Understanding the cost structure corresponding to applying for a patent can help in making some important decisions. Hence, instead of having a generic idea about the overall cost, it helps if you are aware of the breakdown of the cost structure and the time of incurring such expenses.
The overall cost of obtaining a patent includes the fee that has to be paid to the patent office (statutory fee) and the fee paid to the patent service provider (professional fee). The professional fee varies based on the service provider you may select. Hence, in this article I will deal only with the statutory fee.
Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners.
The statutory fee depends on who the applicant of the patent is. The Indian Patent Office (IPO) has categorized the applicants into 3 categories:
- Natural person
- Other than natural person
- Other than natural person – Others except small Entity
Any individual(s) applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining two categories of :
- Other than natural person – Small Entity
- Other than natural person – Others except small Entity
For example, legal entities, such as, companies would fall under these categories. It shall be noted that, a patent application can have more than one applicant, and even if one of the applicants do not fall under the first category, then the patent application is considered to be filed by applicants of the remaining two categories.
Applicants who are other than natural person are categorized into the below two categories.
- Other than natural person – Small Entity
- Other than natural person – Others except small Entity
The patent office charges the least fee for applicants who are natural persons.The patent office charges other than natural person applicants who are a small entity, a fee, which is between a natural person and others except small Entity.The patent office charges a maximum fee for other than natural person applicants who are Others except small Entity.The patent office collects 2 times the fee from the applicants who are "Other than natural person – Others except small Entity" as compared to applicants who are "Other than natural person – Small Entity"Certain conditions have to be met by other than natural person applicants, who wish to claim "Small Entity" status.
| No | Description | Patent office Fee (INR) 1$ = ~ 60 INR(E-Filing only) | Comments | ||
|---|---|---|---|---|---|
| Other than Natural person | Natural Person | ||||
| Small Entity | Other than small entity | ||||
| 1 | Application for grant of patent | 4000 | 8000 | 1600 | Mandatory |
| 2 | Early publication fee | 6250 | 12500 | 2500 | Optional |
| 3 | Request for examination of patent application | 10000 | 20000 | 4000 | Mandatory |
| 4 | For every Extra sheet over 30 sheets | 400/sheet | 800/sheet | 160/sheet | Mandatory |
| 5 | For every Extra claim over 10 claims | 800/claim | 1600/claim | 320/claim | Mandatory |
Sl. No. 1
A fee of INR 1600/4000/8000 has to be paid while submitting the patent application in the IPO, based on the type of applicant.
Sl. No. 2
A fee of INR 2500/6250/12500 has to be paid, based on the type of applicant, if you wish to have your patent application published by the IPO early. If this request is not made, then the IPO publishes your patent application after 18 months from priority date (date on which you first file a patent application for your invention). There are several advantages of having a patent application published early. Some of the advantages are: early publication can help in expediting the patent application examination process and the patent rights start from the date of publication.
Sl. No. 3
A fee of INR 4000/10000/20000 has to be paid, based on the type of applicant, requesting the IPO to examine your patent application. This fee can be paid within 48 months from the priority date. However, note that the patent office puts your application in queue for examination only after receiving this fee. Hence, if you want to expedite the patent process, it is advisable to pay this fee at the earliest.
Sl. No. 4
The IPO accepts patent specification, which has up to 30 sheets without charging any extra fee. However, if the specification crosses 30 sheets, then a fee of INR 160/400/800/sheet for each extra sheet has to be paid to the IPO, based on the type of applicant.
Sl. No. 5
Further, the IPO accepts patent specification, which has up to 10 claims (no limitation on independent claims) without charging any extra fee. However, if the specification has more than 10 claims, then a fee of INR 320/800/1600/Claim for each extra claim has to be paid to the IPO, based on the type of applicant.
What are the different patent filing options?
In simple words, “Patent filing” can be defined as a process of submitting an application in a patent office requesting grant of patent to your invention. If you wish to protect your invention in different countries, then you will have to submit a patent application in each of those countries. There are various options or approaches you may use to protect your invention in one or more countries. By understanding the various patent filing options, you can construct a patent filing strategy based on your business objectives and economic constraints.
Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners.
The options can be broadly divided into 4 classifications:
- Filing a provisional patent application
- Filing a complete patent application in your country
- Filing a patent application in a foreign country
- Filing a Patent Cooperation Treaty (PCT) application
1. Filing a provisional patent application
A provisional patent application is filed to secure a priority date for your invention. A priority date is the date on which the first patent application for your invention is filed. This date is important because, knowledge available in public domain before the priority date is referred to as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be granted to your invention. If you delay filing of the patent application, then naturally, more knowledge in the public domain gets added to the prior art, hence decreasing the probability of patent grant to your invention.
Normally, inventors/companies file a provisional application in two scenario. The first scenario is when time is of concern, and drafting a well constructed complete patent specification might delay the patent filing process. This delay in filing, pushes the priority date further, thereby reducing the probability of patent grant to your invention. The second scenario is when money is of concern. Depending on the country in which the patent application is filed, there can be a substantial difference between the provisional and complete application fee that has to be paid to the patent office. Further, depending on the patent consultant you choose to work with, there can be substantial difference in the fee charged by the patent consultant to draft a provisional and a complete specification. Hence, sometimes inventors/companies draft a provisional specification on their own and file the same.
