Indian Patent System is governed by the Patents Act, 1970 (as amended) and the Patent Rules, 2003 (as amended)
Indian Patent Office has four branches in four jurisdictions – New Delhi, Chennai, Mumbai and Kolkata, wherein a patent application is filed based on the address of the Applicant or address of service in case of foreign applicants.
Indian Patent system is a first-to-file system.
Ordinary Application: A patent application is directly filed in Indian Patent Office without claiming priority of a patent application filed in other country. The patent application can be filed either as provisional application or complete application. After filing of a provisional specification, Applicant gets 12 months to file complete specification.
Convention Application: An applicant can file an application in Indian Patent Office under Paris Convention by claiming priority of one or more patent application(s) filed in any other country. The Indian Patent Application should be filed within 12 months of filing date of earliest priority application filed in other country.
PCT Application: Applicant may enter national phase in India within 31 months from the date of filing of earliest priority application (if there is one) or from the date of filing of PCT application (if no priority has been claimed).
In case of convention and PCT application, only complete specification is filed in Indian Patent Office.
As per Section 2(1)(j) of the Patents Act , 1970 (as amended), a patentable invention is defined as a new product or process involving an inventive step and capable of industrial application.
Therefore, following are the basic requirements for any invention to be patentable.
NOVELTY: Section 2(1)(l) of the Act states “new invention” means any invention or technology 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 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. To be patentable the subject matter of the invention must not be known before the date of patent filing. An invention is considered as new if it is not published in any document or not used in the country or elsewhere in the world.
INVENTIVE STEP: Section 2(1)(ja) of the Act states that “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.
INDUSTRIAL UTILITY: Section 2(1) (ac) of the Act states that “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry. The requirement of workability and usefulness are both connected to the requirement of industrial applicability.
Non-Patentable Inventions: There are around 15 types of invention which are excluded from patent eligibility under the Patents Act, 1970(as amended). Herein below is enumerated important provision provisions relating to non-patentable inventions.
Section 3: What are not inventions:
The following are not inventions within the meaning of this Act,—
(i) Section 3(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
Section 3 (c) is applicable on products which are directly isolated from nature, are not patentable subject-matter.
However, processes of isolation of these compounds can be considered subject to requirements of Section 2 (1) (j) of the Act.
(ii) Section 3(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
Section 3 (d) is applicable to both product and process claims.
For Product claims, it is required to provide enhanced efficacy data. In case of Process/method claims, it required to establish that a known process either involve a new reactant or result in a new product.
(iii) Section 3(e): 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.
Section 3(e) is applicable on composition/combination claims. The Applicant is required to establish the presence of two active ingredients, ratios/ranges of the components and synergistic data of the claimed composition over its individual components.
(iv) Section 3(f): the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(v) Section 3(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
Section 3 (i) is applicable on “method of treatment” or “method of diagnosis” claims. Dosage forms/ Methods of administration / modes of administration of compositions/drugs etc. are objected under the aforementioned provision of the Act.
(vi) Sectin 3(j): plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
Although, microorganisms are excluded from non-patentability list, a conjoined reading with Section 3(c) of the Act implies that only modified microorganisms, which do not constitute discovery of living thing occurring in nature, are patentable subject matter under the Act.
Claims relating to essential biological processes of growing plants, germination of seeds, of development stages of plants and animals shall be objected under Section 3 (j) of the Act.
(vii) Section 3(k): a mathematical or business method or a computer programme per se or algorithms;
The substance of the claim without wholly relying on the forms and types of the claims is judged.
If any claim in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium falls under the any of the excluded categories, such a claim would not be patentable. However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.
Claims which are directed towards computer programs per se are excluded from patentability, like,
(i) Claims directed at computer programmes/ set of instructions/ Routines and/or Sub-routines.
(ii) Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium.
Invention should have a technical character and provide a technical solution to a technical problem and the steps of the invention are implemented through constructional features.
