A GUIDE TO INDIA'S PATENT PROCESS

Table of Contents

INTRODUCTION TO PATENT:

The Act VI of 1856 was the first legislation in India regarding the patent which was afterward repealed by Act IX of 1857 since it‘s been enacted without the approval of the British Crown.

In 1859, another legislation was introduced for granting “Exclusive Privilege”. This legislation is known as Act XV of 1859. This legislation undergoes some changes of the previous legislation, namely, granting of exclusive privileges to useful inventions only, an extension of priority period from 6 months to 12 months, excluding importers from the definition of investors.

In 1872, the Act of 1859 was combined to provide protection relating to designs. The act was renamed “The Patterns and Designs Protection Act” under Act XIII of 1872 which was further amended in 1883. This act was remained in force for 30 years and was again amended in 1888.

The Indian Patent and Design Act, 1911 repealed all the previous acts that have been enacted. The present Patent Act, 1970 came into force in the year 1972, further amending and combining the prevailing law relating to Patents in India. This act was again amended by the Patents (Amendment) Act, 2005, wherein product patent was extended to all or any fields of technology including food, drugs, chemicals, and micro-organisms.

This amendment repealed provisions relating to Exclusive Marketing Rights (EMRs) whereas a provision for enabling grant of compulsory license and pre-grant and post-grant opposition has been introduced.

A patent is a branch of intellectual property rights like Trademark, Copyright, etc are. The word “patent” is derived from the Latin term “patere” which implies “to lay open,” i.e. to make available for public inspection. A patent is a license that confers an exclusive right or title to the owner for a limited or specific period of time to exclude others from making, using, or selling an invention and the violation of these exclusive rights or title of the patent holder is known as patent infringement.

In India, the act that govern the patent is Patents Act, 1970. The main motive behind the enactment of the Patent Act is to encourage people to come up with new ideas in their field by awarding them exclusive rights over their inventions.

PERSONS ENTITLED TO APPLY FOR PATENT:

Person who are entitled to make an application under the Patents Act, 1970 are mentioned under the Section 6 of the said act.

Subject to the provisions mentioned in the Section 134 the following persons are entitled to make an application for the patents. These include:

  1. The one who claims to be the true and first inventor of the invention to be patented.
  2. The person who is acting as the assignee of the person claiming to be the true and first inventor of the invention.
  3. If the person claiming to be the true and first inventor is dead, then anyone being his legal representative by force of law can make an application.

TYPES OF PATENT APPLICATION UNDER THE PATENT ACT, 1970:

Provisional Application:

  1. This kind of an application is filed before the Patent office to claim the Priority.
  2. Majorly it is filed in the cases when the Inventor is in need of some extra time to improve his/her invention and also to prevent others from misappropriating the inventor’s invention.
  3. One of the major benefit in filing this application is that the Patent Office also follows the “First to File Approach.”
  4. The complete specifications relating to the invention must be filed within 12 months from the date of filing the provisional application and the failure of the same would result in cancellation of the patent application.
  1. Ordinary Or Non-Provisional Application:
  1. It can be filed by the Applicant if he/she does not have any priority to claim.
  2. It is filed before the Patent Office,
  3. Complete specification relating to the invention must be provided.
  1. Conventional Application:
  1. It is filed before the Patent Office.
  2. A priority date is claimed in such kind of application in the situation where a patent application is filed in more than one convention countries.
  3. Application should be filed in the Indian Patent Office within 12 months from the date of initial filing of the Application in the Convention Country.
  1. PCT International Application:
  1. It is a streamlined patent application to file for many countries in one go.
  2. The governing treaty for this kind of application is Paris Convention Treaty, which is valid in 142 countries of the world.
  3. The benefit of going under this type is that in just one application the applicant can get protection in 142 Countries.
  1.  PCT National Phase Application
  1. it is filed by the applicant in each country in which he wants to seek protection.
  2. Must be filed within 30-31 months from the priority date or the international filing date, whichever is earlier.
  1. Application for Patent of Addition
  1. When an applicant has already applied for or has obtained a patent in some invention and in the same there is some modification or alteration to be made, then in this case, this kind of application is filed by the applicant.
  2. There is no need of paying any separate fees during the term of the Main Patent.
  1. Divisional Application:
  1. This applies in the case when the Patent Applicant claims more than one invention.
  2. The applicant on his own or due to official objection divides the Application into 2=3 smaller applications from the Parent Application.
  3. The priority date for all the smaller invention would be the same as that of the Parent Application.

