Introduction to Indian Patent Filing Procedure

Structure
1.1 Introduction to Patents
1.2 Criteria for Patentability
1.3 Non Patentable Subject Matter
1.4 Patent Specification (Provisional/Complete Specification)
1.5 Patent Filing Procedure in India
         1.51 Preliminary documents required for filing
         1.52 Stages of Patent Application Examination
         1.53 Statutory Fees
1.6 International Patent Filing & Procedure
1.7 Patent Opposition & Revocation

1.1 INTRODUCTION TO PATENTS

Before, we begin discussing the procedure for patent filing in India, let us understand what patents are, what are they granted for and what all can be patented in India. Well, the patent is a set of exclusive rights granted to inventors/assignee to prevent others from selling, using, offering for sale, making and importing the invention for a limited period of time. Thus, it can be called a quid pro quo arrangement whereby the exclusive rights are granted for a limited period of time by the patent office to the inventor/assignee in exchange for the complete disclosure of one’s invention that can enable others to practice and use the patented invention for one’s own purposes.

While an application for patent is made, it is important that the inventor to understand that he fully discloses his invention to explain the working of such invention along with the drawings, diagrams or sketches or any other visual illustration that can enable others reduce the invention to practice. After the patent expiry, the protection period ends, and an invention enters into the public domain.

1.2 CRITERIA FOR PATENTABILITY
 

          Not everything under the sun is patentable in India. Though the patentable subject matter differs with the jurisdiction of filing, we will limit the scope of present study to understand what is a patentable subject matter and a non patentable subject matter in India.

            As discussed above, a patent is an exclusive right to a person who has invented a new and useful article or it is an improvement of an existing article or a new process of making an article. The next step would be finding out whether your invention meets all patentability criteria as per Indian patent act i.e. Novelty, Non-obviousness, Industrial application and patentable subject matter.

             Novelty of an invention means that the content of the specification of the patent application (subject matter) is not published or known to or available to public in India or elsewhere before the date of filing of the patent application in India.

            Non-obviousness or an inventive step means that the subject matter disclosed in the patent application is not obvious to a person skilled in the art. Especially with reference to the prior art or the information already know or available to the public. In other words, the invention should not be obvious to people who are from the same field of invention.

            Industrial application as the name suggest, means that the invention to be patented should have a utility, which signifies that it is capable of being made and used in an industry.

           More importantly, the subject matter should be eligible as a patentable subject matter in accordance with Indian Patent Act, 1970. Next section shall discuss what all is a non patentable subject matter in India and hence cannot be patented.

1.3 NON PATENTABLE SUBJECT MATTER

            Patent Act in India has specified certain subject matters are not eligible for getting patent in India. Some of these areas are;
• Inventions related to atomic energy
• Mere discovery of a scientific principle or formulation of an abstract theory
• Laws of nature or anything contrary to well established natural laws
• Inventions which are contrary to Law or Mortality or injurious to public health
• Physical phenomenon
• Mere arrangement or re-arrangement of known devices
• Method of agriculture or horticulture
• New form of know substances
• Method of playing games
• Frivolous inventions
• Anything that causes a serious harm to human
• Animal and plant life
etc, are NOT patentable subject matter in accordance with section 3 and section 4 as per Indian patent act.

1.4 PATENT SPECIFICATION

         Patent is a techno-legal document—technical because it contains scientific and technical information and legal because the content of the specification is susceptible to the interpretation by the court of law. Broadly, there are two kinds of application or specification that are filed here in India:

i) Provisional Specification

ii) Complete Specification

         The Provisional specification discloses only the nature of an invention, the field of invention and also defines the scope of the invention to certain extent. This is an optional document that may or may not be filed depending on the stage of invention. For example, when the invention is at a stage in research and development work where, it can be disclosed on paper but it’s not a final invention, then it is preferable to prepare a description of the invention as provisional specification and submit to patent office to secure the priority date of the invention.

           The benefit of filing the provisional specification is primarily that it secures the priority date, is cost effective and it buys time period of 12 months to file a complete specification post filing of the provisional specification. A provisional specification is not a rough draft; the patent office accords the filing date and patent application number to the provisional specification received.

The major contents of a provisional specification are title of the invention, description of the invention in brief disclosing the point of novelty, the field of invention, background, objects and statement of the invention.  Claims that define legal boundaries of a patent document are not required to be written in the provisional specification. It is important to understand that provisional specification never gets examined; its only purpose is to secure a priority date for the invention that is still to attain maturity.

           After filing of the provisional specification, within a period of 12 months from the date of filing such provisional specification, one need to file a complete specification, failing which the provisional specification gets abandoned. The complete specification is a more formal document that disclose in full detail the working of invention including the field of invention, the background, object and statement of the invention, the drawings, detailed description and more importantly, the claims that defines the legal metes and bounds of the invention. An application is now suitable to be substantively examined for its subject matter in terms of novelty, inventive step and industrial applicability.

1.5 PATENT FILING PROCEDURE
         The flow chart below provides a brief summary of general process flow from conceptualization of an idea to the filing of patent application.

