Filing a Complete Non-Provisional Patent Application with Patent Claims

When a company publishes details of their invention in a way that makes it publicly available, it creates "prior art." This prior art prevents others from obtaining patents on that same invention. In India, publications can be made through various channels including:

• The Indian Patent Office's official journal

• Technical journals and publications

• Company websites or technical disclosure bulletins

• Academic papers or conference proceedings

The first step is to file a complete patent application, also known as a non-provisional application or complete specification, depending on the country. This application should include a set number of patent claims.

In India, for instance, there is no additional fee for filing up to 10 patent claims.

However, if you exceed this number, such as when filing before the PCT ( Patent Cooperation Treaty) within 12 months to increase the timeline to file in other countries, you will incur additional fees.

For example, if you file 20 patent claims before WIPO, there are no extra fees beyond the basic fee structure. Typically, PCT applications may contain 20 claims, with claims 1 to 10 covering systems and claims 11 to 20 covering methods.

While there is no strict rule regarding how many claims should be allocated to each category, it largely depends on the technology involved and how comprehensively it can be covered in the patent claims.

International Companies are increasingly filing via PCT route in India

Companies are increasingly filing via PCT route in India because it gives them 30/31 months from the priority date to make decisions about which countries they want to pursue patent protection in.

By filing through PCT but deliberately not filing a Request for Examination (RFE) in India, companies are creating an interesting competitive dynamic.

India's patent laws require that an RFE must be filed within 48 months from the date of priority. If no RFE is filed, the application is considered withdrawn. However, the PCT application's technical contents become public after 18 months from the priority date.

The new RFE 31 months deadline applies to patent applications filed on or after March 15, 2024. For applications filed on or before March 14, 2024, the due date will remain 48 months from the earliest patent priority date.

Indian Patent Office - Form 18 (Request for Examination): [Form 18 - IP India] for request of patent examination.

The International company gets the benefit of defensive publication through their PCT application becoming public, effectively preventing others from patenting the same invention in India.

They maintain the option to file patents in other key markets where they see more value in enforcement.

Changes in Request for Patent Examination Timeline in India

Many companies are filing patents through the PCT route but may not be submitting their requests for examination.

Following recent amendments in Indian patent law, the timeline for filing a request for examination has been reduced from 48 months to 31 months from the initial filing date.

Following recent amendments in Indian patent law, the timeline for filing a request for examination has indeed been reduced from 48 months to 31 months from the initial filing date. This change applies to applications filed on or after March 15, 2024.

For patent applications submitted before March 15, 2024, the original timeline of 48 months remains in effect.

As of today, January 15, 2025, any patent application filed after March 15, 2024, must have the request for examination submitted within this new 31-month timeframe to avoid the application being treated as withdrawn by the Indian Patent Office.

This adjustment is significant for applicants aiming to secure patent protection efficiently and highlights the importance of compliance to the updated timelines in the patent prosecution process.

This change makes it essential for patent applicants who wish to secure a patent grant in India to submit their request for examination within this timeframe of 31 months on or after March 15, 2024.

A careful decision must be made regarding whether to file this request for examination. If it is not filed, the pending patent application will still be published after 18 months from the initial filing date.

Once published, it enters the public domain and becomes part of that country's patent database.

While India represents a huge market opportunity, many companies find that the cost and uncertainty of patent litigation in India outweighs the benefits of patent protection.

While both patent claims and descriptions are essential components of a patent application, descriptions often take precedence during patent examination due to their role in clarifying the invention details better, and facilitating comparisons with prior art cited by the patent examiner.

Bonus Tip for Patenting: Remember, you can't add new information to your patent invention after you file it, so it's better to include too much detail than too little. Think of everything someone might need to know to understand and make your invention work.

Disclaimer: This information is provided for general educational and informational purposes only and does not constitute legal advice or opinion. The content discussed regarding defensive publication strategies, Patent Cooperation Treaty (PCT) filings, and patent examination requests in India represents general observations of potential intellectual property strategies and should not be relied upon as definitive guidance for any specific situation.

Our team

Our strength lies in our individuality. Set up by Advocate Prity Khastgir, the team is dedicated to empowering innovators by simplifying the patent process and ensuring that startups and small businesses can secure their inventions quickly and efficiently.

We focus on facilitating rapid access to patent protection, allowing our IP clients to take advantage of their innovations and succeed in a competitive landscape. With our extensive IP expertise in the fast-track patent process, we are committed to nurturing a dynamic environment of creativity and entrepreneurship, helping our clients bring their ideas to life.

Adv. Prity Khastgir

Registered Patent Attorney since 2007

Adv. Shweta Shalini

Senior Associate

Yashvendra Pandey

Head, Operations