Patent protection

Patents

A patent is a 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 for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without consent.

Patent registration in India can be obtained for an invention. However, patent registrations are not applicable for all inventions, and the invention should satisfy specific criteria to obtain a patent in India.

Who can file a patent application?

A patent registration application for an invention can be made by any of the following people either alone or jointly with any other person:

• The true and first inventor
• True and first inventor's assignee
• The representative of the deceased true and first inventor or his / her assignee

According to the Patent Act, a "person" is any natural person, company, or association or body of individuals or government body, whether incorporated or not.

Two or more corporations as assignees may also make a patent application jointly. A foreign national resident can also apply and obtain a patent in India.

What can be patented?

Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentions the exclusions regarding what can be patented in India. There are certain criteria that have to be fulfilled to obtain a patent in India. They are:

1. Patent subject: The most important consideration is to determine whether the invention relates to a patent subject matter. Sections 3 and 4 of the Patents Act lists out non-patentable subject matter. Unless the Invention comes under any provision of Section 3 or 4, it means that it consists of a subject for a patent.
2. Novelty: Innovation is an important criterion in determining the patentability potential of an invention. Under Section 2(l) of the Patent Act, a novelty or new invention is defined as "no invention or technology published in any document before the date of filing of a patent application, anywhere in the country or the world".
   The novelty requirement states that an invention that should never have been published in the public domain. It must be the newest that has no same or similar prior arts.
3. Inventive steps or non-obvious: Under Section 2(ja) of the Patents Act, an inventive step is defined as "the characteristic of an invention that involves technological advancement or is of economic importance or both, as compared to existing knowledge, and invention that is not obvious to a person skilled in the art." This means that the invention should not be obvious to a person skilled in the same field where the invention is concerned.
4. Capable of industrial application: Industrial applicability is defined in Section 2 (ac) of the Patents Act, as "the invention is capable of being made or used in an industry". This means that the invention cannot exist in the abstract. It must be capable of being applied in any industry, which means that it must have practical utility in respect of patent.

These are statutory criteria for the obtention of a patent for an invention. In addition, other important criteria for obtaining a patent is the disclosure of a competent patent. A competent patent disclosure means that a patent draft specification must adequately disclose the invention, so as to enable a person skilled in the same field related to carrying out the Invention with undue efforts.

Rights of patentee

• Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or distribute the patented article or substance in India, or to use or exercise the method or process if the patent is for a person. This right can be exercised either by the patentee himself or by his agent or licensees. The patentee's rights are exercisable only during the term of the patent.
• Right to grant license: The patentee has the discretion to transfer rights, grant licenses or enter into some other arrangement for a consideration. A license or an assignment must be in writing and registered with the Controller of Patents, for it to be legitimate and valid. The document assigning a patent is not admitted as evidence of title of any person to a patent unless registered and this is applicable to assignee not to the assignor.
• Right to surrender: A patentee has the right to surrender his patent, but before accepting the offer of surrender, a notice of surrender is given to persons whose name is entered in the register as having an interest in the patent and their objections, if any, considered. The application for surrender is also published in the Official Gazette to enable interested persons to oppose.
• Right to sue for infringement: The patentee has a right to institute proceedings for infringement of the patent in a District Court having jurisdiction to try the suit.

