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Docketing & Paralegal Support

A patent can be lost through a missed deadline as easily as through a strong objection. Every application carries dozens of dates across its life, from priority and national phase deadlines to examination requests, office action responses, foreign filing statements, renewals and working statements, and each office counts them differently. Our docketing and paralegal team tracks these deadlines, prepares the formal documents and keeps every file complete, so attorneys and clients can focus on substance.


What We Offer

  • Docketing of all pre-filing, prosecution and post-grant deadlines for patents and trademarks, with advance reminders

  • Portfolio records covering applicant, inventor, technology and jurisdiction details, documents filed, and costs incurred and paid

  • Formalities and filings before the Indian Patent Office, including forms, powers of attorney, proofs of right and Form 3 statements

  • Renewal and annuity management for granted patents

  • US Information Disclosure Statement (IDS) management, including reference collection, translations, size-fee assertions and timely filing

  • Remote docketing support for law firms and in-house teams worldwide


Our Approach

  1. Open the portfolio on day one. As soon as we are instructed, a portfolio is created in our docketing system with all client, invention and cost details.

  2. Docket every date. Statutory and internal deadlines are entered and checked by a second person, with notes recording the status of each matter.

  3. Alert in advance. Clients and attorneys receive reminders well before each deadline, not on the day.

  4. Standardise the workflow. Uniform processes across portfolios keep data quality high and make large portfolios easy to audit.


Why Khurana & Khurana

  • Dedicated docketing specialists. K&K and our sister firm IIPRD employ specialists whose sole job is docketing and formalities.

  • Teams across India. Remote docketing support is delivered from our offices in New Delhi, the NCR, Pune, Mumbai, Bengaluru, Hyderabad, Chennai, Indore and Punjab.

  • Built for large portfolios. Our systems and teams are designed for clients managing hundreds of applications across many jurisdictions.

  • Communication with foreign counsel. Established channels with foreign associates keep cited references and status changes flowing on time.


Key Indian Patent Forms

Form

Purpose

Form 1

Application for grant of a patent

Form 2

Provisional or complete specification

Form 3

Statement and undertaking on foreign applications

Form 4

Request for extension of time

Form 5

Declaration as to inventorship

Form 8A

Request for a certificate of inventorship

Form 9

Request for early publication

Form 18 / 18A

Request for examination / expedited examination

Form 25

Permission to file a patent application outside India

Form 26

Authorisation of a patent agent

Form 27

Statement of working of the patent

Form 28

Small entity, start-up or educational institution status

Form 31

Grace period for disclosures under Section 31

 Form 1 and the specification (Form 2), with the fee, are needed to get a filing date. Forms 3, 5 and 26 can be filed later within the prescribed time. Applications claiming foreign priority also need the priority document and, where needed, a verified English translation.


US Information Disclosure Statements

US applicants must disclose prior art they know to be material to patentability. Failing to do so can make the patent unenforceable for inequitable conduct.

  • No fee or statement needed: within three months of filing or national stage entry, or before the first office action on the merits

  • Fee or statement required: after that, until a final rejection or notice of allowance

  • Fee and statement required: after a final rejection or allowance, until the issue fee is paid

  • After the issue fee: only with a request for continued examination, for example through the USPTO's QPIDS procedure

  • IDS size fee: since 19 January 2025, a size fee applies once the total number of cited items exceeds 50, 100 or 200, and each IDS must include a size-fee assertion

As a best practice, we file the first IDS with the application and supplement it as references are cited in related foreign and PCT applications.


📩 For more information on how our Docketing & Paralegal Support services can ease your patent application submission, please contact us at info@khuranaandkhurana.com.


Download PDF for more information

Patent Docketing Process

Efficient and Reliable Patent Filing Services

Khurana & Khurana (K&K) delivers fast, efficient patent filing services for Indian and international clients, including corporates, inventors, and law firms. Known for swift filings and thorough reporting, K&K ensures deadlines are closely monitored and managed, providing clients with secure, timely filings worldwide.

TYPES OF PATENT APPLICATIONS
AT THE INDIAN PATENT OFFICE

Ordinary Application

First-time filing without priority claims; may include complete or provisional specifications.

Convention Application

Claims priority from applications filed in Paris Convention countries; must be filed within 12 months.

PCT International Application

Filed under the Patent Cooperation Treaty, either within 12 months of Indian filing or with a Foreign Filing License.

PCT National Phase Application

Enters the Indian National Phase within 31 months of priority or international filing date.

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FILING REQUIREMENTS

  1  

Applicant & Inventor Info​

Full name, address, and nationality.

  4  

Power of Attorney​

Original signed document; can be submitted post-filing.

  2  

Complete Specification

Submit spec, claims, abstract, and drawings in English.

  5  

Proof of Right

Transfer of rights from inventor to applicant

(Form 1 or notarized deed); due within six months.

  3  

Priority Document Translation

Verified English version; can be filed later.

  6  

Required Forms

Applicable forms provided to clients for signature.

  7  

Foreign Application Details

Form 3 for corresponding foreign patents, due within six months; notify of any status changes within six months.

IMPORTANT DEADLINES FOR INDIAN PATENT FILING

Request for Examination

Must be filed within 48 months of the earliest date (Priority or Filing Date). Examination occurs after publication, typically within 19 months of the earliest date.

Form 3 Filing

Required within six months of any action (filing, publication, or examination) on corresponding applications in other countries.

Working of Invention Statement (Form 27)

Must be filed annually by patentees and licensees within three months after the end of each calendar year, detailing commercial use in India.

PATENT PROSECUTION OVERVIEW

Patent prosecution involves the interaction between an applicant and the patent office to defend the inventor's rights through negotiation, making it a high-impact process. K&K recognizes the value of patents and offers comprehensive support throughout this process, including:

Response Preparation

Analyzing the invention and prior arts to meet patentability criteria.

Examiner Discussions

Engaging in detailed conversations with patent examiners.

Hearing Strategy

Developing effective strategies for hearings before the Controller.

The First Examination Report (FER) is typically issued within 12 months of filing the Request for Examination, contingent upon the application being published in the Indian Patent Journal.

COMPREHENSIVE PATENT PROSECUTION SERVICES

Prior Art Analysis

Technical evaluation of cited prior arts.

Application Status Tracking

Regular updates and monitoring of developments.

Examination Report Review

Detailed analysis for strong response strategies.

Response Drafting

Crafting effective replies to examination reports.

Amendment Strategy

Strategic modifications to enhance patent application.

Opposition Handling

Managing and defending opposed patents.

Revocation Prevention

Protecting the granted patent from cancellation.

Comprehensive Patent Support

Full guidance through all prosecution stages.

PRACTICE CONTACTS

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Partner and Patent Attorney – Software / Electronics / Mechanical Group

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Tapan Shah

Partner and Patent Attorney – Pharmaceutical – Life Sciences Practice Group

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Rajesh Jain

Director – Patents

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Antony David

Associate Director – Pharmaceutical – Life Sciences Practice Group

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Dhakshina Moorthy C

Associate Director – Pharmaceutical – Life Sciences Practice Group)

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TS Sharat

Partner – Software/Electronics/Mechanical Group

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