S.S.Rana-IPR-Law-Firm
ssrana-facebook   ssrana-twitter   ssrana-googleplus   ssrana-linkedin   ssrana-googleblog
Client Login
  Skip Navigation Links  
 














   













FREQUENTLY AKSED QUESTIONS ABOUT PATENTS IN INDIA

 

INDIAN IP LAWS

  PATENTS
 
Patent Search
Patent Drafting
Patent Applications
Patent Filing
Patent Application Filing Trends
Online Filing of Patents Application
Patent Procedure
Patent Flowchart
Patent Opposition
Patent Annuity Payments
Working of Patented Inventions
Revocation of Patent
Compulsory Licensing
Patent Filing Fees, Cost & Forms
Patent Infringement
Patent Act India
Patent FAQ India
PCT Application
PCT Search
PCT International Filing
PCT Filing Procedure India
Indian Patent Office - ISA
PCT FAQ India
Section 8 & Rule 12
Patent Litigation
Foreign Filing License
TRADEMARKS
DESIGNS
COPYRIGHT
DOMAIN NAMES
GEOGRAPHICAL INDICATIONS
ANTI-COUNTERFEITING
IP ENFORCEMENT AND LITIGATION
INFRINGEMENT & PASSING OFF OF TRADEMARK
FRANCHISING LAW
MADRID PROTOCOL

SAARC IP LAWS

INTERNATIONAL IP LAWS

USEFUL LINKS

 

 

 

1. What is a Patent?

A Patent is an exclusive 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. The Patents are the monopoly rights that exclude others, from making, using, selling, offering for sale or importing the patented product or process for producing that product for the aforementioned purposes without the consent of the patentee.

2. What can be patented in India?

In order to be a patentable subject matter, the new invention is required to meet the following patentability criteria:

  1. It should be novel.

  2. It should have inventive step or it must be non-obvious

  3. It should be capable of Industrial application.

  4. It should not fall within the provisions of sections 3 and 4 of the Patents Act 1970.

3. What is new invention within the meaning of Indian Patents Act?

New invention means any invention or technology in respect of a product or process which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of the patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.

 4. What is an inventive step?

Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not-obvious to a person skilled in the art.

 5. What is industrial applicability?

In relation to an invention, industrial applicability means that the subject matter of the invention must be capable of being made or used in any kind of industry. Industry in this connection is understood not in the legal or economic meaning but in the primary signification of action or enterprise of fashioning and utilizing nature and matter for the production of goods or of technical results. Thus industry means any kind of activity including agriculture.

 6. What are not inventions within the meaning of Indian Patents Act?

Sections 3 and 4 of the Patents Act 1970 specify the inventions that are not patentable under the Act.

 7. Who can apply for a patent?

A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person.

 The legal representative of any deceased person, who immediately before his death was entitled to file an application for patent, can also apply for the same with the Patent Office.

The application for patent can also be made by virtue of an assignment of the right to apply for a patent for the invention.

 8. How can a person apply for a patent in India?

In accordance with the provisions of Patent Act, the inventor, his assignee or legal representative of deceased person, who before his death was either the inventor or assignee, can apply for patents at the head office of the Indian Patent Office or its branches depending upon in whose jurisdiction he resides or has a domicile or has a principle office of business. In case of a foreign applicant, the application can be filed at the appropriate office, in whose jurisdiction the address for service or patent attorney’s office is situated.

 The patent application can be accompanied either with complete specification or with provisional specification.

 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 or else the application will be deemed to be abandoned.

 There is no extension of time to file complete specification after expiry of the said period.

 9. What is provisional specification?

A provisional specification is a patent document filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention.

 The provisional specification is a permanent and independent scientific cum legal document and no amendment is allowed in this. It is a document of record and it cannot be amended by adding new matter to it once it has been filed.

 Provisional specification contains the following:

  1. Title

  2. Written description

  3. Drawings, if necessary and

  4. Claims (optional.)

A patent is never granted on the basis of a provisional specification. It has to be a followed by a complete specification within 12 months from the date of its filing for obtaining a patent for the said invention.

 Filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification.  It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance. If there aren’t any significant changes the applicant can also file the same provisional specification as complete specification within 12 months.