Types of patent application in India

1. Provisional application - Also known as a temporary application, a provisional application is filed when an invention is still in the pipeline and has not been finalized. Early filing of a patent will prevent any other related inventions from being designated as prior art to the inventor's application.
   This type of patent application is filed when an invention requires additional time for development.
2. Ordinary or non-provisional application - This type of application does not have any priority to claim or if the application is not filed in pursuance of any preceding convention application.
   A complete specification can be filed through:
   1. Direct filing: Wherein the complete specification is initially filed with the Indian Patent Office without filing any corresponding provisional specifications.
   2. Subsequent filing: Wherein the complete specification is filed after the filing of the corresponding provisional specification which claims priority from the filed provisional specification.
3. Convention application - The convention application is filed for claiming a priority date based on the same or a similar application filed in any of the convention countries.
   To take advantage of the convention, an applicant must apply to the Indian Patent Office within a year from the date of the initial filing of a similar application in the convention country.
   To re-iterate in simpler terms, a convention application entitles the applicant to claim priority in all of the convention countries.
4. PCT international application - Though the Patent Corporation Treaty (PCT) international application does not provide an international patent grant, it paves the way for the streamlined patent application process in many countries at once. PCTs can be valid in up to 142 countries.
5. PCT National application - This application is filed if the applicant discovers that he has come across an invention, a slight modification of the invention that has already been applied for or patented by the applicant. A PCT National application can be filed if the invention does not involve a substantial inventive step.
6. Divisional application - An applicant may choose to divide an application and furnish two or more applications if a particular application claims more than one invention. The priority date for these applications is similar to that of the parent application.

How to file patent application?

Step 1: Patent search:

To file a successful patent registration, you need to ensure that your invention idea is unique. Carrying a patent search will confirm this, and the individual can also avoid lengthy procedures.

Step 2: Patent application filing:

Patent Filing is considered to be the most crucial aspect. The complete process specification is a specialized task that can be done correctly through expert advice.

Drafting a patent application is an art, and it will be wise to seek expert's help. If the individual is in the initial stages of research and development, it is best to file a provisional patent application.

Step 3: Preparing patentability report:

The patent professionals or agents will then do extensive research and prepare the patentability report. Hence, the applicant should attach all the specified documents along with the patent application.

Step 4: Publication of patent application:

After this, the application is then published in the Patent journal within 18 months. Request for early filing of the patent can be made along with the prescribed fees.

Step 5: Publication of filed patent:

For patent registration in India, the Indian Patent Office keeps every patent application confidential until it gets officially published in the Patent Journal.

The publication of filed patent happens automatically after 18 months from filing the applications, and there is no need for any request to be raised.

Step 6: Patent examination:

Within 48 months from the patent's first filing, there should be a formal submission of a request for the patent examination. If the applicant fails to file a request within the given time, the application will be treated as withdrawn by the patent office. The examiner then conducts a comprehensive investigation and releases the first examination report called patent prosecution.

Step 7: Patent objections:

Patent applications may also receive objections, if this occurs it is mandatory to analyse the patent examination report and draft a proper response to the objections.

Step 8: Grant of patent:

Once all the patentability requirements are met, the granted patent's notification will be published in the Patent Journal.

A patent once granted is valid for 20 years and requires renewal every year from the third year of the date of application. For first two years, there is no renewal fee. In case the renewal fee is not paid the patent will be ceased.

Where to file a patent application?

One can file a patent application through the comprehensive online filing system. More information for filing an online application is available on the patent office website.

Generally, in order to file an application, an applicant is required to file Form 1 that is a request for filing an application and Form 2 that is either a provisional or a complete specification with drawings, if any. In addition to these, an abstract of the invention is also required. If the application is filed through a registered patent agent, a power of authority in favour of the said agent in Form 26 is also required.  

In India, there are four patent offices located at Kolkata, New Delhi, Mumbai and Chennai. Each office has a separate territorial jurisdiction. The appropriate office for all proceedings including filing of the application normally depends upon:

• Place of residence, domicile, or business of the applicant (first mentioned applicant in the case of joint applicants).
• The place from where the invention originated.
• Address for service in India given by the applicant when the applicant has no business or domicile place in India (Foreign applicants).

Mumbai patent office jurisdiction includes:

The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu, and Dadra & Nagar Haveli fall under the Mumbai patent office jurisdiction.

Delhi patent office jurisdiction includes:

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi, and the Union Territory of Chandigarh fall under the Delhi patent office jurisdiction.

Chennai patent office jurisdiction includes:

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, and the Union Territories of Pondicherry and Lakshadweep fall under the Chennai patent office jurisdiction.

Kolkata patent office jurisdiction includes:

The rest of India, the States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh, and Union Territory of Andaman and Nicobar Islands fall under the Kolkata patent office jurisdiction.