                   It all begins with conceptualization of invention and filing of a provisional/complete specification, as the case may be. The patent application can be filed in one of the four patent offices of India, namely Delhi, Kolkata, Chennai and Mumbai depending upon the geographical region the applicant belongs to. 

1.5 1 Documents required for Patent Filing in India

In order to file the patent application in India, the applicant is required to submit a set of forms and other documents that are examined before the application is put to substantive examination.

The list of documents needed is as given below:

• Application form in duplicate (Form 1) containing the name and address of the inventor(s), applicant(s), any authorized entity filing on behalf of the inventor/applicant

• Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months (Form 2)

• Drawings in duplicate

• Abstract of the invention in duplicate.

• Statement and Undertaking related to application(s) filed in foreign jurisdiction pertaining to said invention, in duplicate (Form 3). The Applicant shall undertake that he shall keep the patent office posted about the details and status of application for patents filed outside India.  

• Priority document (if priority date is claimed) in convention application to claim the priority date of such a convention application for examination purposes

• Declaration of inventorship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5) to enlist the true and first inventor, other inventors who have contributed towards the conceptualization of the invention

• Power of attorney (if filed through Patent Agent). Form 26 is used to assign the power of attorney to the patent agent to deal with the patent application, correspondence and communication on applicant’s behalf

• Fees (to be paid in cash/by cheque/by demand draft)

1.5 2 Stages of Patent Application Examination

After filing of the patent application along with above-listed necessary forms and documents, the application undergoes the following stages of prosecution (as shown in the flow chart below) that shall be described in detail later.

PATENT PUBLICATION:

    As can be seen in flow chart above, the next stage after filing the patent application is the “Publication of the Invention”. In general, the application is published within a period of 18 months from the date of priority (in case provisional application is filed first) or the date of filing (in case complete specification is filed first). An early publication request can be made along with prescribed fees in order to expedite the process of publishing of the patent application, and eventually early grant. Generally the patent application is published within a month form request form early publication.

REQUEST FOR EXAMINATION

      The patent application is examined only after receiving request for examination (RFE) from the applicant.  The application is made by filing FORM 18 either along with the filing of the application or within a period of 48 months from the date of priority/filing. Upon receiving this request the patent application is handed over to a patent examiner who examines the patent application with different patentability criteria like novelty, non-obviousness and industrial applicability.

FIRST EXAMINATION REPORT

The application is assessed for patentability criteria and other aspects of patentability by the Examiner, who then generates a First Examination Report (FER) of the patent application. This is called patent prosecution. Everything happening to patent application before grant of patent is generally called as patent prosecution. The first examination report generally contains prior arts (existing documents before the date of filing) which are similar to the claimed invention, and same is reported to patent applicant for his comments and observation.

RESPONSE TO FER

         Generally, the patent application is objected to for various informalities or for not meeting the eligibility criteria of patentability and the same is reported in the examination report sent to the applicant. Upon receiving the FER, the applicant analyses the examination report with patent professional (patent agent) and creates a suitable response to the objections raised in the examination report.

         This is a chance for an inventor to communicate the critical point of novelty of his invention over prior art references cited by the Examiner in the examination report. The inventor and patent agent create and send a response to the examination to establish how the invention is indeed patentable and satisfies all patentability criteria’s.

COMMUNICATION BETWEEN THE APPLICANT AND PATENT OFFICE

This communication between the examiner and the patent applicant is to ensure that all objections raised in the patent application are resolved, and the inventor has his fair chance to establish the novelty and inventive step of his invention over existing prior art. Once the patent application is satisfied to meet all criteria for patentability and all objections raised by the examiner are amicably settled, the application is put in order of grant by the examiner. This may take several rounds of prosecution, and it is certainly not the situation that the examiner is convinced of the patentability of the invention in the very first response submitted by the applicant.

APPLICATION IN ORDER FOR GRANT

        The applicant is required to comply, within the prescribed period, with all the requirements of putting the patent application in order for grant. The time for putting an application in order for grant, has been reduced from twelve months to six months from the date of issuance of First Examination Report, for all the FERs issued by the Patent Office on or after May 16, 2016. Hence, the applicant is required to respond the objections issued in the First Examination Report within six months of receipt of First Examination Report.

GRANT OF PATENT
The application would be placed in order for grant once it is found to be meeting all patentability requirements. The grant of patent is notified in the patent journal which is published time to time.

1.5 3 Statutory Fees
Particulars Natural Person (INR) Small Legal Entity (INR)
Filing of Patent Application 1750 4400
For each sheet in addition to 30 180 440
For each claim in addition to 10 350 880
Request for examination 4400 11,000
Early Publication (optional) 2750 13,750

1.6 INTERNATIONAL PATENT FILING AND PROCEDURE

One has to understand the fact that the Patent Rights are territorial in nature. There is nothing like an International Patent. In order to seek exclusive patent rights in countries outside India, one has to file a separate patent application in the jurisdiction of interest. There are two options of filing the application outside India:

i) File patent applications in foreign countries without filing a patent application in India

ii) File a patent application in India, and soon after, file patent applications in foreign countries

     In exercising the first option, the patent applicants have to complete a formality with the Indian Patent Office (IPO) before proceeding with patent application filing outside India, in accordance with Section 39 of IPA, 1970. This formality has to be completed if one or more inventors in the patent application are residents of India.

