Patent FAQ

Intellectual Property Rights - Patent
Intellectual Property Rights
What is the meaning of Patent?

Patent is an intellectual property right, to make, use or sell an invention for a limited period of 20 years.

 

The Patent is granted to an entity on disclosing a technical invention, which may be a product (/system/apparatus/device) or process (/method/manufacturing) or both, which is novel or new and demonstrations inventive step or technological advancement over the existing technologies.

 

A Patent is governed by The Patents Act, 1970.

 

In the forthcoming section of this FAQ we have illustrated novelty and inventive step in detail.

What legal rights does a patentee have upon grant of a Patent in India?

A Patentee has following exclusive legal rights, on the technology for which patent is granted:

a) Product Patents: right to prevent third parties, from making, using, offering for sale or selling patented products in India. Also, the patentee can thwart the third parties from importing the patented product without permission in India.

b) Process Patents: right to prevent third parties, from using patented process, and using, offering for sale or selling the product obtained by the patented process in India. Also, rights can be enforced against the third parties involved in importing the product in India obtained from the patented process, for using, offering for sale or selling.

What are the other commercial benefits the patent holder can have?

The registration of any IP, not only patent protection, can have enormous benefits. To summarize few are:

  • Increasing monetization opportunities- by negotiations, licensing, selling, technology transfer etc.;
  • Marketing Strategy- companies can display their technologies as unique and different from existing technologies;
  • Reducing competition and raising company value- by creating a niche market for the patented products.
Are the patent rights enforceable in every country?

The patent rights are territorial in nature, i.e. patent is valid and its related rights are enforceable in countries where it has been registered/granted in accordance to the respective national laws. Therefore, it is always advisable that the applicants should identify the markets and jurisdictions which are commercially significant for the technology and accordingly decide and determine the strategy for Patent Protection or IP Protection.

What is the qualifying criteria for grant of a Patent?

The invention for grant of a patent should meet the following conditions:

 

Novelty (New/Novel)
The subject matter of the invention should be novel, which means it should not be available in public domain and form state of art, through anticipation by prior publication, in any document or claimed in any claim of already filed complete specification or disclosed orally or know to local or indigenous community as traditional knowledge.

 

Inventive Step (Non-Obviousness)
An inventive step means a feature of an invention that involves technical advancement and/or economic significance and that makes the invention not obvious to a person skilled in the art.

 

Inventive step is considered lacking, when an invention lies merely in verifying previous predictions, without substantially adding anything for technical advancement and/or economic significance in the art.

 

Industrial Applicability
An invention should be capable of being made and used in the industry (including big manufacturing setups, MSMEs, Cottage industry or other such similar industries).

Which inventions are not considered patentable in India?

The subject matter of the following inventions is not patentable:
a) any invention which is frivolous or commercial exploitation which is contrary to law, injurious to public, animal or plant life or health or environment;
b) discovery of scientific principal and living or non-living things occurring in nature or formulation of an abstract theory;
c) discovery of a new form of known substance which does not show enhanced efficacy or new property or new use;
d) admixture resulting in the aggregation of properties of its components or a process for producing such substance;
e) arrangement or rearrangement or duplication of known devices each functioning independently and in a known way;
f) method of agriculture or horticulture;
g) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment;
h) plants and animals in whole or any part thereof;
i) mathematical or business method or a computer program per se or algorithms;
j) anything which is include in the Copyright Act such as literary, dramatic, musical or artistic work or any aesthetic creation;
k) scheme or rule or method of performing mental act or method of playing game;
l) presentation of information;
m) topography of integrated circuits;
n) traditional knowledge; and
o) inventions relating to atomic energy.

How to ascertain patentability of an invention?

It is advisable to ascertain if the subject matter of an invention is patentable, before strategizing patent protection. In other words, through conducting search the inventors can ensure that the technology invented by him has not already been disclosed or available in public. The prior art search can be performed using the paid or unpaid databases. The unpaid database which can be accessed freely are:

  • Google Patents;
  • Indian Patent Office: inPASS;
  • World Intellectual Property Organization: PatentScope;
  • United States Patent and Trademark Office: PatFT;
  • European Patent Office: espacenet;
Who can apply for a Patent?

The application for patent can be filed by any of the following persons, either alone or jointly with any other person:

  • True and first inventor;
  • True and first inventor’s assignee; or
  • Legal representative of deceased true and first inventor or his/her assignee.
Which offices or authority accepts application for Patents in India?

