Patent Filing in India

13th September, 2024 - 6:34 am Categories: Patent Filing 0 Comments

Introduction

New technologies and innovations are protected by Intellectual Property Rights (IPR), particularly by patents. In India, the provisions relating to registration and enforcement of patents are contained under the Patents Act, 1970 and its corresponding rules, Patent Rules, 2003. Numerous innovations have been in development in the recent years that can be protected by the rights of a patent. The blog focuses on process of filing a patent application in India for grant of a patent.

What is a patent?

A patent is an exclusive right granted by a country to the owner of an invention, for a limited period of time, provided the invention satisfies certain conditions stipulated in the law. Exclusivity of the right implies that without the consent of the patent holder no one else can make, use, manufacture or market the invention. The patent right is territorial and a patent granted in India can only be enforced in India.

Who can apply for patent?

Section 6 of the Patents Act, defines the persons entitled to apply for patents. Any person claiming to be true and first inventor of the invention, i.e., the creator of the invention can apply for patent. An assignee of the true and first inventor has the right to make an application. An assignee can be a natural person or other than a legal person such as a registered company, a research organization, an educational institute or Government. A legal representative of deceased true and first inventor or their assignee. The application can be made either alone or jointly with any other person.

Requirements for an invention to be patentable

For any invention to be eligible for a patent, it must meet three basic requirements:

New invention [Section 2(1)(l)]: The invention or technology should not have been previously disclosed by publication in any document or be used in India or any other country before filing date of application.

Inventive Step [Section 2(1)(ja)]: The invention should have a technical advancement as opposed to existing knowledge and/or have an economical significance. The invention should not be obvious to a person having the skillset for the same.

Capable of industrial application [Section 2(1)(ac)]: The process or product proposed to be patented should have the ability to be used or made in an industry.

Where to file for patent?

A patent can be filed either physically or electronically. The physical process involves submitting the required documents at the head office of the Indian Patent Office or its branches depending upon in which jurisdiction he resides or has a domicile or has a principal place of business. The patent can be filed electronically by intellectual property e-filing portal in the Indian Patent Office website.

Steps for filing:

1. Checking for patentability of the invention

An invention may satisfy the conditions of novelty, inventiveness and usefulness, but the patentability has to be also checked in regards to Section 3 and Section 4 of the Patents Act. It provides certain category of processes and products that are excluded from being considered as inventions such as any invention that is frivolous in nature, any invention that is contrary to public order and morality and its intended uses is for commercial exploitation, literary, dramatic or artistic work, any process for the medicinal, surgical purpose for any treatment of human beings, method of agriculture, mathematical or business methods, computer programs per se, inventions relating to atomic energy and the like.

2. Prior Art Search

Before filing a patent application in India, the applicant should perform a detailed patentability search to determine existence of similar inventions and whether a patent for it will be granted or not. To avoid rejections from the relevant authorities with respect to patent protection, it is essential that a patent search be conducted before filing an application.

3. Drafting of a patent application

The process of preparing a comprehensive and accurate description of the invention with the legal claims that specify and define the scope of protection is known as patent drafting. The draft should include title, background, summary, description of drawings, detailed description, drawings, claims and abstract. The draft should be in clear and concise language to describe the invention, avoiding jargon and technical terms that might not be universally understood. The description should be sufficiently detailed to enable a person skilled in the field to practice the invention without undue experimentation by disclosing the best mode of carrying out the invention. The claims should be carefully drafted to address all aspects of the protection pursued while sufficiently separating the claimed invention from the prior art.

4. Documents and fees required for filing a patent application

Form 1 – Application for Grant of Patent

Form 1 contains information related to the applicant and the invention such as personal details of the applicant, title of the invention, type of application, category of applicant, details of inventor, details of patent agents, address for service of applicant in India. In the case of a start-up or a small entity, Form 28 is also filed along with Form 1.

Form 2 – Provisional or Complete Specification

Form 2 is the detailed specification of the invention either product or process invention. The inventor can either file a provisional application or a complete specification. A provisional application is filed in case the invention is at a developing stage at the time of filing. However, a complete specification has to be filed within 12 months of filing the provisional application as per Section 9(1) of the Patents Act or else, the application will be deemed to be abandoned.

Section 10(4) of the Patents Act, specifies the contents of a complete specification. It includes description of the invention, best method of performing the invention, claim or claims defining the scope of the invention and an abstract.

Form 3 – Statement and Undertaking

When filing a patent application in other countries, the applicant is required to provide a statement incorporating the details of such application as well as an undertaking that the applicant, from time to time, would inform the Controller, in writing, of any applications filed with regards to the same or similar inventions in any country outside India.

Form 5 – Declaration as to Inventorship

In accordance to section 10(6) of the Patents Act, an inventor is required to provide a declaration stating that they are the true inventor(s) of the invention.

Form 18 – Request for examination

A request for examination can also be filed during the filing of a patent application. However, it is not mandatory to be applied during filing and can be applied within 48 months from the date of filing or date of priority of the application.

Form 26 – Power of Attorney

When a patent application is being filed by a Patent Agent or any other agent on behalf of the inventor, then the inventor is required to assign the power of attorney under Form 26 to such patent agent/agent for the purposes of correspondence and communication with the relevant authorities on behalf of the inventor.

Fees (First Schedule of Patent Rules, 2003)

The fees payable with respect to filing of application are specified in the First Schedule. The fees to be paid under the Patents Act may be paid either in cash, or through electronic means, or may be sent by demand draft, or cheque to the appropriate office. The amount is payable to the Controller of Patents and can be drawn at the bank where the relevant office is located. If the bank draft or cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or cheque has actually reached the Controller.

After Filing of application

An application for grant of patent is published 18 months after filing of the application or from the date of priority. Subsequent to the filing of request for examination, the Controller would refer the application to an examiner, who articulates the first examination report (FER) within 1 month. In case any objections are raised under the FER, the applicant or the assigned agent is required to file a response to the objections and to comply with any requirements, within a period of 6 months from the date on which the FER was issued. Subject to all objections being cleared, in the event the examiner and the Controller are of the conclusion that the application and other documents are compliant, an order for grant of patent is notified to the applicant (or the agent) and subsequently published in the journal of patents.

Conclusion

In India, filing a patent application is an important step towards protecting intellectual property of an invention. Although the process of filing is detailed and time-consuming, but it guarantees that new and novel inventions are protected legally, granting inventors an exclusive right to manage, profit from and maintain ownership over their inventions. By understanding the patent filing process in India, inventors can effectively navigate the filing system.

Author: Neha Vivek A, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

1. The Patents Act, 1970.
2. The Patent Rules, 2003.