PATENT REGISTERATION IN INDIA

PROCEDURE FOR GRANT OF A PATENT IN INDIA

As a patent is granted by the government, the first step is to file an application for the grant thereof. After which a request for examination from the Indian Patent Office must be made. The applicant is then given 12 months from the issuance of the First Examination report to satisfy any objections raised by the Indian Patent Office. Should the applicant fail to do so the application will be deemed abandoned and nothing further will come off this. However, should the applicant succeed in satisfying the criteria of the Indian Patent, (s) he will be granted a patent and notification of same will be published in the Patent Office Journal. For a diagrammatical understanding of the Procedure for granting a Patent in India please refer to the flow chart on the right.

FILING OF APPLICATION FOR GRANT OF PATENT IN INDIA BY FOREIGNERS

As a signatory to both the Paris Convention for the Protection of Industrial Property (1883) and thePatent Cooperation Treaty (PCT) [1970] India is obliged to allow foreigners to file for an application for a grant of a patent within India following the same procedure outlined above. If the applicant is from a Convention Country (s) he has 12 months from the date (s) he applied for a grant in his/her Convention Country in which to make an application for same in India. This can be done by the applicant alone or by the applicant’s legal representative.

PRE-GRANT OPPOSITION

A Pre-Grant Opposition is filed in accordance with S11A Indian patent (Amendment) Act 2005 by an individual, third party or Government who wishes to challenge a PENDING Patent application and no later than 6 months following publication of application. The applicant must notify the Indian Patent Office or if the opposition is not from India then the controller of patents for that opposition must be notified. This can only be done once the applicant has filed his application but before it has been granted.

All applications must include a statement, evidence (where possible) and a request for a hearing.

S25 (1) (a) to (k) of the abovementioned Act lists the grounds upon which one may file a Pre-Grant Opposition application:-

  • Wrongfully obtaining the invention
  • anticipation by prior publication
  • anticipation by prior date, Prior claiming in India
  • Prior public knowledge or public use in India
  • Obviousness and lack of inventive step
  • non patentable subject matter
  • insufficiency of description of the invention
  • non-disclosure of information as per the requirement or providing materially false information by an applicant
  • Patent application not filed within 12 months of filing the first application in a convention country
  • nondisclosure/ wrong mention of source of biological material
  • Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.

The Indian Patent office or respective controller then sends a notification to the applicant giving the applicant 3 months to write back to the controller with further supporting evidence etc. so that the controller may decide what to do. The controller will either refuse grant of patent or it will grant the patent on the condition that applicant amends the secrets divulged (secrets) so that the controller is happy. There is no fee payable for the filing of such an application.

POST –GRANT OPPOSITION

Section 25(2) Patents Act 1970 allows third parties an opportunity to challenge an already granted patent. Such an opposition may be filed by any interested person within 1 year of publication the granted patent. The interested person who files an opposition shall do so in writing specifying the following:-

  • The type of interest the said person has
  • The basis for such an opposition
  • The restitution or damages (s)he seeks
  • Any supporting evidence
  • Notice of opposition.

Rule 57 Patents Act (Amended) 2003 places the onus of delivering a copy of same on the interested person. Under Section 25(3) Patents Act 1970 he Controller of Patents shall inform the patentee that his/her patent has been challenged.

The patentee has 2 months from date of receipt in which to respond to the claim and provide any supporting evidence and to send a copy of same to the individual challenging the patent. Should the patentee fail to do so it will be considered that the patentee has no objections and the patentshall be revoked.

The grounds for this opposition are the same as above but is examined by an opposition board of 3 members. The board will take into consideration all documents and give the controller of patents its recommendation. The controller of the patents has the right to decide whether the patent is amended, kept or revoked once the recommendation has been received and both parties have been heard.

HOW LONG DOES THE PATENT LAST?

Within Indian jurisdiction a patent usually lasts 20 years from the date the application for the grant of a patent was filed. However, if the applicant filed his/her application under the PCT then the 20 year time

period begins from the priority. In addition the Patentee must pay a renewal fee which can be paid in instalments on an annual basis or as a single lump sum payment.

RESTORING A PATENT

In order to restore a patent one must pay a specified amount and make a request for restoration on or before the expiration of 18 months from the date the patent terminated.

INFRINGEMENT OF A PATENT

A patent is infringed when the manufacture of, importation of, usage or sale of a patented invention is made within Indian Jurisdiction without the consent of the patentee. Such proceedings may only commence after a patent is granted (although it may be done with the benefit of hindsight) ad will be heard as a civil case in a court of law. Where an infringement suit is based on the grounds that a specific invention is not patentable in India the court can revoke a patent when claimed.

PATENTING BIOLOGICAL MATERIAL

Biological materials are things like Bacteria, bacteriophages (virusesaffecting bacteria), fungi, plasmids and Yeasts. When one invents something with such materials it is imperative that the biological material is dropped off at the International Depository Area (IDA). The IDA in India can be found at IMTECH (Institute of Microbial Technology) in Chandigarh. This must be done beforefiling an application so as to enhance the description of the invention. NOTE: Where the biological inventions in an invention are already known the need to drop off the materials at IDA is not essential.

WHAT ARE THE RIGHTS GRANTED BY PATENT?

Rights awarded to a patentee depend on what the patentee patents. If the patent pertains to a product then patent awards the patentee protection against a third party making, using, offering for sale, selling or importing the patented product in India. However, if the patent pertains to a process than the patentee is awarded against a third party using the process, using the product directly obtained by the process, offering for sale, selling or importing the product in India directly obtained by the process.

WHAT IS NOT PATENTABLE IN INDIA

An invention which satisfies 1 or more of the following criteria is not patentable in India:

(a) frivolous, (b) obvious, (c) contrary to well established natural laws, (d) contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a scientific principle, (h) the formulation of an abstract theory, (i) a mere discovery of any new property or new use for a known substance or process, machine or apparatus, (j) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance, (k) a mere arrangement or rearrangement or duplication of known devices, (l) a method of agriculture or horticulture and (m) inventions relating to atomic energy,

MAINTAINING SECRECY

The Indian Patent Office (IPO) only reveals a patent via publication in the Official Journal of Patent 18 months after an application is filed or priority date (whichever comes first). Until then it is kept a secret. A new edition is published weekly and once published the public are free to inspect and photocopy any documents where necessary.