Patents

Patent is an intellectual property right, to make, use or sell an invention for a limited period of 20 years.  A 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 demonstrate inventive step or technological advancement over the existing technologies.

It is a statutory right of the Patentee for his new invention which can be categorized as a new process or product. A Patentee has the following exclusive legal rights, on the technology for which a patent is granted:

• 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;

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

The registration of a patent, grants protection to inventions and other benefits thereto, few of which are summarized below:

• Increasing monetization opportunities: Acts like negotiations, licensing, selling, technology transfer, licensing, and commercialization, which provide monetization opportunities in the market to the Patent Holder.
• Marketing Strategy: Companies can display their technologies as unique and different from existing technologies and indulge in a separate business line.

Reducing competition and raising company value:  Creation of a niche market for the patented products, where the consumers are solely in position to purchase the product of the Patent Holder.

The patent rights are territorial in nature, i.e. a patent and its related rights are valid and enforceable only in those jurisdictions where it has been registered/granted in accordance with 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.

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 the public domain through prior publication in any document or claimed in an already filed complete specification or disclosed orally or known 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.

The subject matter of the following inventions is not patentable: 

•  any invention which is frivolous or contrary to natural laws;
• the use or exploitation of an invention contrary to a public order or cause injury to public, animal or plant life or health or environment;
• discovery of a scientific principal and living or non-living things occurring in nature or formulation of an abstract theory;
• discovery of a new form of known substance which does not show enhanced efficacy or new property or new use;
• admixture resulting in the aggregation of properties of its components or a process for producing such substance;
• arrangement or rearrangement or duplication of known devices each functioning independently and in a known way;
• method of agriculture or horticulture;
• any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment;
• plants and animals in whole or any part thereof;
• mathematical or business method or a computer program per se or algorithms;
• anything which is included in the Copyright Act, 1957 such as literary, dramatic, musical or artistic work or any aesthetic creation;
• scheme or rule or method of performing mental act or method of playing game;
• presentation of information;
• topography of integrated circuits;
• traditional knowledge; and
• inventions relating to atomic energy.  

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.

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 them has already been disclosed or not or has been made available to public or not. The prior art search can be performed using 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.

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: Depends on the Indian address which is provided in the Indian patent application by the Applicant for service.

Yes, the inventions disclosing the 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 is required to submit a permission provided by the National Biodiversity Authority (NBA) before the 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), Microbial Type Culture Collection and Gene Bank (MTCC), and National Agriculturally Important Microbial Culture Collection (NAIMCC) are recognized the IDAs in India.

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, the following applications are not published: 

• applications imposed with secrecy directions;

• application abandoned due to non-filing of the complete specification within 12 months from the date of filing of the provisional application; or
• if a 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 publication date the Applicant shall have similar privileges as if the patent is granted. However, the Applicant cannot institute any proceedings for infringement until patent is fully granted.

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 may be published within 1 month from the date of such request.

It is mandatory for the Applicant to file a request for examination of the application within 48 months from the earliest priority application date or application filing date, whichever is earlier. Since, the applications are examined based on the date of filing of the request, it is advisable to file the said request as early as possible. 

If the necessary request is not filed within the prescribed period, the application is treated as withdrawn by the Applicant and cannot be restored or reinstated under any provisions of the Patents Act 1970. 

Apart from the Applicant, any “person interested” can file a request for examination. An evidence of interest in the application is required to be provided by the “person interested” along with the request. Such person is intimated about issuance of the examination report.

A “person interested” means a person engaged in or involved in promoting research in the same field to which the invention relates.

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

• When the Applicant filing a PCT application has chosen India as the competent International Searching Authority (ISA) or elected as an International Preliminary Examining Authority (IPEA);
• Start-Up;
• Small Entity;
• at least one of the Applicants is a female, if the application if filed by joint Applicants (natural persons);
• department of the Government;
• Applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
• Applicant is a Government company as defined under clause (45) of section 2 of the Companies Act, 2013 (18 of 2013);
• 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;
• Applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.

Recently, the Patent Prosecuting Highway Pilot Program commenced between the Indian Patent Office and Japan Patent Office.

Patent Prosecution Highway is a bilateral initiative between the 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. Notably, the number of requests is limited to 100 cases per year.

The Applicant can file a request to withdraw a 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 Applicant may seek 90% of refunds 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.

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 the appropriate request, before the expiry of the actual official deadline.

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 the due date or within the extended period (maximum 6 months).

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

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 fee was unintentional. Any person interested, may file a notice of opposition to restoration of patent within 2 months from the date of such publication.

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

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

On the grant of a patent, it is mandatory for the Patentee to furnish information related to working of the patented invention on commercial scale in India.

The recent Patents (Amendment) Rules, 2020 resulted in the revision of the Form 27 for furnishing such statement of working. The details of the related patents can be incorporated in a single form and is required to be filed by September of every financial year.

If the Patentee or licensee refuses or fails to provide information of working of the patented invention on commercial scale in India, he may be liable to punishment with fine which may extend up to INR 1 million.

Additionally, if the Patentee provides false information in this regard, he shall be punishable with imprisonment which may extend to 6 months, or with fine, or both.

Any person can file representation by way of Pre-Grant Opposition against the grant of a patent, after publication of the patent application in the official journal by the Indian Patent Office. The permissible grounds of opposition are as follows:

• wrongfully obtained;
• prior publication / prior claim;
• prior claim in India;
• prior public knowledge or public use in India;
• obviousness and lack of inventive step;
• not an invention or the invention not patentable;
• insufficient description of the invention;
• failure to disclose information or furnishing false information relating to foreign filings;
• convention application not filed within the prescribed time of 12 months;
• incorrect mention of source/geographical origin of biological material;
• invention anticipated with regard to traditional knowledge of any community.

The Post-Grant Opposition can be filed by any “person interested”, within 1 year from the date of publication of grant of a patent.  The permissible grounds of opposition are as follows:

• wrongfully obtained;
• prior publication / prior claim;
• prior claim in India;
• prior public knowledge or public use in India;
• obviousness and lack of inventive step;
• not an invention or the invention not patentable;
• insufficient description of the invention;
• failure to disclose information or furnishing false information relating to foreign filing;
• convention application not filed within the prescribed time of 12 months;
• incorrect mention of source/geographical origin of biological material;
• invention anticipated with regard to traditional knowledge of any community.

Foreign Filing License is a permission, under which the Applicant or inventor has to seek permission, for filing of application outside India, from the Indian Patent Office under the following circumstances:

• When the Applicant 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
• When the 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.

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:

• Reasonable requirements of public not met with respect to the invention;
• Invention not available to the public at reasonably affordable price;
• Invention not worked in the territory of 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 start-ups is akin to Natural Persons, after the recent Patents (2^nd Amendment) Rules, 2020. The Applicant is required to provide necessary documents for claiming the official fee benefit.

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 fee was unintentional. Any person interested, may file a notice of opposition to restoration of patent within 2 months from the date of such publication.