disclaimer

• Before filing a patent application, it is important that a prior arts search, also known as a patentability search, is carried out. This search helps to gather information about the existing technology in the same field of invention. Based on the search results, one can proceed with drafting of the specification. A specification is of two types – provisional and complete. The former is usually filed when the invention has only been conceptualized, i.e. is only at the preliminary stage to block an early priority date. Alternatively, if the invention is complete, i.e. all supporting data has been generated, a complete specification is drafted. The patent application can be filed after the specification is finalized.

• True and first inventor,
• Assignee of the inventor, or
• Legal representative

An assignee can be a legal entity including a small entity and a startup. The small entity category was introduced in February, 2014 and has been defined as follows:

• In case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant machinery does not exceed the limit specified for a medium enterprise under Section (7)(1)(a) of Micro, Small and Medium Enterprises Development Act, 2006: and

• In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for medium enterprises under Section (7)(1)(b) of Micro, Small and Medium Enterprises Development Act, 2006.

The “startup” category was introduced in May 2016 and has been defined as follows: (i) more than five years have not lapsed from the date of its incorporation or registration; (ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed rupees twenty-five crores; and (iii) it is working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property: Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a startup. Provided further that the mere act of developinga. products or services or processes which do not have potential for commercialisation, or b. undifferentiated products or services or processes, or c. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.

In India, an invention ought to relate to a product or a process provided the product/process is novel, has inventive step, and is capable of industrial applicability.

An invention which is not a product or a process cannot be patented. In United States, plant patents allow their owner to have protection over any new and distinct variety of plant that has been asexually reproduced. However, in India, plant patents are not allowed. New plant varieties are protected under the Protection of Plant Varieties and Farmers’ Right Act, 2001. Similarly, a design patent gives the owner protection over the visual aspects of a product. In India, design patent is not allowed. Instead, protection of a new design is governed by the Designs Act, 2000. Utility models are also not allowed under the Patents Act of India. Utility models provide protection to minor inventions over the already existing products.

The product or process should be new that is it has not been used or known before, not obvious to person skilled in the art, and provides usefulness in an industry and which does not fall within the scope of the exclusions from patentability.

The Indian patent law prohibits patenting of products or processes if they fall under any of the following categories:

• an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
• an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
• the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
• 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;
• a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
• the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
• a method of agriculture or horticulture;
• any process for 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;
• plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
• mathematical or business method or a computer program per se algorithms
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
• a mere scheme or rule or method of performing mental act or method of playing game;
• a presentation of information
• topography of integrated circuits
• an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components
• inventions relating to atomic energy

Patents protect a person’s inventions by providing him exclusive rights to make, use, sell and offer for sale his invention. This, in turn, encourages and incentivizes further inventions leading to industrial and technological advancement and growth.   This exclusive right is conferred in exchange for complete disclosure of the invention. Thus after the expiry of the exclusivity the general public can make use of the disclosure of the invention to take the art forward and further innovate

Various types of application can be filed in India in order to obtain a patent. The following types of patent applications can be filed: Ordinary application, convention application, PCT National Phase Application, Application for Patent of Addition and Divisional Application.

An application for patent that is first filed in the Patent Office without making any reference to any other previously made application is called an ordinary application. An ordinary application can be accompanied by a provisional specification or a complete specification.

A patent application accompanied with a provisional specification is a type of patent application that is filed to secure the priority date for the invention.  A provisional application is usually filed when the invention is in the development stage and time is required for its completion. A patent is never granted based on the provisional specification. A provisional specification must be "converted" into a complete specification within 12 months of filing the provisional specification.

A complete patent specification is a complete disclosure of the invention that fully and particularly describes the invention. Claims are an essential of the complete specification. It is the complete specification that is published, examined and granted.

When a complete specification is filed within 12 months of filing the provisional specification, the specification is called a complete after provisional specification.

When at the first instance, an application is filed with a complete specification, it is a direct complete specification.

When an application is filed within twelve months from the date of first filing of a similar application in a convention country and claiming the priority date of the said application filed in the convention country, it is called a convention application. A convention application is accompanied by a complete specification.

An application filed claiming the priority and the filing date of an international application that is made according to the Patent Cooperation Treaty (PCT) is called a PCT National Phase Application. A PCT National Phase application has to be filed within 30/31 months from the date of priority or from the date of filing of the international application, whichever is earlier. In India, PCT national phase application is filed within 31 months from the date of priority or from the date of filing of the international application, whichever is earlier.

