Patents & Intellectual Property India – FAQs – Patents & IPR

Patents & Intellectual Property India – Frequently asked questions about Patents & IPR in India, The Patents (Amendment) Act 2005 effective from 1^st January 2005,

Under the provisions of section 159 of the Patents Act, 1970 the Central Government is empowered to make rules for implementing the Act and regulating patent administration.

Read All the Frequently Asked Questions About Patent Law in India & Intellectual Property Rights here,

What is a Patent in India?

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 his consent.

Criteria of Patentability in India

An invention is patentable subject matter if it meets the following criteria –

• It should be novel.
• It should have inventive step or it must be non-obvious
• It should be capable of Industrial application.
• It should not attract the provisions of section 3 and 4 of the Patents Act 1970.

Types of inventions that are not patentable in India

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not
qualify for a patent under the following situations:

1. An invention which is frivolous or which claims anything obviously contrary to well
   established natural laws;
2. 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;
3. 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;
4. The mere discovery of a new form of a known substance which does not result in
   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 regards to efficacy.
5. 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;
6. The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
7. A method of agriculture or horticulture;
8. 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;
9. 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;
10. A mathematical or business method or a computer program per se or algorithms;
11. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
12. A mere scheme or rule or method of performing mental act or method of playing game;
13. A presentation of information;
14. Topography of integrated circuits;
15. An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;
16. Inventions relating to atomic energy.

Types of Patent Applications in India

The types of applications that can be filed are:

• A) PROVISIONAL APPLICATION
  Indian Patent Law follows first to file system. A provisional application is an application which can be
  filed if the invention is still under experimentation stage. Filing a provisional specification provides
  the advantage to the inventor since it helps in establishing a ―priority date of the invention.
  Further, the inventor gets 12 months’ time to fully develop the invention and ascertain its market
  potential and to file the complete specification.
  
• B) ORDINARY APPLICATION
  An application for patent filed in the Patent Office without claiming any priority either in a
  convention country or without any reference to any other earlier application under process in the
  office. Such type of application is known as an ordinary application.
  
• C) CONVENTION APPLICATION
  An application for patent filed in the Patent Office, claiming a priority date based on the same or
  substantially similar application filed in one or more of the convention countries is known as a
  convention application. In order to get convention status, an applicant should file the application in
  the Indian Patent Office within 12 months from the date of first filing of a similar application in the
  convention country.
  
• D) PCT INTERNATIONAL APPLICATION
  An Application filed in India as Receiving Office (RO) under Patent Cooperation Treaty is an international application which can be filed in more than 150 countries by a single application.
  
• E) PCT NATIONAL PHASE APPLICATION
  When an international application is made according to PCT designating India, an applicant can file
  the national phase application in India within 31 months from the international filing date or the
  priority date, whichever is earlier.
  
• F) PATENT OF ADDITION
  When an invention is a slight modification of the earlier invention for which he has already applied
  for or has obtained patent, the applicant can go for patent of addition if the modification in the
  invention is new. One of the benefits of filing patent of addition is that there no need to pay
  separate renewal fee for the patent of addition during the term of the main patent and it expires
  along with the main patent.
  
• G) DIVISIONAL APPLICATION
  When an application claims more than one invention, the applicant on his own or to meet the
  official objection on the ground of plurality or distinct invention may divide the application and file
  two or more applications, as the case may be for each of the inventions. This type of application,
  divided out of the parent one, is known a Divisional Application. The priority date for all the
  divisional applications will be same as that of the main (the Parent) Application (Ante-dating).

Available e-filing facilities at www.ipindia.gov.in

The following are the e-filing facilities available for an applicant:

• Comprehensive e-filing facility for Patents and Designs,
• Comprehensive payment gate way including net banking, payment by Debit/Credit card
• Web based Simple Registration process and filing procedure
• Real time Validations with IPO Patent database
• Manage User Profile and Folders
• 10% fee reduction on online filing compared to offline filing to promote online filing.
• Request for expedited examination- only through e-filing

Eligibility conditions for registration as patent agents

Eligibility conditions for registration as patent agents are below,

A person shall be qualified to have his name entered in the register of patent agents if he fulfills the
following conditions, namely —
(a) he is a citizen of India;
(b) he has completed the age of 21 years;
(c) he has obtained a degree in science, engineering or technology from any university established
under law for the time being in force in the territory of India or possesses such other equivalent
qualifications as the Central Government may specify in this behalf,
and, in addition —
i) has passed the qualifying examination prescribed for the purpose; or
ii) has, for a total period of not less than ten years, functioned either as an examiner or discharged
the functions of the Controller under section 73 or both, but ceased to hold any such capacity.

Documents needed by Patent Agents to File Patent

Following documents have to be submitted in original by patent agent after filing them
electronically:

1. The Authorization of Patent Agent or Power of Attorney
2. Proof of the right to make an application
3. Deed of assignment, certificate regarding change in name of the applicant, license agreement
4. Declaration of inventor-ship
5. Priority document

Benefits provided by the Government of India to Startup applicants for filing patent applications

Government of India provides the following benefits to Start Ups in filing patent application in India
under Scheme for Facilitating Start-ups Intellectual Property Protection (SIPP):

• An entity qualifying as a start up‘ under Stand-Up India initiative of the
  Government of India can avail the facility of expedited examination.
• The Government reimburses the expenditure to the facilitator who assists the Startup for filing and
  prosecuting the patent application to the extent of Rs.10,000/-

Patent Cooperation Treaty (PCT)

The PCT is an international treaty with more than 150 Contracting States which are bound with
certain formal requirements set out in the Treaty and Regulations. The PCT makes it possible to seek
patent protection for an invention simultaneously in a large number of countries by filing a single international patent application instead of filing several separate national or regional patent
applications however, granting of patents remains under the control of the national or regional
patent offices after the corresponding national phase application has been filed and the national
phase application is assessed as per patent law of that jurisdiction.

