A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.
The term of every patent granted is 20 years from the date of filing of application. However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.
No. Patent protection is a territorial right and therefore it is effective only within the territory of India. There is no concept of global patent.
However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries or under PCT, within or before expiry of twelve months from the filing date in India. Patents should be obtained in each country where the applicant requires protection of his invention.
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under sections 3 and 4 of the Act.
An invention is patentable subject matter if it meets the following criteria –
i) It should be novel.
ii) It should have inventive step or it must be non-obvious
iii) It should be capable of Industrial application.
iv) It should not attract the provisions of section 3 and 4 of the Patents Act 1970.
An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations:
1) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
2) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human , animal or plant life or health or to the environment;
3) the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
4) the mere discovery of a new form of a known substance which does not result in enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
5) a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
6) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
7) a method of agriculture or horticulture;
8) any process for medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
9) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
10) a mathematical or business method or a computer program per se or algorithms;
11) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
12) a mere scheme or rule or method of performing mental act or method of playing game;
13) a presentation of information;
14) topography of integrated circuits;
15) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;
16) inventions relating to atomic energy;
An application for a patent can be filed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority of the invention. Delay in filing an application may entail some risks such as (i) some other inventor might file a patent application on the said invention and (ii) there may be either an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.
Generally, an invention which has been either published or publicly displayed cannot be patented as such publication or public display leads to lack of novelty. However, under certain circumstances, the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in an exhibition organised by the Government or disclosure before any learned society or published by applicant.
Yes. All the patent applications are kept secret for up to 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Patent Office which is published every week and also available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.
A patent application can be filed with Indian Patent Office either with provisional specification or with complete specification along with fee as prescribed in schedule I. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional application. There is no further extension of time to file complete specification after expiry of said period.
An application for patent can be filed either in Hindi or English.
Yes, India has four patent offices located at Kolkata, New Delhi, Mumbai and Chennai. Each office has a separate territorial jurisdiction. The appropriate office for all proceedings including filing of the application depends normally where the applicant/first mentioned applicant resides/has domicile/has place of business/has origin of invention. In case of foreign applicants, it depends on the address for service in India given by such applicant.
In India, a patent application can be withdrawn in the following ways:
· a request for the withdrawal of the application can be filed within 15 months of the date of filing or date of priority, whichever is earlier and accordingly the application will not be published and be treated as ―withdrawn.
· An applicant can withdraw the application before the issuance of the First Examination Report. However, on withdrawal of the application, applicant can claim a refund of up to 90% of examination fees.
· An applicant can withdraw the application any time after its filing but before the grant of patent by making a request. There is no fee for withdrawing the application. And also there is no refund of examination fee.
The types of applications that can be filed are:
A) PROVISIONAL APPLICATION Indian Patent Law follows first to file system. A provisional application is an application which can be filed if the invention is still under experimentation stage. Filing a provisional specification provides the advantage to the inventor since it helps in establishing a ―priority date of the invention. Further, the inventor gets 12 months’ time to fully develop the invention and ascertain its market potential and to file the complete specification.
B) ORDINARY APPLICATION An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office. Such type of application is known an ordinary application.
C) CONVENTION APPLICATION An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is known as a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country.
D) PCT INTERNATIONAL APPLICATION An Application filed in India as Receiving Office (RO) under Patent Cooperation Treaty is an international application which can be filed in more than 150 countries by a single application.
E) PCT NATIONAL PHASE APPLICATION When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date, whichever is earlier.
F) PATENT OF ADDITION When an invention is a slight modification of the earlier invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition if the modification in the invention is new. One of the benefits of filing patent of addition is that there no need to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.
G) DIVISIONAL APPLICATION When an application claims more than one invention, the applicant on his own or to meet the official objection on the ground of plurality or distinct invention may divide the application and file two or more applications, as the case may be for each of the inventions. This type of application, divided out of the parent one, is known a Divisional Application. The priority date for all the divisional applications will be same as that of the main (the Parent) Application (Ante-dating).
Generally, when an invention is not complete an application can be filed with provisional specification which is known as provisional application. This is useful in establishing a priority date for your invention. Moreover, it also gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.
Every application for patent is published after expiry of 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published.