When there is a slight modification or improvement in an invention for which an application is already filed, the applicant can choose to file an application for a patent of addition.  The date of filing an application for a patent of addition shall be the same or later than the date of filing of the application for the main invention and an application for patent of addition shall not be granted before granting of the patent for the main invention.

• India has four patent offices located in New Delhi, Mumbai, Chennai and Kolkata.
• For Indian applicants:
• Territorial limits where the applicant resides or has a place of business.
• Territorial limits where the first applicant resides or has a place of business (in case of joint applicants)
• For foreign applicants (having no business place or domicile in India),
• The appropriate office will be according to the address for service in India given by the applicant or party in a proceeding, it could be the agent’s place of business

A patent is a territorial right, that is, a patent granted in India will give the owner the right to protect the invention only within the boundaries of Indian territory. Similarly, a U.S. patent gives protection only within United States.

There is no such thing as an international patent. An international application is an application made according to the Patent Cooperation Treaty. PCT does not grant any patent.

• Filing a PCT application allows one to seek patent protection for an invention simultaneously in each of 152 PCT member countries by filing a single patent application. The PCT is not a granting authority. It is a filing, searching and Examining Authority.
• PCT applications can be filed at the Indian Patent Office as Receiving Office for Indian nationals.
• The Indian Patent Office can also be elected as the ISA and IPEA.
• An Indian resident is not allowed to file or cause to be filed a PCT application as first filing without seeking a prior permission from the Indian Patent Office.

Applications can be filed manually or electronically. In fact, electronic filing is encouraged as the paper filing fees include a 10 % surcharge.

• Filing Requirement for Ordinary Application:
• Application form
• Provisional or complete specification
• Drawing (if necessary)
• Sequence Listing (if required)
• Abstract of the invention
• Information & undertaking listing the number, filing date & current status of each foreign patent application
• Declaration of inventor ship where provisional specification is followed by complete specification
• Power of attorney (if filed through Patent Agent)
• Fees (to be paid in cash/by cheque /by demand draft/online transaction)
• Permission from National Biodiversity Authority in case Biological material used from India. Otherwise mentioning the source in the specification. The permission may be procured later but before grant
• In case microorganisms are used that are not available to public and cannot be appropriately described the same to be deposited with International Depository Authority before filing of the application. The identification number may be informed to Patent Office later
• Filing Requirement for National Phase Application:
• Copy of the PCT Publication with the specification and drawings
• Copy of the specification (if the PCT application is not in English) required for filing in India
• Copy of the International Search Report
• Copy of the International Preliminary Report on Patent-ability
• Any amended pages filed on the basis of which examination in India is to be carried out
• Power of authority in our favour from the applicants
• Copy of Form PCT/IB/304
• All entry into Indian National Phase to be made with the same specification as in the PCT and amendments made at International Phase.

No. Any form of disclosure of the invention before filing of an application is prejudicial to the patentability of the invention.

This can be found out by carrying out a universal patentability or a prior art search using various search engines/software over patent and non-patent databases.

As per the patent law in India, if a biological material is used in the invention the applicant shall disclose the source and geographical origin of the biological material in the specification. If such material is not available to the public, the applicant shall deposit the material to an international depository under the Budapest Treaty and a reference thereof shall be made in the specification.

• If an invention uses a biological material from India, it is required that the applicant will seek approval from the National Biodiversity Authority. This is in regard with Section 6(1) of the Biological Diversity Act (BDA), 2002 which recites: No person shall apply for any intellectual property right, by whatever name called, in or outside India for any invention based on any research or information on a biological resource obtained from India without obtaining the previous approval of the National Biodiversity Authority before making such application.
• Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the seating of tile patent by the patent authority concerned:
• Provided further that the National Biodiversity Authority shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof.
• Biological resources as defined by the BDA: "biological resources" means plants, animals and micro-organisms or parts thereof, their genetic material and by-products (excluding value added products) with actual or potential use or value, but does not include human genetic material.

In recent times, Indian Patent Office has become very stringent and clear that inventions using biological material obtained from India will be subject to seeking permission from the NBA. Further, it has been made clear that application will not be granted until approval is received by Applicant. We have in a few extreme cases noted that not seeking NBA permission has been made a ground for the refusal of a patent application.

• The Indian Patents law requires an Applicant to keep the Patent office informed of the status of corresponding foreign applications filed outside India that relate to the same or substantially the same invention as filed in India within six months from date of such filing.
• The applicant is also required to submit the search and/or examination reports (office actions/communications from Examining Division) along with claims allowed of all corresponding foreign patent applications filed outside India when required by Patent office.