 10. What is Complete Specification?

The Complete Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete  specification. The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention.

 The contents of a complete specification would include the following

  1. Title of the invention.

  2. Field to which the invention belongs.

  3. Background of the invention including prior art giving drawbacks of the known inventions & practices.

  4. Complete description of the invention along with experimental results.

  5. Drawings etc. essential for understanding the invention.

  6. Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.

11. When should an application for a patent be filed in India?

Filing of an application for a patent should be completed at the earliest possible date and should not be delayed.

 Delay in filing an application may entail following risks:

  1. Other inventors might forestall the first inventor by applying for a patent for the said invention

  2. There may be an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.

Therefore it is imperative that the application is filed before it is made public and used publicly.

 If an applicant is negotiating with a company, it is advisable that Non Disclosure Agreement (NDA) be executed so that the invention is kept confidential and its novelty is not destroyed.

 12. Can patent applications also be filed electronically by online system?

Yes. The Indian Patent Office has put in place an online filing system for patent application.  More information for filing online application is available on the website of Patent Office i.e. www.ipindia.nic.in

 

13. Can published or disclosed inventions be patented in India?

Publication of an invention before filing of a patent application would disqualify the invention to be patentable as the disclosure of invention by way of publication is detrimental to novelty of the invention.

 

Hence, inventors should not disclose their inventions before filing the patent application. The invention should be considered for publication after a patent application has been filed.

 However the Patents Act does specifies certain conditions under which a grace period of 12 months for filing application is given even after publication.

 14. Under what conditions a grace period of 12 months for filing the application, after the publication of invention, is given?

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 organized by the Government or disclosure before any learned society or published by applicant. The details conditions are provided under Chapter VI of the Patents Act (Section 29-34)

 15. When is an application for patent published by the Patent Office in India?

Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published.

  1. Application in which secrecy direction is imposed

  2. Application which has been abandoned u/s 9(1) and

  3. Application which has been withdrawn 3 months prior to 18 months

The publication of every application includes the particulars of the date of application, number of application, name and address of the applicant and the abstract.

 16. What are the benefits of publication of the application?

The applicant of the patent has the like privileges and rights as if the patent for the invention has been granted on and from the date of publication of application.

 

However the applicant is not entitled to institute any proceedings for infringement until the patent has been granted.

 17.  Can the publication of application be expedited in India?

Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. The Patent Office publishes the application after receiving such request within a period of one month provided the invention contained thereon does not relate to atomic energy or defense purpose.   

 18.  What is request for examination?

The patent application is examined only after receipt of the request of examination is made by the applicant or any other person interested. Such a request is made on Form 18 along with the fee specified in the first schedule of the Patents Act.

 

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. If the request is not made within the stipulated time, the application is deemed to be withdrawn by the applicant.

 

19. Can the examination of patent applications be expedited in India?

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.

 

20. What happens to a patent application once it is examined?

Once the application for patent is examined, the Patent office generally issues an examination report to the applicant. Such examination report is known as First Examination Report (FER).

 

The applicant is given twelve months period from the date of issuance of the FER to comply with the objections raised in the FER. If the applicant is not able to 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 the application is found to be in order for grant, the patent is granted and the letters patent is issued to the applicant.

 

However if a pre-grant opposition is filed or pending, further action is taken after disposition of the pre-grant opposition. 

 

21. Can a pre-grant opposition be filed in India?

Yes a pre-grant opposition can be filed by any person anytime after the publication of the application under section 11A but before the grant of patent. 

 

The grounds for filing pre-grant opposition are contained in section 25(1) of the Patents Act 1970.

 

22. Can a post-grant opposition be filed in India?

Yes a post-grant opposition can be filed by person interest after the grant of Patent but before the expiry of one year from the date of publication of grant of Patent in the official journal of the Patent Office.

 

The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.

 23. What all information is comprised in the Patent Office Journal in India?

The Patent office Journal comprises information pertaining to patent applications which are published under section 11A,  post grant publication, restoration of patent, notifications, indexes, list of non-working patents and notices Issued by the Patent Office relating to Patents, etc.

