All inventions are not Patentable under the Indian Patents Act. The Indian Patent Act requires the invention to be new, useful and non-obvious. Besides the invention must pass through certain parameters prescribed by Government of India, such as Inventions that are frivolous or claims anything obviously contrary to well established natural laws, or where primary or intended use or commercial exploitation of invention could be contrary to public order or morality or causes serious prejudice to human, animal or plant life or health or to the environment or mere discovery of a scientific principle or formulation of an abstract theory or discovery of any living thing or non-living thing or non-living substances occurring in nature etc.
Types of Patents in India
Patents in India can be classified under three categories depending upon their priority claim.
Ordinary patent application
Conventional patent application
PCT national phase patent application
Ordinary Patent Application
Ordinary patent application can be filed in India along with a provisional or complete specification. It is further distinguishable from other patents that it does not claim any priority from any other application. Specification is a technical disclosure statement that enables a person ordinarily skilled in the art to perform the invention. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. Provisional application has to be followed by a complete specification within 12 months.
Convention Patent Application
Convention Patent Application in India claims priority from a convention application and has to be filed in India within 12 months from date of priority and accompanied by a complete specification.
PCT National Phase Patent Application
PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within 31 months from date of priority and accompanied by a complete specification in English. The English translation of the priority documents (if filed in language other than English) should be filed within 31 months from the date of earliest priority or within 3 months of requisition made by the Controller. Where PCT/IB/304 is not issued by WIPO, certified copy of the priority documents should be filed within 31 months from the date of earliest prioroty.
Patent offices in India
There are four patent office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the patent office within whose territorial jurisdiction the agent/ attorney for applicant is located.
Ordinary Patent filing in India
The basic mandatory requirements for filing an ordinary patent application in India are as follows:
Name, address, particulars and nationality of applicant/s for patent
Name, address and nationality of inventor/s of patent
Provisional specification or complete specification with description, claims, abstract, drawings
Other filing requirements for Oridinary Patents India:
Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification.
Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application.
Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.
Conventional Patent filing in India
The basic mandatory requirements for filing an ordinary patent application in India are as follows:
Name, address, particulars and nationality of applicant/s for patent
Name, address and nationality of inventor/s of patent
Complete Specification with description, claims, abstract, drawings
Other requirements for filing Conventional Patent Applications in India:
Declaration as to inventorship within 1 month of filing application
Certified copy of priority document, within 3 months from date of requisition by Controller
English translation of Complete Specification, Priority document along with verification in support within 3 months from date of requisition by the Controller
Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.
Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.
PCT National Phase Patent filing in India
The basic mandatory requirements for filing a PCT National Phase Patent Application in India are as follows:
PCT Application no. & International filing date
Earliest Priority date
Title of the invention
English Translation of PCT Complete specification with claims, abstract and drawings in English or English translation
Other requirements for filing PCT National phase Patents in India:
Declaration as to inventorship within 1 month of filing application
Certified copy of priority document where PCT/IB/304 not issued by WIPO within 31 months from date of priority
English translation of Complete Specification, Priority document along with verification in support within 31 months from date of priority or within 3 months of requisition made by the Controller.
Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.
Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary. Should be filed as soon as possible so that the application can be proceed towards publication at the earliest and must be filed within 3 months of demand raised by the Patent office.
Categories of Applicant in India
There are 3 categories of Applicant w.e.f. Febraury 28, 2014.
(1) Natural Person/s;
(2) Small Entity and
(3) Other Entity.
All non-natural person fall under either other entity by default. However to claim small entity Form 28 along with evidence in support of small entity status has to be filed. In case of Indian Applicants, such document is Registration certificate under Small Scale Industries. While for applicants based in other countries they need to submit document that verifies or establishes that Applicant's whose investment in plants/ machines in case indulged in manufacturing/ production of goods is less than 10 crores and in case indulged in service industry the investment in equipment is less than 5 crores. It is to be noted that while calculating investment in plants and machinery, the cost of pollution control, research and development, industrial safety devices, and such other things specified under THE MICRO, SMALL AND MEDIUM ENTERPRISES DEVELOPMENT ACT, 2006 is to be excluded. Foreign entity could file a duly notarised affidavit to that effect to claim small entity status.
Patent Prosecution in India
In India Patent prosecution includes the following stages:
Filing of patent application
Publication of patent application on request or after 18 months from date of filing or priority whichever earlier
Filing of request for Examination within 48 months from date of application or priority whichever is earlier
Issuance if First Examination Report containing all the objections to grant of patent for complying within 12 months from date of issuance of same
Responding to the examination report and compliance
Issuance of further Examination report/s till all objections are complied as per satisfaction of the Examiner
Responding to further Examination reports till all objections are complied or objections are contested.
Interviewing the Examiner
Hearing with Controller, if requested within prescribed time and objections are contested
Acceptance of patent application on or before final date of acceptance i.e. 12 months from date of issuance of first examination report
Grant of Letter Patent Document by Patent office within 7 days of acceptance of application
Publication
The Patent applications in India are ordinarily published after 18 months from date of filing or priority whichever earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by Controller of Patents or Central Government. From the date of publication the applicant for patent has same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication of application subject to Indian Limitation Act.
As per the recent patent procedures laid down by the Controller General of Patents, Trademarks and Design, the application shall be published only if the complete specificaiton is filed in English or Hindi, Abstract is as per provisions of Indian Patent Act and Power of Authority in favour of agent is filed (if applicable) either with with application or within 3 months of requisition made by the Patent office in this effect.
Pre- Grant Opposition
From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application provided a request for examination has been filed. Thereupon, the patent shall not be granted until the opposition is set aside.
Examination
For substantive examination of the patent application in India a request for examination has to be filed within 48 months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction whichever is later. In case of divisional applications the request has to be made within periods stated above or within 6 months from date of filing of divisional application whichever is later.
Now-onwards the Examination report shall be issued by email in respect of application having the email address in address of service furnished along with Application form. The complete specification shall not be forwarded along with the application, but in exceptional cases, the pages where some amendment or correction is required, only those pages of the specification would be send by email. Where no email id is provided, the examination report etc. shall be dispatched by post.
Patent Grant
Once the applicant satisfies all the objections of the Examiner and complies with all the requirements under the Indian Patents Act and the Patents Rules, the Patent Office issues an intimation regarding acceptance of application and within 7 days of acceptance of the application the Letters Patent Documents is issued to the applicant.
Post Grant Opposition
In India patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.
Duration of Patent and Renewal
Duration of Patent in India is 20 years from date of filing in India for ordinary as well as conventional patent applications and for PCT national phase patent applications 20 years from date of filing of International PCT application. After grant of patent renewal fee has to be paid in respect of 3rd year onwards till the 20th year and must be paid before the expiration of respective years. The patent shall be revoked if renewal fee is not paid in prescribed time and during the period between the revocation of patent till it is restored, the patentee cannot take any action against any infringement of patent by anyone.
Discount in Official Fee
India allows discount in official fee to natural person as well as small entity. When the patent application is assigned to non-natural person (small entity or other than small entity), the entire discounted fee has to be paid at the time of registration of assignment.