• Proof of right is a declaration of true and first inventor on the application form 1 or by way of separate assignment. If the application is made by a legal representative ‘death certificate or certificate of inheritance’ of the deceased should be filed as proof of right. Proof of right shall be submitted within six months from the date of application.

• At the expiry of 18 months from the date of filing of the said application or the date of the priority of the application, whichever is earlier, the application is published and this publication of application in the official journal is referred as 18 months publication. Such publication also marks the beginning of the pre-grant opposition period.
• Alternatively, a request of early publication, before expiry of the said timeline, may be made by the applicant along with prescribed fee.

• Examination of patent takes place only upon filing a request for examination along with the prescribed fees. A request for examination can be filed within 48 months of the date of priority or the date of filing the application, whichever is earlier.
• An express request for examination before the expiry of 31 months can be made only in respect of applications filed under the PCT (patent Cooperation Treaty) national phase application on payment of the prescribed fee.
• Another provision of expedited examination has been implemented from May, 2016, in which the patent applications which requested for expedited examination will be put in a queue separate from the patent applications for ordinary/ express examination. This provision of expedited examination is available only for startups and applicants who have elected India, in their PCT application as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

• The lifetime of a patent is 20 years from the date of filing of the patent application.

• A patent can be kept in force by paying the renewal fee for every year till the completion of the full term. The renewal fees shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year.

• Further, renewal of a patent can be done beyond the due date in the extended period of six months from that date on request filed with the prescribed fee. This period of six months is not extendable.

• If the renewal fee is not paid, the patent will lapse and stop being in force. A lapsed patent can however be restored on filing a valid request within a prescribed time.

• A patent can be restored within 18 months from the date of cessation, subject to the Controller's direction, upon filing following:
•  Application Form for restoration of lapsed patent with prescribed fee
•  Evidence to support the failure of renewal/maintenance fee was unintentional.

• SPC is right usually granted by the European Union to extend the life of an active product protected under a patent. SPC is granted to compensate for the duration that is lost to obtain marketing authorization of the product. India does not grant a SPC.

• There are two types of Opposition proceedings in patents:
• Pre-grant Opposition
• Any person may file an opposition by way of representation to the Controller against the grant of Patent, at the appropriate office, at any time after publication of patent application, but before the grant of Patent on any of the grounds mentioned in provisions of the act.
• Post – Grant Opposition
• Any person interested can file a Post Grant opposition against the grant of Patent within twelve months from the date of publication of grant of patent at the appropriate Office.

Any person interested or the Central Government may make a petition on one or more of the several grounds made available for revocation before the Appellate Board or on a counter-claim in a suit for infringement of the patent before the High Court.

• The patentee and every licensee should furnish the details of working of the invention in respect of every calendar year within three months of the end of each year and within two months whenever required by the Controller.
• Failure to supply such information is punishable with fine which may extend to ten lakh rupees.

• Any person interested can make an application to the Controller for grant of compulsory license for a patent after three years from the “date of grant” of that patent, if the
•   reasonable requirement of public has not been satisfied or
•   it is not available to the public at affordable price or
• if the patented invention is not worked in India.

• Patents can be both assigned and licensed. An assignment would generally record the transfer of ownership for a patent whereas a license can be a full or partial transfer of rights, title and interest.

• Judicial actions (available to a Patentee):
• Civil remedies are essentially judicial remedies as well as administrative remedy has been made available against importation of infringing products through the Customs Law
• Civil Territorial jurisdiction
• One may institute an infringement suit at any court not lower than that of the District Courts. A patentee can also choose to file an infringement suit in the High Courts of Delhi, Bombay, Calcutta and Madras which exercise original jurisdiction subject to the pecuniary jurisdiction as prescribed under the respective rules.

•  The defendant may file a counterclaim for the revocation of the patent or may even choose to file a petition for revocation of the patent before the Intellectual property appellate Board (IPAB) on various grounds as specified under the law.

Certain acts under the Indian patent laws are not considered as infringement. The provision for the same is guided by Section 107A. The Section 107A(a) recites that an act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product is not to be considered as an infringement of patent rights. This is in line with the ‘Bolar provision’. Also, importation of patented products by any person from a person who is duly authorized by the patentee to produce and sell or distribute the patented product is not to be considered as an infringement of patent rights.