 24. What do the words "Patent Pending" or "Patent Applied For" notify?

The patent applicants usually mark their articles with such words after filing application for patent to make the public aware that a patent application has been filed in respect of that invention. The use of such words by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated. However the infringement action can be initiated only after the patent is granted.

 25. What is the date of Patent?

The date of Patent is the date of filing the application for patent, accompanied either by provisional or complete specification. In case of a convention or PCT application the priority date is taken as the date of Patent.

 

The term of Patent is reckoned from the date of Patent.

 

26. What is the term of Patent in India?

The term of every patent granted under the Patents Act is 20 years from the date of filing of the application for Patent.

27.  How can a patentee keep a patent in force for the full patent term?

A patent can be maintained by paying renewal fee every year. If the annuity is not paid, the patent will cease to remain in force and the invention becomes open to public.

 28. Is it necessary to seek patent office’s permission to file patent application outside India?

The Act provides that in any person resident in India who wishes to file an application for grant of patent outside India has to first file the application in India not less than six weeks before filing the application abroad. However he is required to take permission from the Controller (by filing request on Form 25) if he wishes to first file the application in any country outside India.

 29. Under what conditions is it necessary to deposit biological material in the international depository authority?

If the invention, for which application for patent is filed, uses a new biological material it is essential to deposit the same in the International Depository Authority (IDA) in order to supplement the description.
In India, the following two institutes have acquired the status of an international depositary authority:

The Institute of Microbial Technology (IMTECH) located at Chandigarh is the International Depository Authority in India.
International Depositary Authority, Microbial Culture Collection (MCC), National Centre for Cell Science (NCCS), University of Pune Campus, Ganeshkhind, Pune-411007, Maharashtra.

30. Does Indian Patent give global protection?

Patents like other Intellectual Property Rights are territorial in nature and therefore are effective only within the territory of India.

However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India.

Separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.

31. Does grant or refusal of a patent in one country has implications on its grant or refusal in another country?

Grant of patent is governed by the territorial laws of each country, thereby implying that each country is free to grant or refuse a patent on the basis of their national laws.  Granting a patent in one country does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated other countries.

32. What is the Paris Convention?

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It is an international convention for promoting trade among the member countries and was devised to facilitate protection of industrial property simultaneously among member countries without any loss in the priority date.

All the member countries provide national treatment to all the applications from the other member countries.

The Convention has been revised several times since its inception.  India became a member of the Paris Convention on December 7, 1998.

33. What are the significant features of the Paris Convention?

Paris Convention ensures the following to its signatories:

National treatment

Right of priority

Independence of patents

Parallel importation

Protection against false indications and unfair competition

Additionally there are a number of international conventions and treaties, which are open only to the members of the Paris Convention. Some of these are enlisted below:

  • Patent Cooperation Treaty (PCT)

  • Budapest Treaty

  • UPOV

  • Madrid Agreement

  • Madrid Protocol

  • Hague Agreement

34.  What is Patent Cooperation Treaty (PCT) ?

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970 and entered into force in 1978.  It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

 

Thus an inventor of a member country can simultaneously obtain priority for his Invention in any or all of the member countries, without having to file a separate application in the countries of interest, by designating them in the PCT application. India joined the PCT on December 7, 1998.

 

The activities of the PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva.

 

35. How is PCT useful to the contracting states?

In order to protect the invention in other countries, an applicant is required to file an independent patent application in each country of interest within a stipulated time to obtain priority in these countries. This entails a large investment to meet costs towards filing fees, translation, attorney charges etc.

 

Additionally due to the short time available, the decision of filing the patent application in other countries is generally not well founded.

 

Applicants of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest; thus saving the initial investments towards filing fees, translation etc.

 

The PCT system also provides much longer time for filing patent application in member countries. Under the PCT, the time available could be as much as minimum 20 and maximum 31 months.

 

Further, an inventor is also benefited by the search report and preliminary examination report prepared under the PCT system to be sure about the novelty and patentability of the invention.

 

36. What is the procedure of handling the application under the PCT?

The patent office designated by the contracting state becomes a receiving office for receiving patent applications. These applications are referred to International Searching Authorities (ISA) to carry out the patent search on a global basis.

 

In case the receiving office is also an ISA, a separate referral is not required. There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA.

