FAQS-PATENTS

FAQS-PATENTS

In India, a Patent application is to be filed along with the requisite forms and the prescribed fees. The Patent application should essentially include:

1. Name, address, nationality of the Applicant(s)
2. Name, address, nationality of the Inventor(s)
3. Provisional/ Complete specification (in English or Hindi) along with drawings (if any).
4. Details of one or more priority applications from which priority is claimed
5. The following documents can be filed within a prescribed time after the filing of the Patent application:
Power of Attorney
Proof of Right (Assignment from the inventor(s) to the applicant(s)).
Particulars of the cognate foreign Patent applications corresponding to the Indian Patent Application (if applicable)

In India, a Patent application can be filed as: (i) an Ordinary application (directly as a first filing with the Indian Patent office); or (ii) a Convention application using the convention route; or (iii) a National Phase Patent application of a PCT International application using the Patent Cooperation Treaty (PCT) route. Using the Convention route, a Patent application is required to be filed within 12 months from the earliest priority date. Using the PCT route, a National Phase Patent application is required to be filed within 31 months from the earliest priority date.
Typically, it may take around 2 to 5 years to register a Patent in India.

Yes, the grant/ registration process for a Patent can be expedited.

In case of National Phase Patent application based out of PCT International Application, an "express request" can be filed in a requisite form along with the prescribed fees for expediting the processing/ examination of the Patent application. On filing a regular examination request, a Patent application is only examined after 31 months from the earliest priority date, however, on filing an "express request", a Patent application may be examined before 31 months from the earliest priority date.

In case of a Convention Patent application or an Ordinary Patent application, a "request for early publication" along with a request for examination can be filed in requisite forms along with the prescribed fees. On filing a "request for early publication", a Patent application is ordinarily published within one month of filing such a request that otherwise would ordinarily be published after 18 months from the date of filing/ priority date of the Patent application. Since a Patent Application is only examined after publication, an early publication assists in putting the Patent application in the examination queue earlier than the usual timeframe wherein examination process commences after 18 months (i.e., after publication) from the date of filing/ priority date.
Any new product or process involving an inventive step and capable of industrial application can be Patent protected in India. (Please refer to answer for question 6 for information with regard to subject matter not considered as patentable inventions).

A Patent granted under 'The Patents Act' of India confers the following rights upon the patentee:

(i) For Product Patent: The exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing the product in India.
(ii) For process Patent: The exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing a product directly obtained by that process in India.
Yes, every Patent application undergoes a substantive examination. Substantive examination is conducted to ascertain novelty, inventive step/ non-obviousness and industrial applicability of the invention disclosed in the Patent application.

In India, a Patent application is only examined after a request for examination has been filed by an applicant. Post-examination, a first examination report (FER) and one or more subsequent examination reports (if applicable) are issued by the Examiner. The FER and the one or more subsequent examination reports may have procedural (relating to formal documentation) and substantive objections (relating to novelty and/or inventive step/ non-obviousness of the disclosed invention in light of prior art documents). The time line for responding to all examination reports is within 12 months from the date of issuance of the FER. Further, a hearing (i.e., a personal interview with the Examiner/ Controller) may be required if the objections cannot be resolved in response to the examination reports.
As per 'The Patents Act' of India, 'new invention' or 'novelty' means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of Patent application with complete specification, i.e., the subject matter has not fallen in public Domain or that it does not form part of the state of the art.

Furthermore, the 'inventive step/non-obviousness' relates to a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to any person skilled in the art.
In India, any new product or process involving an inventive step and capable of industrial application constitutes an invention, and satisfies to be a Patentable subject matter. However, the following subject matter does not constitute Patentable inventions in India:

1. Inventions that are frivolous or claim anything contrary to established natural laws or whose use/ commercial exploitation could be contrary to public order/ morality, or causes serious prejudice to human/ animal/ plant life or health or to the environment;
2. Mere discovery of a scientific principle; formulation of an abstract theory; discovery of any living thing or non-living substances occurring in nature;
3. Mere discovery of a new form of a known substance not resulting in the enhancement of the known efficacy of that substance; mere discovery of any new property or new use for a known substance or of the mere use of a known process/ machine/ apparatus unless such process results in a new product or employs at least one new reactant;
4. Substances obtained by mere admixture resulting in the aggregation of properties of the components or a process for producing such substances;
5. Mere arrangement/ re-arrangement/ duplication of known devices each functioning independently of one another in a known way;
6. Method of agriculture/ horticulture;
7. Process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings/ animals to render them free of disease or to increase their economic value or that of their products;
8. 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;
9. Mathematical/ business method/ computer program per se/ algorithms;
10. Literary/ dramatic/ musical/ artistic work/ any other aesthetic creation;
11. Mere scheme/ rule/ method of performing mental act/ method of playing game;
12. Presentation of information;
13. Topography of integrated circuits;
14. Inventions relating to traditional knowledge or an aggregation/ duplication of known properties of traditionally known component or components;
15. Inventions relating to atomic energy.
In India, an appeal for an application of Patent, which has been denied/ refused by a decision/ order/ direction of the Controller, may be made to the Appellate Board especially established for appeals to intellectual property matters. Further, the appeal should be made in the prescribed form along with the prescribed fee, and shall be accompanied by certified copy of the decision/ order/ direction of the Controller that is appealed against. Furthermore, the appeal should be made within three months from the date of the decision/ order/ direction, as the case may be, or within a further time period as the Appellate Board may, in accordance with the rules, allow.
Yes. Both a pre-grant and post-grant opposition can be filed. Pre-grant opposition: Any person may provide a representation, in writing, to oppose the grant of a Patent with regard to a Patent application at any time after the publication of the Patent application but before a Patent has been granted. Such a representation may be made along with a statement and evidence in support of the opposition. The opposition may be made on the grounds: for lack of novelty and/or inventive step/non-obviousness; for wrongfully obtaining a Patent; for being a non-patentable subject matter; for insufficient and unclear invention description in the specification; for failure to disclose and/or fraudulent disclosure with regard to information on corresponding foreign applications; for not meeting the timelines as prescribed by 'The Patents Act' of India; and for, wherever applicable, failure to disclose and/or fraudulent disclosure of source of biological material used for the invention.

Post-grant opposition: Any person interested may give notice of opposition to the Controller in a prescribed manner at any time after the grant of the Patent but before expiry of a period of 12 months from the date of publication of the grant of Patent. The notice of opposition should be filed along with a written statement, which should clearly mention the nature of an opponent's interest, the facts upon which the opponent has based his case, the relief which the opponent seeks, and the evidences. The opposition may be made on any one or more of the grounds listed above for pre-grant opposition.
For modifying/ amending a Patent, a patentee may file an application for leave to amend the Patent, i.e., to amend the complete specification or any document relating thereto, in the requisite form along with the prescribed fee. Further, the application shall necessarily state the nature of the proposed amendments (in an annexed copy) with supporting reasons for the proposed amendments. It is imperative to note that the amendments to Patents are only allowable by way of disclaimer, correction or explanation; made only for the purpose of incorporation of actual fact; and without resulting in inclusion of subject matter neither disclosed nor shown in the specification before the amendment, or inclusion of subject matter not falling wholly within the scope of claim(s) of the specification before the amendment.
Foreign filing permission under 'The Patents Act' of India: In this provision, any person resident in India (when the invention was conceived), shall apply for a permission for making a Patent application outside India for an invention. Such permission is required when a Patent application for the same invention has not been made in India. In case a Patent application is filed in India for the same invention, then the applicant has to wait for six weeks before a Patent application can be filed outside India. [Through-out we have used the term, 'Patent application'.]

For obtaining the permission, a description of the invention highlighting the inventive aspect is to be filed with the Patent Office.