As per Indian Patent Act 1970 as amended and the Patents Rules 2003 as amended by (amendment)
rules 2016, any PCT international application may be filed designating India and it shall deemed to
be an application if the corresponding national phase application has also been filed.

Procedure of Patent Cooperation Treaty (PCT)

The PCT procedure includes:

1. Filing: File an international application with a RO/IN national patent Office or directly with
   International Bureau (IB) of WIPO, complying with the PCT formality requirements and fees. In India
   PCT application are filed at appropriate patent offices decided on the basis of territorial limits (Rule 4, Indian Patent Act 1970 as amended and patent Rules 2003 as amended).
   
2. International Search: An ―International Searching Authority (ISA) identifies the published patent
   documents and technical literature (―prior art) which may have an influence on whether your
   invention is patentable, and establishes a written opinion on your invention‘s potential patentability. Indian Patent office, Delhi Branch performs the function of ISA on receipt of prescribed fee specified in Fifth Schedule of patent act 1970 as amended and patent rules 2003 as amended.
   
3. International Publication: After expiration of 18 months from the earliest filing date (Priority
   Date), the content of your international application is disclosed to the world.
   
4. International Preliminary Examination (optional): one of the ISAs on request carries out an
   additional patentability analysis, usually on an amended version of your application. Indian Patent
   office, Delhi Branch performs the function of International Preliminary Examination (IPEA) on receipt
   of prescribed fee specified in Fifth Schedule of patent act 1970 as amended and patent rules 2003 as
   amended.
   
5. National Phase: After the end of the international PCT procedure, usually at 30/31 months from
   the earliest filing date of your initial application, from which you claim priority, you start to pursue
   the grant of your patents directly before the national (or regional) patent Offices of the countries in
   which you want to obtain them.
   
6. In India, 31 months is maximum time limit to enter national phase. To enter national phase an
   application corresponding to an international application is made in Form 1.

Advantages of the Patent Cooperation Treaty (PCT)

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The PCT System has many advantages for an applicant, for the patent Offices and for the general
public:

1. You have up to 18 months more than if you had not used the PCT to reflect on the desirability of
   seeking protection in foreign countries, to appoint local patent agents in each foreign country, to
   prepare the necessary translations and to pay the national fees;
   
2. If your international application is in the form prescribed by the PCT, it cannot be rejected on
   formal grounds by any PCT Contracting State patent Office during the national phase of the
   processing of the application;
   
3. The international search report and written opinion contain important information about the
   potential patentability of your invention, providing a strong basis for you to make business decisions
   about how to proceed;
   
4. You have the possibility during the optional international preliminary examination to amend the
   international application, enter into dialogue with the examiner to fully argue your case and put the
   application in order before processing by the various national patent Offices;
   
5. The search and examination work of patent Offices in the national phase can be considerably
   reduced due to the international search report, the written opinion and, where applicable, the
   international preliminary report on patentability that accompany the international application;
   
6. You may be able to fast-track examination procedures in the national phase in Contracting States
   that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements;
   
7. Since each international application is published together with an international search report,
   third parties are in a better position to evaluate the potential patentability of the claimed invention;
   
8. For an applicant, international publication online puts the world on notice of your invention. You
   may also highlight your interest in concluding licensing agreements on PATENTSCOPE, which can be
   an effective means of advertising and looking for potential licensees;
   
9. You also achieve other savings in document preparation, communication and translations because
   the work done during the international processing is generally not repeated before each Office (for
   example, you submit only one copy of the priority document instead of having to submit several
   copies); and
   
10. If your invention appears to be not patentable at the end of the international phase, you may
    abandon the PCT application and save the costs you would otherwise have incurred by directly
    seeking protection in foreign countries, appointing local patent agents in each foreign country,
    preparing the necessary translations and paying the national fees.

ePCT in Patents

ePCT is a WIPO online service that provides secure electronic access to the files of international
applications filed under the PCT as maintained by the International Bureau. The applicants can file
international applications using ePCT-Filing, with RO/IN as well as RO/IB.

Benefits of filing through ePCT

1. Applicants can avail a fee reduction as fixed by PCT division of WIPO from time to time.
2. Less cumbersome, for both RO as well as for the applicant.
3. Fast processing
4. Record copy transmitted to the IB on the same day

What is the Budapest Treaty?

This is an international treaty governing the deposition of microorganisms, cell lines etc in international approved authority approved by WIPO for the purpose of patent applications in any country that is a party to it. Because of the difficulties and, on occasion, of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others.

There are many international depositories in many countries, which are recognized under the Budapest Treaty. IMTECH, Chandigarh is a recognized depository in India.

Disclaimer:-The replies given to the probable questions are for the purpose of guiding the public and cannot be quoted in any legal proceedings. They will have no legal purpose. The users are advised to refer to the provisions of the Patents Act 1970 as amended and the Patents Rules 2003 as amended including the latest fee schedules, available at www.ipindia.gov.in