(viii) Section 3(m): a mere scheme or rule or method of performing mental act or method of playing game;
Constructional features that carry out the steps of claimed process are incorporated in claims in order to overcome objection under Section 3(m) of the Act.
(ix) Section 3(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
If a composition is claimed where there is a surprising effect of the claimed combination vis-a-vis the already known product comprising traditionally known components, it is a patentable subject matter.
Publication of a Patent Application:
After filing the application for patent in India, the patent application is published ordinarily after 18 months of filing the application. This is called automatic publication. However, a request for early publication can be made by paying the prescribed fee. When a request for early publication is made, the application gets published within one month from the date of the request.
Examination of a Patent Application:
A request for examination is required to be made for examination of the application by the Indian Patent Office.
Post Patent (Amendment) Rules, 2016, there are three mechanisms for filing request for examination (RFE).
First mechanism: Ordinary request for examination [Rule 24B]
Request for examination (RFE) to be filed within 48 months from the date of earliest priority
After filing of RFE, application is examined in serial order of request for examination.
Second mechanism: Express request for examination [Rule 20(4)(ii)]
Applicable only to national phase PCT application. Request can be made by paying higher official fees as compared to ordinary request for examination.
However, our experience shows that this mechanism has not resulted in faster examination of patent applications.
Third mechanism: Expedited request for examination [Rule 24C]
Request for expedited examination of applications may be made by an Applicant on the following grounds by paying higher official fees as compared to ordinary request for examination:
(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or
(b) that the applicant is a startup.
This mechanism results in quick examination and grant of a patent application.
Apart from above criteria under (a) & (b), there is a possibility that in near future, this facility of expedited examination will be extended to cover small entities, women applicant, governmental institutions and for Applicant from certain countries having specified arrangement with Indian Patent Office etc..
After filing of request for examination, First Examination Report is issued by Indian Patent Office. The Applicant is given an opportunity to meet the objections raised in the report. The Applicant has to comply with the requirements within 6 months from the issuance of the First Examination Report. A further extension of 3 months is available by paying official fees.
If the requirements of the first examination report are not complied within the above prescribed period and extended period (if requested), then the application is treated to have been abandoned by the applicant.
After submission of reply to the first examination report, if the Controller/Examiner is satisfied with the reply, then the Controller issues grant of the patent. However, if the Controller/Examiner feels that any requirement of the examination report or the Patents Act and Rules has remained outstanding, he/she issues a Hearing Noticed wherein a Hearing is appointed before the Controller. In the Hearing, the Applicant or the Agent of the Applicant is required to explain the objections as contained in the Hearing Notice to the Controller, followed by submission post hearing written reply that are to be filed within 15 days of Hearing.
The Controller/Examiner reviews the post hearing submission and if the Controller is satisfied that all the requirements of the Patents Act and Rules as well as Hearing Notice have been complied with, the Controller issues grant of Patent.
After the removal of objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal.
In case the Controller is not satisfied even after hearing as well as on review of post hearing submissions, the Controller issues refusal of the Patent Application. If a patent application is refused, the Applicant has the option of filing an appeal before Intellectual Property Appellate Board (IPAB) challenging the order of the Controller.
The term of every patent in India is twenty years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification.
It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
The first annuity fees becomes due before the expiration of the 2nd year from the date of the patent in respect 3rd year of the patent. Similarly, subsequent annuities become due in subsequent years and last annuity becomes due before the expiration of 19th year from the date of the patent in respect 20th year of the patent.
The period of payment of annuity is extendable by six months by making a formal request along with prescribed official fees.
In case a patent is granted later than 2 years from the date of filing of patent application (which is usually the case), annuity fees which have become due in the meantime may be paid within a period of three months from the date of recording of the patent in the register or within the extended period of maximum of six months from the date of recording of patent. In other words, a further period of three months is available on making a formal request for extension of time along with prescribed official fees.
