Metayage IP, we simulate the process followed by a patent examiner in conducting a search for prior art. We not only advise our clients on patentability, but help you to differentiate your invention over the prior art. This results in preparing a high-quality patent application with an improved chance of a patent grant. 

Step 3: Patent filing strategy 

Once you have an invention disclosure and a prior art search report, a skilled patent agent can advise you on patentability as well as on the type of patent application to file. This should take into account the level of detail provided in the disclosure, the extent to which patentability criteria are met, timelines for commercial activity, and budgeting. You can either file a Provisional or a Complete application. A provisional patent filing is particularly helpful if the invention is still under the concept or experimentation stage. Filing a provisional specification helps in establishing a priority date at the earliest. The applicant gets up to 12 months to develop the invention further and then file the complete specification. 

Step 4: Drafting the patent application 

This is a crucial step that is best done by Patent professionals. Drafting a patent requires not only legal expertise but also technical know-how. A good patent draft will help in not only getting a patent grant but making it challenging if not impossible for competitors to reverse engineer your invention and circumvent your patent.

Step 5: Filing  

Upon completion and review of the patent draft and approval from the inventors, the patent application will be filed with the Indian patent office. Along with the patent draft, you have to file a proof of right that is signed by the inventors and a power of attorney that authorizes the patent agent to represent the applicant. The filing is done electronically with the e-filing portal of the patent office and digitally signed by the patent agent using an e-token. 

Step 6: Publication

Once the patent application is filed, the next step is publication. Typically, the patent office will take 18 months to publish the patent application, but this time period can be shortened to just one month by filing a request for early publication. This is important because the patent application is placed in a queue for examination only after it is published, and a request for examination is filed. Once queued, it can take 2-3 years for the patent office to issue a first examination. However, if instead, a request for expedited examination is filed, the first examination report is received within 6-8 months.

Step 7: Examination

The patent office will then conduct a search and issue objections on the basis of novelty, inventive step, and subject matter considerations under the Indian patents act. A response to the first examination report has to be prepared and submitted at the earliest, to address and overcome the objections raised. 

Step 8: Hearing with Examiner

After reviewing the response to the first examination report, the Controller of patents will typically send a hearing notice. This gives the applicant the opportunity to explain the invention, the differences from Prior art, and overcome the objections. A written response has to be filed within 2 weeks of the hearing. 

Step 9: Grant of Patent

If the patent application satisfies the patentability criteria a patent will be granted and notified in the Patent Office journal. 

Step 10: Renewal of Patent

The Granted patent will be valid for 20 years.  The patentee is required to maintain a patent by paying a renewal fee every year as prescribed in schedule I. For the first two years, there is no renewal fee. The renewal fee is payable from the 3rd year onwards. Non-payment of the renewal fee will result in a lapse of the patent rights. 

We, at Metayage IP, appreciate the value that a granted patent can add to your venture. We have supported hundreds of brilliant innovators and start-ups and seen them grow in leaps and bounds after creating a portfolio of granted patents, which are valuable intangible assets for them. If you wish to get on board this journey of converting your unique idea into a valuable intangible asset, please drop us an email at [email protected]