A) Application in which secrecy direction is imposed
B) Application which has been abandoned u/s 9(1) and i.e when a provisional application has been filed and the complete application has not been filed with 12 months from the filing of the provisional application
C) Application which has been withdrawn 3 months prior to 18 months
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. After receiving such request the Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to Atomic energy or Defence purpose.
Generally, in order to file an application, an applicant is required to file Form 1 which is a request for filing an application and Form 2 which is either a provisional or complete specification with drawings, if any. In addition to these, an abstract of the invention is also required. If the application is filed through a registered patent agent, a power of authority in favour of the said agent in Form 26 is also required. However, depending upon various circumstances, following forms may also be required. The application can be examined only after receipt of request for examination on Form 18/18A.
A patent application is not examined automatically after its filing. The examination is done only after receipt of the request of examination in Form 18 either from the applicant or from third party or Form 18A for expedited examination (under conditions as prescribed in the Rules).
The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier. For more details kindly refer to rule 24B of the Patents Rules 2003 as amended.
After examination, the Patent offidce issues an examination report to the applicant which is generally known as First Examination Report (FER). Thereafter the applicant is required to comply with the requirements within a period of 6 months from the date of FER which can be extended by 3 months. In case, the application is found to be in order for grant, the patent is granted, provided there no pre-grant opposition is filed or pending. A letter patent is issued to the applicant. However, in case a pre-grant opposition is pending, the further action is taken after disposition of the pre-grant opposition.
If the applicant does not file a reply within 6 months or does not take an extension of 3 months, the application is deemed to have been abandoned.
If applicant has not complied with the requirements within the prescribed time, the Controller shall provide an opportunity of being heard to the applicant before refusing his application if a request for such hearing has been made by the applicant at least 10 days in advance before expiry of the statutory period.
A representation for pre-grant opposition under section 25(1) of Patents Act, 1970 can be filed, on Form 7A within six months from the date of publication of the application u/s 11A or before the grant of patent.
No, there is no fee for filing representation for pre-grant opposition? This can be filed by any person.
Yes, it is possible to file representation for pre-grant opposition even though there is no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period.
The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal of the patent office.
Yes, the post grant opposition has to be filed in the prescribed Form 7 along with prescribed fees as mentioned in First Schedule in Patents Rules 2003. The post grant opposition has to be filed by the person interested and not by any other person.
• 10% fee reduction on online filing compared to offline filing to promote online filing.
The Patent Office has no role beyond grant of patent. Since patents are private rights the patent owner is responsible for commercializing the patent either himself or through licensee.
Yes, the Patent Rules provides for different fee for individuals/Startups, SME‘s and legal entity.
After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee. The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the patent will be ceased.
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
A request for restoration of patent can be filed within 18 months from the date of cessation of
patent along with the prescribed fee. After receipt of the request the matter is notified in the official journal for further processing of the request.
In addition to the various forms required to be filed at the time of filing the patent application, the applicant is also required to deposit the new strain of a microorganism if used in the invention disclosed in the patent specification, in a recognized depository which assigns a registration number to the deposited microorganism, before filing for the patent application. This number needs to be quoted in the patent application.
Now Patent Agents are required to submit even those documents by electronic transmission that need to be submitted in original i.e. through scanned copies and then mandatorily submit the original documents within period of 15 days. Following documents have to be submitted in original by patent agent after filing them electronically:
i) The Authorization of Patent Agent or Power of Attorney
ii) Proof of the right to make an application
iii) Deed of assignment, certificate regarding change in name of the applicant, license agreement
iv) Declaration of inventor-ship
v) Priority document
Yes, the Government of India has formulated schemes to spur the innovative capabilities of the innovators who are from MSME‘S and Start-ups.
i) MSME’s: A 50% fee concession is provided for MSMEs vis-à-vis large entities on patent filing fees.
ii) A Scheme for facilitating Startups Intellectual Property Protection (SIPP) has been launched for encouraging innovation and creativity of Startups. For effective implementation of the scheme, facilitators have been empanelled by the Controller General of Patent, Trademark and Design (CGPDTM). Startups are provided a rebate of 80% on patent fees as compared to the fee paid by legal entity.
