Patents
A patent is a monopoly right granted by the government to an inventor for excluding others from making, selling, offering for sale or importing the alleged invention in return of the public disclosure. A patent application is filed for an invention which as defined is “a new product or process involving an inventive step and capable of industrial application”. A patent application takes care of the functional and technical aspects of the product or process and must satisfy certain criterion below in order to be granted a patent.
Novelty meaning something new
Non Obviousness means technical advance as compared to the existing knowledge or having economic significance or both which makes the invention non obvious to the person skilled in the art
Utility
Patent specification is a techno-legal document that has to cover technological details as well as legality in claims of the patent specification. Claims are the most powerful and enforceable component of the patent specification and define the scope and extent to which the invention is or can be protected. Conducting a good disclosure with inventors, Understanding of technology domain, and extracting the novelty and inventive step in the invention, knowledge of patent drafting and prosecution is key to draft a quality patent specification.
Patent Prosecution in India:
Patent prosecution in India refers to the process of obtaining and enforcing patent rights. Patents are exclusive rights granted to inventors for their inventions for a limited period. Patent prosecution in India is governed by the Indian Patent Act, of 1970, and the Indian Patent Rules, of 2003.
To obtain a patent in India, an inventor must file a patent application with the Indian Patent Office. The application must include a detailed description of the invention, claims to define the scope of the invention, and drawings (if applicable). The application must also include a statement of commercial applicability and the names and addresses of the inventors.
The patent office in India conducts a thorough examination of each patent application to ensure that the invention is new, non-obvious, and has industrial applicability. The examination includes a search for prior art and an assessment of the claims. The applicant is also given the opportunity to amend the claims or provide additional information in response to the examination report.
If the patent application meets all the statutory requirements, the patent office grants the patent. Once granted, the patent owner has the exclusive right to make, use, sell, or import the invention in India for a period of 20 years from the date of filing. The patent owner may also license or sell the patent to others.
Infringement of a patent is a violation of the exclusive rights of the patent owner. The Indian Patent Act provides for civil remedies for patent infringement, including injunctions and damages. The Act also provides for criminal penalties for intentional infringement.
When we discuss patent prosecution, we are referring to what occurs to a patent application when it is submitted to the patent office and how it is handled there until it is granted. So, the prosecution is typically thought of as a set of events that take place between two scheduled timetables. The application period is the first, and the grant period is the second. The first step in the application process for patents in India is to submit a detailed patent application with compelling patent claims. The fundamental statute governing the filing and regulation of patent applications in India is the Patents Act, 1970.
Patent Lifecycle:
Invention Disclosure:
The patent professional and the inventor sign a nondisclosure agreement. After this agreement has been signed, the professional must receive full access to the details of the invention before he/she may proceed with its implementation.
Prior art search/ novelty search:
This stage entails a thorough search for any prior inventions in the field of invention or works of art that are similar to the alleged invention to determine whether or not the current invention is patentable.
After investigating whether or not the invention is patentable in light of the provisions of the patent law, the decision to file the patent application will be made. However, it is not mandatory to perform the patentability assessment and can also be done after the patent application is filed and the priority date is secured.
What are not inventions:
Any innovation or creative idea that falls under Sections 3(a) through 3(p) is not patentable. Because of this, applicants and inventors should always confirm if their original ideas belong within the aforementioned sub-sections of section 3 or not. Additionally, Indian patent agents must ensure that the inventions for which patent applications must be submitted do not come under the aforementioned Section 3 sub-sections so that the patent applications are drafted properly.
The below-mentioned sub-sections are described in the patent act as “what are not inventions”:
(a) an invention which is frivolous or which claims anything obviously contrary to well-established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;
(d) the mere discovery of a new form of a known substance which does not result in the 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. Explanation. -For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(h) a method of agriculture or horticulture;
(i) any process for the 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.
(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programe per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components or components.
However, as such patent rights are territorial rights and every country has their own provisions regarding the interpretation of sub-sections especially Section 3(i). For example, inventions related to “a method of treatment” are patentable in US and Australia whereas “a method of treatment” is not patentable in India, Europe, Japan and Korea etc.