The applicant can file a request for grant of a patent along with the requisite documents, at the appropriate Indian Patent Office (IPO). The IPOs are located at New Delhi, Mumbai, Chennai and Kolkata. The applicant can determine appropriate territorial jurisdiction on the following basis:

  • Indian Applicants: place of residence, domicile or business of the applicant in India;
  • Foreign Applicants: Indian address for service which is provided in the Indian patent application by the applicant.
Are the inventions related to biological material patentable in India?

Yes, the inventions disclosing use of biological material can be patented in India. The complete specification should sufficiently disclose source and geographical origin of the biological material. Further, when the biological material is obtained from India, the applicant has to submit a permission provided by the National Biodiversity Authority (NBA) before grant of a patent.

 

In case the disclosed biological material is not available to public, such biological material is required to be submitted with the International Depository Authority (IDA), on or before the date of filing of the application. Microbial Culture Collection (MCC), Maharashtra and Microbial Type Culture Collection and Gene Bank (MTCC), Chandigarh are recognized IDA in India.

When is an application of Patent published by the Indian Patent Office?

In the official journal of the Patent Office, applications are published after the expiry of 18 months from the application filing date or the earliest priority application date, whichever is earlier.

 

However, following applications are not published:
a) applications imposed with secrecy directions;
b) application is abandoned due to non-filing of the complete specification within 12 months from the date of filing of the provisional application; or
c) if request to withdraw the patent application has been filed 3 months prior to 18 months publication period.

 

The official publication of the invention is significant for the applicant, as from the date publication the applicant shall have the like privileges as if patent is granted. However, the applicant cannot institute any proceedings for infringement until patent is granted.

How can the process of the official publication of the Patent application be expedited?

The applicant can file a request for early publication along with the prescribed official fee in order to expedite the process of official publication of the patent application. In such a case, the application is published within 1 month from the date of such request.

What is request for examination?

It is mandatory for the applicant to file request for examination of the application within 48 months from the earliest priority application date or application filing date, whichever is earlier. Since, the Indian Patent Office examines the applications based on the date of filing of the request, therefore it is advisable to file the said request as early as possible.

 

If the necessary request is not filed within the prescribed deadline, the application is treated as withdraw by the applicant and cannot be restored or reinstated under any provisions of the Patents Act.

Besides the applicant, who can file a request for examination with the Indian Patent Office?

Any “person interested” can file request for examination, apart from the Applicant. An evidence of interest in the application is required to be provided by the “person interested” along with the request. Such, person interested is intimated about issuance of the examination report. A “person interested” means person engaged in or in promoting research in the same field to which the invention relates.

Can process of examination of the Patent application be expedited?

In the following categories request to expedite examination of the application can be filed or normal request can be converted into expedited request:

  • India has been chosen as the competent International Searching Authority (ISA) or elected as an International Preliminary Examining Authority (IPEA) in the corresponding PCT International Application; or
  • applicant is a startup; or
  •  applicant is a small entity; or
  • at least one of the applicants is a female, if the application if filed by joint applicants (natural persons); or
  • applicant is a department of the Government; or
  • applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
  • applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
  • applicant is an institution wholly or substantially financed by the Government; or
  • application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government; or
  • applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.
Is India part of Patent Prosecution Highway (PPH)?

Patent Prosecution Highway is a bilateral initiative between national Patent Offices, for providing accelerated/fast tracked patent prosecution, through use of work products, such as examination reports, written opinions, etc. of one office by the other patent office for fast grants.

 

Recently, a Patent Prosecuting Highway Pilot Program has been commenced between the Indian Patent Office and Japan Patent Office. However, number of request for Patent Prosecuting Highway Pilot Program in India has been limited to 100 cases per year.

Can a Patent application be withdrawn by the applicant?

The applicant can file a request to withdraw the patent application any time before the grant of a patent.

 

When the request to withdraw the application is filed within 15 months from the earliest priority application date, the application will not be published in the official journal of the Indian Patent Office.

 

Further, the Indian Patent Office refunds 90% of the official fee paid for request for examination, if the application is withdrawn by the applicant before the issuance of the first examination report/ office action.

What is the statutory deadline for submitting response to the first examination report/ office action? Can the said deadline be extended?

The deadline for filing response to the examination report is 6 months from the date of issuance of the examination report.

 

However, the said deadline can be extended for maximum 3 months by filing an appropriate request, before the expiry of the actual official deadline.

Can an applicant for Patent file request for adjournment of the hearing?

An applicant for a patent can file a request for adjournment of hearing with reasonable cause. Such request is required to be filed at least 3 days before the date of hearing. The applicant can file 2 requests for adjournments with applicable official fee. However, it is discretionary power of the Controller to accept such requests.