Start-up means an entity, incorporated or registered in India under the ―Start-up India: Stand-Up India” initiative of the Government of India.
Government of India provides the following benefits to Start Ups in filing patent application in India under Scheme for Facilitating Start-ups Intellectual Property Protection (SIPP):
- An entity qualifying as a start up‘ under Stand-Up India initiative of the Government of India can avail the facility of expedited examination.
- The Government reimburses the expenditure to the facilitator who assists the startup for filing and prosecuting the patent application to the extent of Rs.10,000/-
As per section 11A, the applicant shall have privileges as if patent was granted on the date of
publication of application. Thus, in case of suit for infringement, the patent owner can claim
damages from the date of publication of patent application or date of infringement whichever is earlier. However the suit for infringement can be filed only after a patent is granted.
A patentee enjoys the exclusive right to make and use the patented invention. The patentee also has the right to assign the patent, grant licences, or otherwise deal with the patent, for any consideration. These rights, created by statute, are circumscribed by various conditions and limitations as prescribed under the Patents Act.1970.
Under the provisions of section 146, every patentee or a licensee, is required to furnish the information relating to working of patent, statement as to the extent to which the patented invention has been worked. This must be submitted on Form 27 by 31 March each year for the previous year ending 31 December.
This is an international treaty governing the deposition of microorganisms, cell lines etc in international approved authority approved by WIPO for the purpose of patent applications in any country that is a party to it. Because of the difficulties and, on occasion, of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others. There are many international depositories in many countries, which are recognized under the Budapest Treaty. IMTECH, Chandigarh is a recognized depository in India.
Since there is no worldwide patent, the applicant has to file his patent application in respective countries separately to obtain protection on his invention. The following are the routes available to the applicant to file his International application in foreign country.
1) Paris Convention: The Paris Convention for the Protection of Industrial Property, established in 1883, provides for 12 months time to file the patent application in the member countries from the date of filing of the earliest application.
2) Patent Cooperation Treaty System: PCT is a system which allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. Not only does the PCT enable extended time period, it also simplifies filing procedure through a single application. The PCT system also provides for publication of application, International Search and International Preliminary Examination before entering the national phase.
The PCT is an international treaty with more than 150 Contracting States which are bound with certain formal requirements set out in the Treaty and Regulations. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single―international patent application instead of filing several separate national or regional patent applications however, granting of patents remains under the control of the national or regional patent offices after the corresponding ―national phase application has been filed and the national phase application is assessed as per patent law of that jurisdiction. Any PCT international application may be filed designating India and it shall deemed to be an application if the corresponding national phase application has also been filed.
The PCT procedure includes:
- Filing: File an international application with a RO/IN national patent Office or directly with International Bureau (IB) of WIPO, complying with the PCT formality requirements and fees. In India PCT application are filed at appropriate patent offices decided on the basis of territorial limits.
- International Search: An ―International Searching Authority (ISA) identifies the published patent documents and technical literature (―prior art) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention‘s potential patentability. Indian Patent office, Delhi Branch performs the function of ISA on receipt of prescribed fee specified.
- International Publication: After expiration of 18 months from the earliest filing date (Priority Date), the content of your international application is disclosed to the world.
- International Preliminary Examination (optional): one of the ISAs on request carries out an additional patentability analysis, usually on an amended version of your application. Indian Patent office, Delhi Branch performs the function of International Preliminary Examination (IPEA) on receipt of prescribed fee.
- National Phase: After the end of the international PCT procedure, usually at 30/31 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
- In India, 31 months is maximum time limit to enter national phase. To enter national phase an application corresponding to an international application is made in Form 1.
PCT international patent application may be filed by a national or resident of a PCT Contracting State. If there are several applicants named in the international application, only one of them needs to comply with this requirement.
PCT applications can be filed electronically with RO/IN or RO/IB which accepts such filings (Indian Patent office does not accept full e-filling of PCT international applications). WIPO web service (ePCT-filing) helps to prepare applications by automatically validating the entered data and drawing your attention to incorrectly or inconsistently completed parts.
PCT international application in India shall be filed with the appropriate office in triplicate either in English or Hindi. However, the request can be filed only in English.