FAQ'S PATENT SERVICE

In India, inventions that are novel, involve an inventive step, and have industrial applicability can be patented. These can include new products, processes, methods, or improvements to existing inventions.

In India, a Patent application is to be filed along with the requisite forms and the prescribed fees. The Patent application should essentially include:

1. Name, address, nationality of the Applicant(s)
2. Name, address, nationality of the Inventor(s)
3. Provisional/ Complete specification (in English or Hindi) along with drawings (if any).
4. Details of one or more priority applications from which priority is claimed
5. The following documents can be filed within a prescribed time after the filing of the Patent application:
Power of Attorney
Proof of Right (Assignment from the inventor(s) to the applicant(s)).
Particulars of the cognate foreign Patent applications corresponding to the Indian
Patent Application (if applicable)

In India, a Patent application can be filed as: (i) an Ordinary application (directly as a first filing with the Indian Patent office); or (ii) a Convention application using the convention route; or (iii) a National Phase Patent application of a PCT International application using the Patent Cooperation Treaty (PCT) route. Using the Convention route, a Patent application is required to be filed within 12 months from the earliest priority date. Using the PCT route, a National Phase Patent application is required to be filed within 31 months from the earliest priority date.

A Patent in India is granted for a term of 20 years.

Yes, every Patent application undergoes examination. For this, an Applicant is required to file a request for substantive examination within 48-months from the date of first filing of the application.

Substantive examination is conducted to ascertain novelty, inventive step/ non- obviousness and industrial applicability of the invention disclosed in the Patent application.

In India, a Patent application is only examined after a request for examination has been filed by an applicant. Post-examination, a first examination report (FER) and one or more subsequent examination reports (if applicable) are issued by the Examiner. The FER and the one or more subsequent examination reports may have procedural (relating to formal documentation) and substantive objections (relating to novelty and/or inventive step/ non-obviousness of the disclosed invention in light of prior art documents). The time line for responding to all examination reports is within 12 months from the date of issuance of the FER. Further, a hearing (i.e., a personal interview with the Examiner/ Controller) may be required if the objections cannot be resolved in response to the examination reports.

In India, there are four Patent Offices situated in Delhi, Mumbai, Chennai, and Kolkata. The appropriate office for filing the application depends upon the Applicant's address, domicile, place of business, or the location where the invention has been originated.

In case of foreign Applicants having no domicile or a place of business in India, the Patent Office will be determined based on the address for service of the appointed Patent Agent.

The date of first or earliest filing of a patent application is known as the priority date. In the first-to-file patent system, such as India, this date is crucial as it determines priority when there are multiple applications in public domain with similar subject matter.

In India, any new product or process involving an inventive step and capable of industrial application constitutes an invention, and satisfies to be a Patentable subject matter. However, the following subject matter does not constitute Patentable inventions in India:

1. Inventions that are frivolous or claim anything contrary to established natural laws or whose use/ commercial exploitation could be contrary to public order/ morality, or causes serious prejudice to human/ animal/ plant life or health or to the environment;
2. Mere discovery of a scientific principle; formulation of an abstract theory; discovery of any living thing or non-living substances occurring in nature;
3. Mere discovery of a new form of a known substance not resulting in the enhancement of the known efficacy of that substance; mere discovery of any new property or new use for a known substance or of the mere use of a known process/ machine/ apparatus unless such process results in a new product or employs at least one new reactant;
4. Substances obtained by mere admixture resulting in the aggregation of properties of the components or a process for producing such substances;
5. Mere arrangement/ re-arrangement/ duplication of known devices each functioning independently of one another in a known way;
6. Method of agriculture/ horticulture;
7. Process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings/ animals to render them free of disease or to increase their economic value or that of their products;
8. 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;
9. Mathematical/ business method/ computer program per se/ algorithms;
10. Literary/ dramatic/ musical/ artistic work/ any other aesthetic creation;
11. Mere scheme/ rule/ method of performing mental act/ method of playing game;
12. Presentation of information;
13. Topography of integrated circuits;
14. Inventions relating to traditional knowledge or an aggregation/ duplication of known properties of traditionally known component or components;
15. Inventions relating to atomic energy.