The main difference between a provisional and a complete patent application is, a complete application will have a “claim” section, whereas the claim section will be absent in a provisional application. Claims define the scope of your invention and describes what you wish to protect in your invention.
It shall be noted that, a complete patent application has to be filed within 12 months from the date of filing the provisional application. Failure to do so will be considered as abandoning the provisional application. Once abandoned, the advantages of filing the provisional application cannot be availed.
2. Filing a complete patent application in your country
A complete patent application has to be filed in the patent office of your country if you wish to protect your invention in your country. A complete patent application can be filed in the first place or if you have filed a provisional application provisously, then within 12 months from the provisional application filing date.
A complete patent application in your country can be filed by using any one of the following options:
- File a provisional application in any convention country (secure a priority date) and file a complete application in the patent office of your country within 12 months from the priorit date.
- File a complete application in any convention country (secure a priority date) and and file a complete application in the patent office of your country within 12 months from the priority date.
- Use the PCT route – Explained under option 4
3. Filing a patent application in a foreign country
If you wish to wish to protect your invention in a foreign country, you can choose from one of the options given below:
- File a provisional application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priorit date.
- File a complete application in any convention country (secure a priority date) and file a complete application in each of the foreign countries in which you wish to protect your invention within 12 months from the priority date.
- Use the PCT route – Explained in detail below
4. Filing a Patent Cooperation Treaty (PCT) application
Filing a PCT application is a good strategy if you wish to protect your invention in more number of countries. By filing a PCT application, you get 30 months duration (sometimes even 31 months depending on the country) from the priority date to file patent applications in each country in which you wish to protect your invention. Note that if you had not filed a PCT application, then you would have only 12 months duration from the priority date to file patent applications in each country in which you wish to protect your invention. Another important point to be noted in case of PCT application is that, only comple patent applications are accepted as PCT applications. Further, a PCT application can be filed in the patent office of your country.
A PCT application can be under the following scenarious:
- File a provisional application in any PCT member country (secure a priority date) and file a PCT aspplication within 12 months from the priorit date. Subsequently, file patent applications, within 30/31 months from priority date, in each country (has to be a PCT member country, list of PCT contracting countries) you wish to protect your invention.
- File a complete application in any PCT member country (secure a priority date) and file a PCT application within 12 months from the priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.
- File a PCT application in the first place and secure a priority date. Thereafter, file patent applications, within 30/31 months from priority date, in each country (PCT member country) you wish to protect your invention.
It should be noted the patent filing strategy may be constructed on a case to case basis. The filing strategy may depend on business objectives, market conditions and economic constriants, among other factors.
Indian Patenting Process Timeline
Some of the steps in this process revolve around the phrase “priority date”. Priority date is the date of filing of the first patent application for your invention. For example, if you have filed a patent application for your invention in US on January 01, 2010 and thereafter, you filed a patent application for the same invention in India on March 10, 2010, then the priority date will be January 01, 2010. On the other hand, if you haven’t filed any patent application for your invention previously, then the data of filing of patent application in India will be the priority date of your patent application.
The flowchart provided in this article illustrates the timelines involved in this process. The steps in blue blocks are actions that have be taken by you (applicant) and the steps in white block are actions that are taken by the IPO.
Step 101
File a patent application in the IPO. I think you might find our articles on “Patent Application Filing Procedure/Process in India” useful.
Step 102
File an early publication request.
Filing an early publication request is an optional step. This request is filed to have your patent application published early. Filing an early publication request helps in expediting the patent examination process.
Step 103
If you file an early publication request, then your patent application will be published by the IPO, generally, within 1 week from the data of receiving the request.
Step 104
If the early publication request is not filed, then the IPO publishes your patent application after 18 months from the priority date.
Step 105
File a request for examination. This request can be filed within 48 months from the priority date. Note that the IPO will not examine your patent application, unless this request is filed. Hence, if you wish to expedite the patent process, early filing of the examination request is advised.
Step 106
Once the IPO receives your request for examination, the IPO puts your application in queue for examination. Subsequently, your patent application will be examined by the IPO. In light of the examination, if the IPO is of the opinion that your patent application satisfies all the requirement of patentability, then a patent is granted to your invention.
Step 107
On the other hand, after examining your application, if the IPO is of the opinion that the requirements of patentability are not met, then a First Examination Report (FER) is issued.
Step 108
You will have to respond to the FER within 12 months from the date of the FER. However, it is advisable to respond as early as possible. By responding early, you provide an opportunity to the IPO to issue another examination report if the IPO is not convinced by your response to issue a patent.
Please note that issuance of subsequent examination reports by the IPO and responding to the same by the applicant can occur within 12 months from the date of the FER.
Also, note that you can request the IPO for a hearing and the IPO is obligated to provide you the same.
Step 109 and 110
In light of the communication with the IPO, the IPO can either grant a patent or reject granting of a patent.
Note that, if the IPO does not grant a patent, then you may, if you wish, appeal against the decision of the IPO. The Intellectual Property Appellate Board (IPAB) is authorized to hear such appeals.
The entire article can be downloaded here.
Please note that, the most important factor in filing a patent application is preparing a patent specification. Drafting a patent specification is a highly skilled job, which can be only preformed by persons who have both techinical as well as patent law expertise. If a person or company is serious about protecting their intellectual property, it is highly recommeded to use the services of professional patent practitioners.
Reference
http://www.invntree.com/
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