What is the term of a Patent?

The term of a patent is 20 years from the application filing date or date of entering the PCT International Phase, provided that the renewal/annuity fee is paid every year before the expiry of due date or within the extended period (maximum 6 months).

Does a Patent remain in force if renewal/annuity is not paid within the prescribed time limit?

The patent will lapse or cease to exist in case patent renewal/annuity is not paid within the prescribed time limit or extended period.

Can, a Patent ceased/lapsed due to non-payment of renewal/ annuity be restored?

If, a patent lapsed or ceased to have effect due to non-payment of renewal/annuity can be restored or reinstated by filing a request for restoration of patent within 18 months from the date on which patent is lapsed. The request for restoration is published in the official journal of the Patent Office, when the Controller is satisfied that failure to pay the renewal/annuity was unintentional. Any person interested, may file a notice of opposition to restoration of patent within 2 months from the date of such publication.

Is it possible for the applicant or patentee to assign rights or interest in the Patent application or granted Patent?

Yes, the applicant or patentee can assign rights or interests in the application or patent by way of executing assignment or agreement between the Assignor (applicant or patentee) and Assignee.

 

In order to enforce such agreements or assignments, it necessary for the Assignee to file a request for change in the proprietorship of the patent application or patent along with necessary documents in prescribed manner and official fee.

When is the patentee required to submit the working statement of the patented invention?

On the grant of a patent, it is mandatory for the Patentee and every Licensee (whether exclusive or otherwise) to furnish information related to working of the patented invention on commercial scale in India, with respect to every calendar year by 31st March of the following year or within prescribed time limit, if Controller directs to do so.

What are the penalties on non-compliance of provisions related to submitting the information related to working of the patented invention of commercial scale in India?

If patentee or licensee refuses or fails to provide information of working of the patented invention on commercial scale in India, he shall be punishable with fine which may extend to INR one million.

 

However, if patentee or licensee provides false information in this regard, he shall be punishable with imprisonment which may extend to 6 months, or with fine, or with both

What are the grounds for filing the pre-grant opposition in India?

Any person can file representation by way of Pre-Grant Opposition against grant of a patent, after publication of a patent application in the official journal of the Indian Patent Office. The permissible grounds of opposition are as follows:
a) wrongfully obtained;
b) prior publication / prior claim;
c) prior claim in India;
d) prior public knowledge or public use in India;
e) obviousness and lack of inventive step;
f) not an invention or the invention not patentable;
g) insufficient description of the invention;
h) failure to disclose information or furnishing false information relating to foreign filings;
i) convention application not filed within the prescribed time of 12 months;
j) incorrect mention of source/geographical origin of biological material; and
k) invention anticipated with regard to traditional knowledge of any community.

What are the grounds for filing the post-grant opposition in India?

The Post-Grant Opposition can be filed any “person interested”, within 1 year from the date of publication of grant of a patent. The permissible grounds of opposition are as follows:
a) wrongfully obtained;
b) prior publication / prior claim;
c) prior claim in India;
d) prior public knowledge or public use in India;
e) obviousness and lack of inventive step;
f) not an invention or the invention not patentable;
g) insufficient description of the invention;
h) failure to disclose information or furnishing false information relating to foreign filing;
i) convention application not filed within the prescribed time of 12 months;
j) incorrect mention of source/geographical origin of biological material; and
k) invention anticipated with regard to traditional knowledge of any community

What is Foreign Filing License (FFL)?

Foreign Filing License is a permission, which the applicant or inventor has to seek from the Indian Patent Office under the following circumstances:

  • a person is residing in India during the development of an invention and wishes to file the patent application for the same invention first outside India; or
  • applicant wishes to file a patent application for an invention outside India, before the expiry of 6 months from the date of filing of the patent application for the same invention in India.

In case the applicant fails to comply with the aforementioned mandates, he shall be punishable with imprisonment for a term which may extend to 2 years, or with fine, or with both.

What is a compulsory license?

Any person interested can file a request for compulsory license after expiry of 3 years from the date of grant of Patent in India. The grounds for compulsory license are as follows:
a) Reasonable requirements of public not met with respect to the invention;
b) Invention not available to the public at reasonably affordable price; and
c) Invention not worked in the territory of India.

What are the benefits to small entities or start-ups for filing the Patent applications in India?

The Indian patent system has provisions of differential official fee for applicants belonging to different categories. The applicable official fee for the small entities and startups is substantially less than for other entities. The applicant has to provide necessary documents for claiming the official fee benefit.

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