A patentability search is conducted to determine whether a specific invention is eligible for patent protection.
The search examines if the invention meets the criteria of novelty, inventive step and/or non-obviousness.
While the search is not mandatory, it is always recommended conducting this search to assess the patent and non-patent literature documents from around the world to make a sound decision regarding filing and prosecuting Patent Application.

Yes. Both a pre-grant and post-grant opposition can be filed. Pre-grant opposition: Any person may provide a representation, in writing, to oppose the grant of a Patent with regard to a Patent application at any time after the publication of the Patent application but before a Patent has been granted. Such a representation may be made along with a statement and evidence in support of the opposition. The opposition may be made on the grounds: for lack of novelty and/or inventive step/non-obviousness; for wrongfully obtaining a Patent; for being a non-patentable subject matter; for insufficient and unclear invention description in the specification; for failure to disclose and/or fraudulent disclosure with regard to information on corresponding foreign applications; for not meeting the timelines as prescribed by 'The Patents Act' of India; and for, wherever applicable, failure to disclose and/or fraudulent disclosure of source of biological material used for the invention.

Post-grant opposition: Any person interested may give notice of opposition to the Controller in a prescribed manner at any time after the grant of the Patent but before expiry of a period of 12 months from the date of publication of the grant of Patent. The notice of opposition should be filed along with a written statement, which should clearly mention the nature of an opponent's interest, the facts upon which the opponent has based his case, the relief which the opponent seeks, and the evidences. The opposition may be made on any one or more of the grounds listed above for pre- grant opposition.

Yes, an appeal for an application of Patent, which has been denied/ refused by a decision/ order/ direction of the Controller, may be made to the Appellate Board especially established for appeals to intellectual property matters. Further, the appeal should be made in the prescribed form along with the prescribed fee, and shall be accompanied by certified copy of the decision/ order/ direction of the Controller that is appealed against. Furthermore, the appeal should be made within three months from the date of the decision/ order/ direction, as the case may be, or within a further time period as the Appellate Board may, in accordance with the rules, allow.

Yes, an Applicant can file a convention application in accordance with Paris Convention in the signatory countries within one year from the date of filing the Application in India.

Alternatively, an Applicant may also file an Application under Patent Cooperation Treaty (PCT Application) within one year from the date of filing the Application in India.

Foreign filing permission under 'The Patents Act' of India: In this provision, any person resident in India (when the invention was conceived), shall apply for a permission for making a Patent application outside India for an invention. Such permission is required when a Patent application for the same invention has not been made in India. In case a Patent application is filed in India for the same invention, then the applicant has to wait for six weeks before a Patent application can be filed outside India. [Through-out we have used the term, 'Patent application'.]

For obtaining the permission, a description of the invention highlighting the inventive aspect is to be filed with the Patent Office.

The permission is ordinarily dispatched within 21 days of filing the permission request.

The Patents Act confers:

a. where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
b. where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:

A Patentee has to maintain the Patent by paying a renewal fee/maintenance fee every year from the grant of a Patent.

Additionally, the Patentee is required to submit a Statement of Working for granted the Patent in India for the financial year. The statement of working includes details if the Patentee has worked/utilized the Patent in that financial year or a reasoning in case such patent has not been worked.

A Patentee may inform, in writing, the infringer, i.e., by sending a notice of cease and desist (such as a notice to stop the infringers from performing the act of making, using, selling, offering for sale, importing product(s) covered under a Patent) to the infringer to settle the issue harmoniously. Alternatively, the Patentee may approach courts (such as a district court or high court) for instituting infringement law suits against the infringer in order to resolve infringement issues.

It is to be noted that although a Patentee is entitled to institute any proceeding for infringement after the grant of the Patent, the damages in infringement law suits may be calculated from the date of publication of the corresponding Patent application as the Patentee has the privileges and rights from the date of publication of the Patent application.