Drafting of Patent specification:
One of the most crucial aspects of the patent application process is the drafting of the patent application. The invention is judged on three basic criteria such as:
- Novelty
- Inventive Step or Technical Improvement
- Industrial Application
These criteria need to be followed while performing novelty searches or patentability assessments and while drafting the patent specification as well. The typical contents of specifications as per Section 10 of the Indian Patents Act, 1970 are as follows:
- Title
- Field of the invention
- Background of the invention
- Object of the invention
- Summary of the invention
- Detailed Description of the invention
- Claims
- Abstract
- Drawings
The patent application can be filed by any person claiming to be the true and first inventor(s) or any person being the assignee of a person claiming to be the true and first inventor(s) or the legal representative of any deceased person who can immediately after his death is entitled to make such application as per Section 6 and Section 134 of the Indian Patents Act, 1970
The applicant can, with due discussions with the patent professional, decide to file for either a provisional specification or a complete specification directly. The provisional specification should describe the nature of the invention & contain the description of essential features of the invention. Provisional Specification differs from the complete specification in terms of the detailed description, additional data and most important claims. Claims essentially set a periphery around the invention, whereas provisional specification is written very broad scope of the invention that can be narrowed down in the complete specification with the help of defining the scope, objectives and claims.
Some mandatory forms to be submitted along with the patent application are as follows:
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Provisional Specification
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Form 1: Application for grant of the patent
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Form 2: Provisional Specification
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Form 26: Form for authorization of a patent agent/ or any person in a matter of proceeding under the act.
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Form 28: To be submitted by a small entity/ startup/ educational institution.
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Complete Specification
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Form 1: Application for grant of the patent
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Form 2: Complete Specification
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Form 3: Statement of Foreign Filing
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Form 5: Declaration as to Inventorship
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Form 9: Request for Early Publication (optional)
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Form 18: Request for Examination
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Form 18-A: Request for expedited examination
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Form 26: Form for authorization of a patent agent/ or any person in a matter of proceeding under the act.
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Publication of the Patent Application:
As long as the Controller of Patents or the Government of India does not demand confidentiality in that regard, patent applications are typically published in India 18 months from the filing or priority date, whichever is sooner, or upon request in this regard. On the date of publication, the applicant has the same rights as a patent owner, but those rights can only be enforced if the patent is granted.
In addition, the applicant can also make the request for the early publication of the patent specification before the expiry of 18 months which will be published within 1 month of making such a request.
The publication of the patent application serves advantageous to the applicant as the applicant enjoys the privileges and rights in the patent as if a patent for the invention has been granted on the date of publication of the application.
Pre-Grant Opposition:
After the patent application is published in the Indian Patent Journal until the patent is granted, any person may, by representation, file a pre-grant opposition to the patent application, provided that a request for examination is filed. So, the patent cannot be issued until the objection has been overruled.
Pre-grant opposition is legally defined in India by Section 25(1) of the Indian Patent Act, 1970 and Rule 55 of the Patents Rules, 2003. Any person may file an opposition in writing any time before the patent is granted and at any time after the patent application has been published. Since an objection cannot be made merely on the basis of the abstract, it is required to receive the whole specification from the official website. This method serves as a barrier that examines the application’s legitimacy prior to the actual issuance of patent rights. It is known as “representing” the opposition.
Some of the major pre-grant oppositions as laid down in Section 25(1) of the Indian Patents Act are:
- Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the opponent.
- Prior publication: The invention as claimed was already published before the priority date.
- Prior claim: The invention as claimed is known or used by the public before the priority date.
- Obviousness: The alleged invention or claims are obvious and do not involve inventive steps meaning there are no technological advancements compared to the prior art.
- Non-patentable subject matter: The subject of the application is not considered to be an invention under the Patent Act or falls in the category of “non-patentable inventions” under Section 3 of the Indian Patents Act.
- Insufficient description: The patent specification does not precisely explains the invention or the best method of performing the invention and how it is solving the problems existing in the prior art.
- Non-disclosure: The applicant has failed to disclose all the details about corresponding applications outside India which were required under Section 8 of the Act.
- False disclosure: The applicant has provided materially false information.
- Time limit: The conventional application was not filed within the specified period of 12 months from the date of the first patent application made in a convention country.
- Biological material: The specification failed to disclose the origin or source of the biological material, if any, used in making the invention or has mentioned the incorrect source.