PROCEDURE FOR GRANT OF PATENT:

    1. Once the Application for the Patent is made before the Patent Office, a request for the Examination of the Application is to be made before the Patent Office within 48 months from the date of priority or the initial date of filing the application.
    2. After the completion of the Examination there is issuance of a First Examination Report and a chance is provided to the Applicant to resolve the objections that are raised in the report.
    3. The applicant must comply with all the requirements in the time frame of 6 months and this time duration may be extended for another 3 months but it is on the discretion of the Patent Officer.
    4. If the requirements are not fulfilled by the applicant within the prescribed time, then the application is considered to be abandoned by the Applicant, if however the objections are resolved by the Applicant within the time prescribed then the patent is granted and the same is notified to the Patent Office Journal.

 

OPPOSITION TO GRANT OF PATENT:

Section 25 of the Patents Act, 1970 talks about Opposition to Patent. There are 2 kinds of opposition to the grant of Patents. These are:

  1. Pre-Grant Opposition:

Section 25(1) of the Patents Act, 1970 states about the pre-grant opposition and states that any person in writing can raise the objection to the grant of Patent after the Publication of the Application and Before the Grant of the Patent.

  1. Post-Grant Opposition:

The Section 25(2) of the Patents Act, 1970 deals with Post-Grant Opposition and states that is should be raised within one year of the Publication of the Grant of Patent by way of providing with a notice of such opposition.

The notice must contain the following:

  1. The nature of the opponent‘s interest;
  2. The facts under which opposition is done; and
  3. The relief which the opponent seeks

GROUNDS OF OPPOSITION:

Pre-grant opposition can be made on the grounds that are listed under Section 25(1)(a) to (k) of the Patent Amendment Act, 2005:

  1. Wrongfully obtaining the invention
  2. Anticipation by prior publication
  3. Anticipation by prior date, Prior claiming in India
  4. Previous public knowledge or public use in India
  5. Obviousness and lack of inventive step
  6.  Non-patentable subject matter insufficiency of a description of the invention non-disclosure of the information as per the requirement or providing materially false information by an applicant
  7. A Patent application that is not filed within 12 months of filing the first application in a convention country
  8. Nondisclosure or incorrect source of biological material
  9. Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.Similar to the pre-grant opposition as mentioned above, a post-grant opposition could also be filed on a number of grounds as specified under Section 25(2) of the Act.

CONCLUSION

Understanding the patent application process under the Indian Patent Act, 1970 is crucial for inventors who seek to protect their innovations. The various types of patent applications—provisional, ordinary, PCT international, and divisional—provide inventors with the flexibility to choose the most suitable path based on their needs, whether they are looking to secure priority rights, file internationally, or make minor improvements to existing inventions

The procedures for filing a patent, from the application stage to the examination and grant, are designed to ensure that only those inventions which meet the legal criteria—novelty, inventive step, and industrial applicability—receive protection. The provisions for opposition, both pre-grant and post-grant, further safeguard the integrity of the system by allowing third parties to challenge patents that may not meet these criteria.

Thus, the patent application process is designed not just to protect individual inventors, but to contribute to a larger system of innovation that benefits society as a whole. By securing exclusive rights to their inventions, patent holders are incentivized to continue their work and share their knowledge, while the broader community benefits from the progress and advancements these inventions bring. The balance between granting protection and allowing challenges ensures a fair and transparent process, encouraging both innovation and competition.

 

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