The Indian Patents Act does not require patentee to compulsorily mark a patented article. However, if an article is not marked with patent number, the potential infringer may take a defense of innocent infringement unless patentee proves that the infringer has notice of existence of patent by any other means such as cease and desist notice.
Therefore, it is advisable to mark a patented article as “Patented” or “Patent” accompanied by the patent number.
Any unauthorized claim of patent rights by marking an article with “patent”, “patented” or “patent pending” etc. is an offence punishable with fine of upto one lakh rupees (USD 1500/-)
Indian Patents Act provides three tier system for testing validity of a patent application or a granted patent.
Any person can file an opposition by way of representation at any time after the publication of a patent application but before the grant of the patent on the grounds available under section 25(1) of the Patents Act.
Only a person interested can file a notice of opposition before the Controller of Patents at any time after the grant of patent but before the expiry of one year from the date of publication of the grant of a patent on the grounds available under section 25(2) of the Patents Act.
Grounds of Opposition under Pre-Grant and Post-Grant Opposition are exactly same.
A patent can be cancelled during the term of patent, by filing a revocation petition by any person interested or by the Central Government at the Intellectual Property Appellate Board(IPAB) or on a counter-claim in a suit for infringement of the patent at the High Court, on any of the grounds contained in section 64(1) of the Patents Act.
If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using, offering for sale, selling or importing the patented product in India.
If the patent is for a process, then the patentee has the right to prevent others from 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.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim for damages retrospectively from the date of publication of the application for grant of the patent.
Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any patented invention within the India.
Under the Patents Act, 1970 only a civil action for infringement of patent can be initiated in a Court of Law not inferior to a district court.
An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground for revocation is available as a defense and revocation can be counter claimed in infringement proceedings. In case a counterclaim of revocation is filed by the defendant, the suit along with counter claim is transferred to the High Court for decision.
UNIQUE REQUIREMENTS/PROVISIONS UNDER THE PATENTS ACT
REQUIREMENTS UNDER SECTION 8 OF THE PATENTS ACT TO SUBMIT PARTICULARS AND UPDATES OF FAMILY FOREIGN APPLICATIONS
Section 8 contains two specific requirements:
Section 8(1): filing particulars of patent applications filed in other countries which relate to same or substantially same invention as Indian Patent Application are required to be filed in Form-3. The particular are in terms of country, application number, filing date, publication date and publication number, grant number/grant date, status etc.
These details are required to be filed within six months of filing of Indian Patent Application and within six months of filing of subsequent foreign patent application.
Section 8(2): prosecution documents including search and examination reports, reply to the examination report, claim amended, rejected or granted, etc. are to be filed on requisition from Controller/Examiner. The documents need to be filed within six months of requisition by the Controller/Examiner.
Delay in filing in details and documents under Section 8 may be condoned to some extent at the discretion of the Controller
Failure to compliance of Section 8 is a ground for pre-grant opposition, post grant opposition and revocation of a patent.
Every patentee and every licensee is required to furnish within three months from the end of every calendar year, a statement as to the extent to which the invention has been worked in India on a commercial scale in the preceding year in Form-27. Non-filing of this statement is liable to punished with a fine of ten lakh rupees (USD15000/-). Also, if an applicant knowingly furnishes false information, he/she would be liable for imprisonment and/or fine.
After three years from the date of grant of a patent, an interested party may apply to the Controller for the grant of a compulsory license alleging that: the reasonable requirements of the public with respect to the invention have not been satisfied, or that the invention is not available at a reasonable price, or that the patented invention has not been worked in the territory of India.
If the Controller is satisfied that a prima facie case for an applicant for compulsory license has been made, he shall direct the applicant to serve copies of the application upon the patentee and any other person interested in the patent and shall publish the application in the official journal. The patentee and any other person interested in the patent, if they so desire, may oppose the application for compulsory license within time prescribed by the Patents Rules.
For any specific query related to Patents law and procedure in India, please contact us at ip@avntltech.com