electronic filing of patent and trade mark applications

The Indian Intellectual Property Office (IPO) has commenced e-filings of patent and trade mark applications. The IPO organised a training session on August 20, 2007 to teach patent and trade mark attorneys and agents of using the e-filing method. Some of the salient points regarding e-filing are mentioned herein below:

1. To operate the e-filing system, the agent/attorney is required to have a digital signature. The digital signature is a requirement under the Information Technology Act, 2000.

2. The digital signature is allocated after a physical verification of the applicant for digital signature;

3. A single digital signature works for e-filing of both patent and trade mark applications i.e. separate signatures are not required;

4. The digital signature can be obtained for a fee of Rs. 2500/-. This signature is valid for one year. In case digital signature is required for two years, then the fees is Rs. 4000/-

5. Once the digital signature obtained, the agent/attorney/applicant can allocate as many user ids as they desire;

6. At the moment the payment gateway is through State Bank of India (SBI) i.e. an applicant/agent/attorneys requires to have a SBI account (current/saving) to file patent and trade mark applications.

7. There is a facility for fee payments by credit cards as well, but it is not yet operational.

8. If the applicant is a foreign national and the applicant is filing the application in India electronically, then it is a mandatory requirement that the applicant should have (a) a digital signature; (b) SBI Account and (c) address for service in India.

9. For foreign applicants desirous of obtaining the digital signature, an endorsement and clearance from applicant’s embassy in India is required.;

10. At present only the patent Form 1 and the complete specification can be filed electronically. There is no provision for filing for amendments and assignments at the moment. The IPO has advised that the changes in the software will happen gradually and at the moment apart from filing the application electronically, the applicants/agents/attorneys are required to physically file the application as well.

11. For trade mark electronic filings, the application can be filed electronically and no hard copy requires to follow the electronic filing as in the case of patent electronic filing at present.