 

37. What is the meaning of delayed processing of the application by the national phase or the regional phase?

A search report on the patent application filed with a receiving office is received by the applicant/inventor 16 months after the priority date. 

 

The International Bureau (IB) of the WIPO publishes the application and the search report 18 months after the priority date.

 

The original application is then sent to the designated offices indicated in the application. Within two months of this i.e. by the 20th month, the applicant will have to formally apply to the patent offices of these countries for grant of patents by paying official fees and completing other formalities stipulated by these offices. In case translated copies of the application are required, the same has to be furnished by the applicant.

Inspite of submitting the request for grant of patents in designated countries in the 20th month after the priority date, the priority in these countries is the same as the date of filing the original PCT application.

 

If applicant/inventor has requested for an examination report, the report is usually received by the applicant /inventor about 28 months after the priority date. Within two months of this, the applicant/inventor will have to formally apply for grant of patents in designated countries .The priority of the application is maintained in the designated countries.

 

38. What are the advantages of the delayed processing?

The benefit of delayed processing is enumerated below:

  1. By the end of the 20th to 31st month the applicant is in a better position to assess the quality of the invention being protected as a detailed search report or an examination report or both would be available to help making an assessment.

  2. Applicants can re-evaluate their decision about filing applications in all the designated countries

  3. The applicants may decide to drop a few countries from the list depending upon the changing market conditions.

  4. Applicants can delay their investment in respect of the national phase or the regional phase applications by 20 to 31 months without the risk of sacrificing priority.

39. Which is the appropriate office in India in relation to international applications?

An international application can be filed in any of the Branch Offices of the Patent Office located at New Delhi, Chennai, Mumbai and Kolkata (Head Office). The addresses of these offices are available on the website of CGPDTM i.e. www.ipindia.nic.in.

 

40. How can an International Patent Application be filed through PCT?

The International Patent Application through PCT, designating countries of interest can directly be filed at the Indian Patent Office with India as the receiving office. Four copies of the International Application is required to be filed with the Patent Office.

 

The Patent Office prepares the certified copy of the priority documents and the same is transmitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

 

A search copy is also sent to the International Searching Authority (ISA). The ISAs conduct and issue search report on the patentability of the invention. The applicant may also consider examination of his application by the International Preliminary Examination Authority.

 

Depending upon the favorability of International search report and International Preliminary Examination report on Patentability the patent application may enter the national phase of the designated countries. 


41. What is the procedure for claiming the fee benefit for Small entity?

In order to claim the fee benefit under the Small Entity category, an official form -Form 28 prior to submitting any other form /fee in case of subsequent filing or along with the Application for Grant of Patent in case of New Application is required to be filed with the Indian Patent Office (IPO). However, no official fee is required to be paid in respect of filing the Form 28 for claiming Small Entity status.

The criteria for “Small Entity” as specified under Micro, Small and Medium Enterprises (MSME) Development Act, 2006 is as follows:

- in the case of enterprises engaged in the manufacture or production of goods, the investment in plant and machinery does not exceed Rupees One Hundred Million i.e. INR 100,000,000;
- in the case of enterprises engaged in providing or rendering of services, the investment in equipment does not exceed Rupees Fifty Million i.e. INR 50,000,000.

For calculating the investment in plant and machinery, the cost of pollution control, research and development, industrial safety devices and such other items as may be specified, by notification, shall be excluded.

The evidence/supporting documents is required to be filed along with the Form 28 with the Indian Patent Office to claim the benefit under the Small Entity status:
As far as Indian entities are concerned, it would be required for them to furnish the evidence of registration under the Micro, Small and Medium Enterprises Act. That is the document substantiating that the company is registered as MSME with the Government of India shall be required to be filed as evidence.
However, in case if in countries outside India, the government provides such provisions of registration as the Small Entity, then the Certified Copy of the said registration shall suffice in this regard. Otherwise the company may be required to furnish its Financial Statements to substantiate that it meets the criteria as specified under Micro, Small and Medium Enterprises Development Act, 2006. 

 

  |   |   |   |   |   |   |   |   |   |  


© Copyright 2010-17, S.S. Rana & Co. All rights reserved