The permission is ordinarily dispatched within 21 days of filing the permission request.
A Patentee may inform, in writing, the infringer, i.e., by sending a notice of cease and desist (such as a notice to stop the infringers from performing the act of making, using, selling, offering for sale, importing product(s) covered under a Patent) to the infringer to settle the issue harmoniously. Alternatively, the Patentee may approach courts (such as a district court or high court) for instituting infringement law suits against the infringer in order to resolve infringement issues.

It is to be noted that although a Patentee is entitled to institute any proceeding for infringement after the grant of the Patent, the damages in infringement law suits may be calculated from the date of publication of the corresponding Patent application as the Patentee has the privileges and rights from the date of publication of the Patent application.
While the statute does not expressly discriminate between different types of Patents for purposes of enforcement, Patents falling in the realm of public health will generally be harder to enforce because Courts are always called upon to balance the larger interests of society with the specific rights of the Patentee.
In case of an infringement suit that is filed for a Patented product, the burden of proof lies with the patentee or a person deriving title/ interest in the Patent from him (plaintiff) in order to prove that the product made/ used/ sold/ offered for sale/ imported in India by an infringer (defendant), is identical to the patented product.

In case of an infringement suit that is filed for a Patent related to a process for obtaining a product, the court may direct the infringer (defendant) to prove that the process used by him to obtain the Product (identical to the product of the patented process), is different from the patented process if,

1. subject matter of the Patent is a process for obtaining a new product; or
2. there is substantial likelihood that the identical product is made by the process, and the patentee or the person deriving title or interest in the Patent from him (plaintiff), has been unable through reasonable efforts to determine the process actually used.

However, this is applicable only when the Patentee or the person deriving title or interest in the Patent from him (plaintiff) proves that the product is identical to the product directly obtained by the patented process.
A Patentee (plaintiff) may institute an infringement law suit in a court (such as a district court) against an infringer. Further, the court may provide relief to the patentee by granting an injunction, and damages/ an account of profits, as applicable and on the request of the patentee. The court may also order that goods, which are found to be infringing, and materials used for the creation of the infringing goods, shall be seized, forfeited or destroyed, as the court deems fit.

The damages/ awards bestowed in infringement law suits may be calculated by evaluating the demand for patented inventions (products), and the extent to which an infringer has gained profits. It is to be noted that although a patentee is entitled to institute any proceeding for infringement after the grant of the Patent, the damages may be calculated from the date of publication of the corresponding Patent application as the patentee has the privileges and rights from the date of publication of the Patent application.
Generally, an appeal against an interim order of the Court takes about 3 months to about 12 months to be decided. An appeal from a final judgement may take anywhere from about 1 to about 3 years.
In cases where a Patent is revoked by any person interested (opponent), Court may establish issues based on the petition as filed and the facts leading to the dispute. Thereafter, the Court may assign the burden of proof to either party, so to say, either the plaintiff (person interested/ opponent) or the defendant (patentee). For example, when an opponent seeks to invalidate claims of a Patent, then the onus may fall on the opponent to prove the same in support of the reasoning, such as the invention is not novel and/or does not involve any inventive step/non-obviousness; the Patent was obtained on a false suggestion/ representation; and so forth.
In any infringement law suit or in any other proceeding before a court, independent scientific advisers may be appointed to assist the court or to inquire and report upon any question of fact or of opinion as it may formulate.
The patentee or its exclusive licensee or any other person deriving a title or interest in the Patent may act in a litigation case in court.
Alternative dispute resolution methods such as arbitration and/or mediation may be availed of by the parties at their option.
Compulsory Licence and Revocation/Invalidation of Patent for non-working of patented invention in India:

Every patentee and/or licensee is required to file a periodical statement as to the extent to which the Patented invention has been commercially worked in India.

At any time after 3 years from date of grant of Patent, any person interested may make an application for grant of compulsory licence on Patent on ground of non-working of the patented invention in India.

Further, at any time after the expiration of 2 years from the date of granting the first compulsory licence, any person interested may apply for revocation/invalidation of the Patent on ground of non-working of the patented invention in India.

Disclaimer : The sole purpose of this article is for information only; and not to be construed for any legal advice.