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 1st 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,

Office Of The Controller General Of Patents, Designs &Amp; Trade Marks, Department For Promotion Of Industry And Internal Trade, Ministry Of Commerce &Amp; Industry, Government Of India
Office of the Controller General of Patents, Designs & Trade Marks, Department for Promotion of Industry and Internal Trade, Ministry of Commerce & Industry, Government of India

What is a Patent in India?

Table of Contents

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.

Intellectual Property India
Intellectual Property India

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.
Indian Patent Act 1970-Sections
Indian Patent Act 1970-Sections

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)

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.

What is the term of a patent in the Indian system?

The term of every patent granted is 20 years from the date of filing of application. However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.

Which Act governs the patent system in India?

The patent system in India is governed by the Patents Act, 1970 (No.39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003. The Patent Rules are regularly amended in consonance with the changing environment, most recent being in 2016.

Does Indian Patent give protection worldwide?

No. Patent protection is a territorial right and therefore it is effective only within the territory of India. There is no concept of global patent.
However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries or under PCT, within or before expiry of twelve months from the filing date in India. Patents should be obtained in each country where the applicant requires protection of his invention.

What can be patented in India?

An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under sections 3 and 4 of the Act

When should an application for a patent be filed?

An application for a patent can be filed at the earliest possible date and should not be delayed.

Can any invention be patented after publication or display in the public exhibition?

Generally, an invention which has been either published or publicly displayed cannot be patented as such publication or public display leads to lack of novelty. However, under certain circumstances, the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in an exhibition organised by the Government or disclosure before any learned society or published by applicant. The detailed conditions are provided under Chapter VI of the Act (Section 29-34)

Does the Patent Office keep information of the invention secret?

Yes. All the patent applications are kept secret upto 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Patent Office which is published every week and also available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.

Is it necessary to visit the Indian Patent Office to transact any business relating to patent application?

It is not necessary to visit the patent office to file the application as online filing facility is provided. Only in case the application is required to be filed offline, the same can be filed physically at the counter of the Office. Moreover, all the communications with the office are made through emails. However, hearing proceedings relating to patent application can be attended with prior appointment on any working day during prosecution stage.

Where can one find the information relating to published/ granted patent application?

The information relating to the patent application is published in the Patent office Journal issued on every Friday. This is also available in electronic form on the website of the Patent Office, www.ipindia.gov.in

What are the contents of the Patent office Journal?

The Patent office Journal contains information relating to patent applications which are published u/s 11A, post grant publication, restoration of patent, notifications, list of non- working patents and public notices issued by the Patent Office.

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Can one subscribe a copy of the Patent office Journal?

There is no need to subscribe the Patent Office journal as same is published online and is available free of cost on patent office site i.e. www.ipindia.gov.in

Who can apply for a patent?

A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.

How can I apply for a patent?

A patent application can be filed with Indian Patent Office either with provisional specification or with complete specification along with fee as prescribed in schedule I. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional application. There is no further extension of time to file complete specification after expiry of said period.

Is there provision for filing patent application electronically by online system?

Yes, one can file patent applications through comprehensive online filing system at
https://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin. More information for filing online application is available on the website of Patent Office i.e. www.ipindia.gov.in.

How can one register for online filing of patent application?

To register for filing of patent application, the user is required to obtain the Class II/III digital signature. After obtaining the digital signature, the user can register himself on the CGPDTM website by creating his user ID and password.

In which language can an application for patent be filed with the Indian Patent Office?

An application for patent can be filed either in Hindi or English.

Is there any jurisdiction for filing patent application in India?

Yes, India has four patent offices located at Kolkata, New Delhi, Mumbai and Chennai. Each office has a separate territorial jurisdiction.

Is it necessary to file a provisional Patent application in India?

It is not necessary to file an application with provisional specification and one can file application directly with complete specification.

When is an application for patent published?

Every application for patent is published after expiry of 18 months from the date of its filing or priority date whichever is earlier.

What are the facilities available for an applicant to pay the fees?

The applicant can pay the fee either at cash counter or online through a comprehensive payment gate way which includes net banking, payment by Debit/Credit card. More than 70 banks are part of this payment gateway.

Is patent application once filed examined automatically?

A patent application is not examined automatically after its filing. The examination is done only after receipt of the request of examination in Form 18 either from the applicant or from third party or Form 18A for expedited examination (under conditions as prescribed in the Rules).

What happens when applicant is not able to meet the requirement within the prescribed time?

If the applicant does not file a reply within 6 months or does not take an extension of 3 months, the application is deemed to have been abandoned.

Is there provision for extension beyond time limit of 9 months?

No, there is no provision for extension of time beyond the said period.

What is time limit for filing the representation for pre-grant opposition?

A representation for pre-grant opposition under section 25(1) of Patents Act, 1970 can be filed, on Form 7A within six months from the date of publication of the application u/s 11A or before the grant of patent.

Is there any fee for filing such representation for pre-grant opposition?

No, there is no fee for filing representation for pre-grant opposition? This can be filed by any person.

What are the grounds for filing representation for pre-grant opposition?

The grounds for filing pre-grant opposition are contained in section 25(1) of the Patents Act 1970.

What is the time limit for filing post-grant opposition in the patent office?

The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal of the patent office.

Is there any fee for filing post-grant opposition?

Yes, the post grant opposition has to be filed in the prescribed Form 7 along with prescribed fees as mentioned in First Schedule in Patents Rules 2003.. The post grant opposition has to be filed by the person interested and not by any other person.

What are the grounds for filing the post grant opposition?

The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.

When can a patent be restored after its cessation?

A request for restoration of patent can be filed within 18 months from the date of cessation of patent along with the prescribed fee. After receipt of the request the matter is notified in the official journal for further processing of the request.

What is start up criteria?

Start-up means an entity, incorporated or registered in India under the ―Start-up India: Stand-Up India” initiative of the Government of 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

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