- Traditional knowledge: The invention was anticipated taking into consideration the knowledge possessed by indigenous communities anywhere in the world.
Examination of the Patent Application:
After filing the patent application, the applicant must file a request for an examination in order to process an application for the examination. The request for examination shall be filed in Form 18 within 48 months from the earliest priority date, the applicant or any person interested may submit a request for examination of the patent application by paying the statutory fee. This step in the prosecution is important and mandatory, failure to comply with these requirements the patent application will not be examined and shall result in the abandonment of the patent application. There is no extension provided to comply with the requirements.
The report made by the examiner to the Controller after referring to the application, specifications and other documents related to the invention for which the patent is being sought and taking into account the considerations prescribed under Section 12(1) is known as the First Examination Report (FER). The objections made by the examiner should be conveyed to the applicant in the FER.
Additionally, an applicant can also file a request (Form 18A) for an expedited examination of the patent application along with the prescribed fee on the following grounds:
- Wherein an international application submitted in India by a competent International Searching Authority or elected as an International Preliminary Examining Authority; or
- Where the applicant is a startup.
- Where the applicant is an educational institute
- Where at least one applicant is a women applicant.
The first examination report consists of the objections with respect to novelty, inventive step, utility and other statutory requirements of patentability under section 3 and section 4 of the Indian patent act. The objections are determined or placed forward by comparing the alleged invention with respect to the anticipation and prediction by previous publications; and prior claims.
The objections arising from the specification of the invention for which a patent is sought are conveyed to the applicant and the applicant is given an opportunity to be heard or he may amend the complete specification to the satisfaction of the Controller. The applicant must comply with the requirements within a period of 6 months from the date of the FER. This can be further extended by 3 months.
Hearing before the examiner:
If the examiner is satisfied with the justifications or amendments in the response to FER, the applicant will be given a patent certificate. Nonetheless, the examiner has the option to issue a second examination report or a hearing notice if the applicant’s response to the examination report is not satisfactory. The applicant is given a second chance to respond to the second examination report or to appear before the examiner for a hearing and submit a hearing submission within 15 days from the date of hearing.
The examiner reviews the documents submitted by the applicant once again and makes a final decision of whether to proceed with the grant of the patent or refusal of the patent. Overall, the process and timeline can be tricky at times hence it is recommended to take help from an Patent Professional in order to increase the likelihood of the patent to be put in order for grant.
Grant of the patent:
The application moves forward to be granted when all objections have been resolved. If all requirements under the Act have been met, a patent is often awarded within a few months of the filing of the response to the FER or the hearing.
The Controller publishes that the patent has been granted and thereupon the application, specification and other documents are made available and open for public inspection.
Following the patent’s grant, the patentee is required to pay a renewal fee each year to maintain the patent in effect. Beginning at the end of the second year following the date of filing, there is a renewal cost. Nevertheless, only after the patent has been granted is the renewal fee and back payments due.
The below infographics summaries the patent prosecution along with timelines:
We provide following services
Patent Forms:
For What
Form No.
Section & Rules
For
e-filing
Natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)
Other(s), alone or with natural person(s) or Startup(s) or Small entit(y)/(ies) or educational institution(s)
Application for Grant of Patent
Sections 7, 54 and 135 and rule 20(i)
1600 Multiple of 1600 in case of every multiple priority.
8000 Multiple of 8000 in case of every multiple priority.
Request for Extension of Time
On request for extension of time under sections 53(2) and 142(4), rules 13(6), 80(1A) and 130 (per month)
Sections 53(2) and 142(4), rules 13(6), 24B(4)
(ii), 80(1A) and 130
480
1000
1000
Claim or Request Regarding any Change in Applicant for Patent
Sections 20(1), 20(4), 20(5) and rules 34(1),
35(1) or 36(1).
800
4000
Claim or Request Regarding Mention of Inventor as Such in a Patent
Sections 28(2), 28(3) or 28(7) and rules 66, 67, 68.
800
4000
i) before grant of patent
i) after grant of patent
i) where amendment is for changing name or address or nationality or address for service
Section 44 and rule 75
800
1600
320
4000
8000
1600
2400
12000
2400
12000
1) under section 11B and rule 24(1)
2)under rule 20(4)(ii)
28000
4000
40000
2400
12000
No fee
No fee
No fee
