Frequently Asked Question - Patents
Discover answers to common patent-related queries, from application to enforcement. Get insights into patent protection with our FAQs.
What is a Patent?
A patent is an exclusive statutory and territorial right granted by the government to an inventor or applicant for an invention that is new, non-obvious, and industrially applicable.
What is the procedure for filing a Patent Application in India?
In India, a patent application may be filed via three routes:
1. Ordinary,
2. Convention, and
3. PCT (Patent Cooperation Treaty).
Ordinary Application: involves drafting and filing a patent application, either as a provisional or complete specification, followed by publication 18 months post-filing. An examination must be requested within 31 months of filing, with subsequent responses to any objections for a patent to be granted.
Convention Application: Under the Paris Convention, a patent application in India is to be filed within 12 months of the initial application in the convention country, claiming priority from the earlier filing. The process involves submitting a complete specification, followed by similar publication, examination, and grant steps as in the ordinary application.
PCT Application: the process starts with filing a PCT application, generally within 12 months of the first application. This is followed by receiving an International Search Report and entering the national phase in India within 31 months of the priority date. The application undergoes an examination similar to the ordinary patent application process.
Each route necessitates the filing of forms (Power of Attorney, Proof of Right (Assignment from the inventor(s) to the applicant(s)), priority document, translations) and adherence to timelines.
Is there an examination of the Patent Application? If so, what is the procedure for the same?
Yes, every Patent Application in India undergoes examination. For this, a request for examination has to be made within 31 months from the date of the application's earliest priority.
Once the request for examination is filed, the Indian Patent Office (IPO) conducts a substantive examination of each Patent application. It issues a First Examination Report (FER) to ascertain the invention's novelty, inventive step/non-obviousness and industrial applicability. IPO may raise objections concerning formal requirements as well. The timeline for responding to FER is within six (6) months from the date of issuance of the FER.
The IPO may issue a second examination report or a hearing notice to resolve the outstanding objections if required.
What is a patentability search, and what is the importance of conducting such search?
A patentability search is a preliminary step in the patent application process, involving a detailed search and analysis of existing patents and non-patent documents available in the public domain to determine if an invention is new and non-obvious. This search helps assess whether an invention meets the essential criteria for patentability: novelty, inventive step, and industrial applicability. Conducting such a search is crucial for several reasons. It aids inventors in refining their inventions to enhance uniqueness and helps manage resources by determining if the patent pursuit is likely to succeed. The insights gained can also guide strategic business decisions, such as technology development and market positioning, while supporting preparing a robust patent application with well-defined claims. Ultimately, a patentability search mitigates the risk and ensures a strategic approach to patent filing.
What is an Applicant does not want to file an Application in India and only file outside?
For instance, if a person residing in India (when the invention was conceived) wants to file a patent application outside of India without filing a patent application in India, they must obtain foreign filing permission from the Indian Patent Office. To obtain the foreign filing permission, a request with a description of the invention and its key aspects is filed with the Indian Patent Office. Typically, such permission is obtained within 21 days of filing the request.
Alternatively, a person residing in India can file an Indian Patent Application and wait for six weeks before filing a patent application outside India.
What are the procedures after grant of a Patent?
A patent must be maintained by paying renewal/maintenance fees yearly for each granted patent. Additionally, every patentee and licensee must submit a statement of the working of each granted patent, specifying whether the patented invention has been commercialized/worked or not in that financial year.
What can be patented in India?
In India, novel inventions that involve an inventive step and have industrial applicability can be patented. These can include new products, processes, methods, or improvements to existing inventions.
Further, inventions should not be non-patentable subject matter per Section 3 of the Indian Patents Act.
What is the term of a patent in India?
The term of every patent is 20 years from the date of filing of application. However, in case of national phase 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.
Where is the Patent Application filed in India?
In India, there are four Patent Offices situated in Delhi, Mumbai, Chennai, and Kolkata. The appropriate office for filing the application depends upon the Applicant's address, domicile, place of business, or the location where the invention has been originated.
In case of foreign Applicants having no domicile or a place of business in India, the Patent Office will be determined based on the address for service of the appointed Patent Agent.
What is the date of first filing or the priority date?
The priority date is the earliest filing or first filing date of a patent application. In the first-to-file patent system, such as India, this date is crucial as it determines priority when there are multiple applications in the public domain with similar subject matter and the cut-off date for citing the prior arts.
Can pre-grant and post-grant oppositions be filed against patent applications/patents, and how do they work?
Yes, Indian Patent Law allows filing a pre-grant and post-grant opposition.
Pre-Grant Opposition: Any person may file a representation, in writing, to oppose the grant of 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 supporting the opposition. The opposition may be made on grounds such as 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 the expiry of a period of 12 months from the date of publication of the grant of the Patent. The notice of opposition should be filed along with a written statement, which should mention the nature of an opponent's interest, the facts upon which the opponent has based his case, the relief the opponent seeks, and the evidence. The opposition may be made on any grounds listed above for pre-grant opposition. The search examines if the invention meets the criteria of novelty, inventive step and/or non-obviousness.
Can an Applicant appeal the Patent Office's decision if a Patent Application is denied/refused?
If the Patent Office has refused a patent application, the applicant has the following two options:
- Review application before the Controller of Patents;
- Appeal to the High Court.
The applicant can file a Review Application before the Controller of Patents. In this case, the Controller who has passed the decision has to review his/her decision and is allowed to alter his/her judgment under extraordinary circumstances or circumstances that are unusual. This power vested in the Controller is governed by Section 77 (1) (f) of The Patents Act, 1970.
The applicant can also appeal this decision to the High Court within three months from the date of the refusal order.
Can an Applicant file a patent application outside of India?
Yes, an Applicant can file a convention application in accordance with the Paris Convention in the signatory countries within one year from the date of filing the Application in India.
Alternatively, an Applicant may also file a Patent Cooperation Treaty application (PCT Application) within one year of first filing in India.
What are the rights awarded upon grant of a Patent?
The Patents Act confers:
a. where the subject matter of the patent is a product, 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 for those purposes that product in India;
b. where the subject matter of the patent is a process, 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 for those purposes the product obtained directly by that process in India.
How are these rights enforced by a Patentee?
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) to institute infringement lawsuits against the infringer 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 lawsuits 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.
Disclaimer: The sole purpose of this article is for information only and not to be construed as any legal advice.