Intellectual property rights in India (IPRs in India) consist of trademark, copyright, patents, geographical indication, designs, etc. IPRs in India are adequately protected and efficiently enforced. In this article, Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss about patents registration in India and their procedures, formalities and required documents.
Patent law of India is incorporated in the Patents Act, 1970 of India. In some countries utility protection is also granted along with the patents. However, utility model protection in India is still not available and only patent protection is extended. So what does the expression “patent” means?
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.
Patents rights are generally territorial in nature and they do not extent to jurisdictions other than the one that has granted it. However, the applicant who has filed the patent in one jurisdiction, says India, is entitled to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. In short, there is no “international patent” that is valid worldwide.
It is also possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.
Before filing a patent application, the applicant must be aware about the patentable inventions. In India, 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 section 3 and 4 of the Patents Act.
Once an applicant is satisfied about the patentability of her invention, a patent application can be filed either by true and first inventor or her assignee, either alone or jointly with any other person. Further, 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 complete specification or with provisional 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 application. There is no extension of time to file complete specification after expiry of said period.
Further, some precautions must be taken before a patent application is made. The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication.
However 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 a exhibition organised by the Government or disclosure before any learned society or published by applicant.
One of the most important documents of a patent application is the patent specification. A patent specification can be prepared by the applicant himself or his registered and authorised agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.
A provisional specification can also be filed instead of complete specification. This is useful where the applicant wishes to claim a “priority date” for her invention. Moreover, filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of her 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.
Generally, every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. 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.
It must be noted that the patent application is not examined automatically after its filing. The examination is done only after receipt of the request of examination either from the applicant or from third party. 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. However, an express request for examination before expiry of 31 months can be made in respect of the applications filed under Patent Cooperation Treaty known as National Phase applications by payment of the prescribed fee.
After examination, the Patent office 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 twelve months from the date of FER. In case, the application is found to be in order for grant, the patent is granted, provided there is 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 is not able to comply with or meet the requirement within 12 months, or does not submit the documents which were sent to him for compliance within the said period, the application is deemed to have been abandoned.
If applicant has not complied with the requirements within the prescribed time, and no request for hearing has been made by the applicant, the controller may not provide the opportunity of being heard. However 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.
In short, after filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Patent office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
Once granted, the term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.