     The formality requires the patent applicant to request the IPO to grant permission to apply for patent outside India. The IPO grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defense purposes and atomic energy.

       Next, when the second option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO, as discussed under the previous option. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application, and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed, if one or more inventors in the patent application are residents of India.

      Now, the applicant has primarily two options available to him for filing the patent application abroad.

Option 1: Filing a Convention Application, whereby the applicant is required to file the application within a period of 12 months from the date of priority/filing in the countries that are party to Paris Convention.

Option 2: Filing a PCT Application, whereby the applicant can file the application at Indian Patent Office as a receiving Office in PCT request form, or can directly file the application in International Bureau (IB), WIPO along with the prescribed fee.

      A PCT application can be filed anytime before the expiry of 12 months from the date of filing.  However, if the international filing is within 6 weeks from the date of filing in India, such filing shall be made after taking permission from the Indian Patent Office. An applicant has another option to file an International Application within twelve months from the filing date of the patent in India, directly in IB, claiming the priority of the previously filed Indian patent application along with the prescribed application fee. A certified copy of the Indian application needs to be forwarded to IB within sixteen months from the date of priority.

       In the Option 1, the applicants need to file national phase applications in foreign countries within 30 or 31 months from the PCT filing date. The flow chart below demonstrates the various options available to the patent applicant for making the application abroad:

A snapshot of typical PCT process for prosecuting the patent application is given in the diagram below:

       Any failure to comply with the provisions of Patent Act in India relating to the foreign filing, shall hold one liable for an imprisonment for a term which may extend to two years, or with fine, or with both. Therefore, a prior permission or authorization from the Controller must be sought before making the application outside India.

1.7 PATENT OPPOSITION AND REVOCATION

The Indian Patent Act, 1970 provides opposition/ revocation mechanisms to make sure that undeserving Patents are not granted and if they are granted, they can be opposed/ revoked. Grant of patent can be opposed before as well as after grant of patent, conveniently called as the Pre-Grant or Post-Grant Opposition. The following list provides an insight on grounds of making a pre-grant or a post-grant opposition application.

• Wrongful obtaining
• Prior Publication
• Claimed in an Earlier Application
• Publicly Known
• Obvious without Inventive Step
• Not a Patentable Invention under the Indian Laws
• Not sufficiently described
• Details of Corresponding Applications not Disclosed

Now, let’s take a look at what a pre-grant and post-grant opposition proceeding refers to.

a) Pre Grant Opposition: Where an application for a patent has been published but a patent has not been granted yet, any person, may, in writing, may oppose the grant of such patent. The patent applicant may contest this opposition.  It allows the third parties (any person) to oppose a patent application on its publication, when a patent application is under examination. Parties will be entitled to a hearing, if requested and considered necessary, by examiner.

b) Post Grant Opposition: At any time after the grant of patent, but before the completion of 1 year from the date of publication of the grant of the patent, “any person interested” may file a notice of post grant opposition. An Opposition Board is constituted to conduct the examination of patent considering the statement and evidences supplied by the opposing party. After hearing the parties and upon consideration of the recommendations submitted by the Opposition Board, the Controller decides upon the opposition and notifies his decision to the parties.

PATENT REVOCATION IN INDIA:

Beside, pre grant and post grant opposition proceedings that can be instituted by the applicant, there is one more way to get the patent abandoned---or revoked. Any person interested and the Central Government can file such an application for revocation. A patent can be revoked by the High Court if the High Court is satisfied that the patent holder has without any cause fail to comply with the request of the Central Government to make, use or exercise the patented invention for the purpose of the Government upon reasonable terms. Various grounds of revoking a patent in India are:

a) If the invention was claimed in an invention of earlier priority date

b) If the patent was granted on the application of a person not entitled under the provisions of this Act to apply
c) If the patent was obtained wrongfully in contravention of the rights of the petitioner
d) If the subject of any claim of the complete specification is not an invention within the meaning of this Act
e) If the invention is not new having been disclosed in prior publication
f) If the invention is obvious or does not involve an inventive step
g) If the invention is not useful
h) If the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed
i) If the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification
j) patent was obtained on a false suggestion or representation
k) subject of any claim of the complete specification is not patentable under this Act
l) invention was secretly used in India
m) applicant has not furnished details regarding the foreign filing that were material to the patentability of the present invention
n) applicant contravened any direction for secrecy by an application for the grant of a patent outside India, without seeking controller’s permission
o) application was amended by fraud

A notice of any petition for revocation of a patent shall be served on all persons appearing to be proprietors of that patent or to have shares or interest in the patent.

                                                                     
                                                                                                                            -Purwa Rathi