Filing a Patent Application

Who can file a patent in India?

An application for a patent for an invention may be made by any person claiming to be the true and first inventor of the invention or by his/her assignee or by the legal representative of any deceased person who immediately before his death was entitled to make such an application. There are no age requirements and a minor is also entitled to apply for a patent. An application may be made solely or jointly with any other person. Foreigners and nationals not living in India need an address for service in India for filing an application in India. They may appoint a registered agent or representative whose address for service can be the address for service in India.

Naming of inventor(s)

The inventor is the person who thinks of the idea and not the person who executes the idea. It may be the case that the inventor is also the applicant but this is not always so. A corporate body cannot be named as an inventor. It is important to consider and distinguish between the name of the inventor and that of the applicant at the time of filing a patent application.

Place of filing

An application for a patent must be filed at the Patent Office branch within whose territorial jurisdiction the applicant resides or has his principal place of business or domicile. A foreign applicant must file at that Patent Office branch within whose jurisdiction his/her address for service is located.

Patent Specification

India allows the filing of both provisional and complete patent specifications. When the idea is at early developmental stage, a provisional specification (PS) can be filed, otherwise a complete specification (CS) may be filed directly. Where a PS is filed in the first instance, a complete specification (CS) must be filed within twelve months. Filing a PS gives the inventor time to further develop his/her ideas by carrying out further experiments or tests in order to provide a more detailed description of the invention in the CS at a later stage. Where two or more cognate provisional specifications have been filed, they may be combined and all their subject matter may be incorporated into a single CS to be filed within twelve months of the date of the earliest filed PS. Consideration may also be made for PCT filing and Convention filing at this time.

Priority Date

Priority date is the date on which the first application in respect of an invention has been filed.

Information of corresponding applications in other countries

It is mandatory at the time of filing a patent application in India, to inform the Controller of the details of all applications corresponding to the same invention in other countries and to undertake to keep the Controller so informed up to the grant of the Indian application. Failure to do so could result in the refusal of the application in case it is opposed or even revocation of a patent in proceedings before the High Court. For more information, please refer to our article on Section 8 requirements.

Patent Publication

Publication of an application takes place approximately 18 months from the date of the application in the Official Patent Office Journal, which is published every Friday and available online. Urgent publication is possible on request on payment of requisite fees. From the date of publication of the application for a patent and until the date of grant of the patent, the applicant will have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. However, the applicant is not entitled to institute any proceedings for infringement until the patent has been granted.

Patent Examination

Examination of application

The Indian Patent Office makes both formal and substantive examinations. A Request for Examination has to be made within 48 months of the priority date by paying the requisite fees. If no request is made within the stipulated time period, the application will not be examined and the application will be considered as withdrawn by the applicant. In India, it is not possible to file a request for examination after the deadline by paying a penalty or surcharge.

Procedure

An applicant is required to meet all the objections and requirements of the Patent Office within a period of six months from the date of the first examination report (FER) issued by the Controller.This time period may be further extended for a period of three months. If a patent application is not put in order of grant within this period, it lapses.

Amendment Provisions

Amendment of Application

An applicant may, of his own accord, apply to the Controller for amendment of his application or any document filed in respect thereof but such amendments may be filed only by way of correction, explanation, or disclaimer. Amendments may be filed before or after grant of the patent.

Special Applications

Divisional Application

Furthermore, a divisional application can be filed u/s 16 at any time before the grant of a patent in respect of an invention disclosed in a PS or CS already filed. It is usually filed when the claims of a CS relate to more than one invention but the subject matter of the divisional application cannot be beyond the matter disclosed in the parent application. The applicant may file a divisional application voluntarily and the advantage of this is that the priority date of the divisional application starts from the date of the parent application. Otherwise, the Examiner may also require filing a divisional application if there is no unity of invention i.e., the invention described actually relates to more than one inventive concepts.

Patent of Addition

Where an application is made for a patent in respect of any improvement in or modification of an invention already described or disclosed in a filed CS (i.e. the “main invention”), the Controller may at the request of the applicant, grant the patent for the improvement/modification u/s 54 as a patent of addition.

Grant Of A Patent

The grant of an application is published in the Official Journal and is notified therein for post-Grant opposition. A patent can be revoked by filing a post-grant opposition within one year from the date of publication of the grant of patent.

Post - Grant Procedures

Revocation of a patent

It is possible for a patent to be revoked on the grounds of: prior publication anywhere in the world, public use or knowledge in India, lack of novelty with regard to the subject matter, obviousness, lack of inventiveness, ambiguity, insufficiency of description of the invention, fraud, false suggestion or representation that the person named as the inventor is not the true inventor, lack of utility, non-patentability of subject matter (E.g. computer programme per se, atomic energy, mere admixture, mere arrangement of known devices, process of testing, method of agriculture or horticulture, process of medicinal treatment), failure to furnish or falsity in information regarding corresponding applications in other countries supplied to the Controller or that the invention is contrary to law or morality.

Annuities

Except in the case of a patent of addition, for which no annuities are payable, annual renewal fees must be paid during the life of an Indian patent, the first of such fees falling due at the end of the second year of the life of a patent granted. Renewal fees due during the pendency of the application are payable within a period of three months from the date the patent is taken on record in the Register of Patents. Renewal fees for two or more years may be paid in advance if the patentee so desires. A maximum extension of six months may be obtained on payment of the prescribed penalty fees. If the renewal fee in question is not paid within the extended period available, the patent will lapse.

Restoration

A lapsed patent may be restored if an application for restoration is made within 18 months of the date of lapsing of the patent, provided it can be shown that the lapsing of the patent was unintentional and that there was no undue delay in making the application for restoration.

Working of patents

Every patentee and every licensee is required to furnish within three months from the end of every calendar year, a statement as to the extent to which the invention has been worked in India on a commercial scale in the preceding year. Non-filing of this statement is a criminal offence.

Compulsory licenses

After three years from the date of grant of a patent, an interested party may apply to the Controller for the grant of a compulsory license alleging that the reasonable requirements of the public with respect to the invention have not been satisfied or that the invention is not available at a reasonable price. If the Controller is satisfied that a prima facie case for an applicant for compulsory license has been made, he shall serve a notice on the patentees who, if they so desire, may oppose the application for compulsory license.

Marking

Marking is not compulsory but advisable as otherwise damages may be difficult to recover in cases of infringement. The invention may be marked with the word “Patented” or “Patent” accompanied by the number and year of the patent.

Infringement

An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground for revocation is available as a defense and revocation can be counter claimed in infringement proceedings. The Court may grant relief in respect of a valid claim or claims even though one or more other claims in the suit may be held to be invalid. Relief may include damages and costs as awarded by the court. A suit for injunction may be instituted and damages recovered in cases where there have been groundless threats. Any person may institute a suit for declaration as to non-infringement of a patent. The onus of proof of non-infringement lies with the defendant.

Opposition & Revocation

Pre-Grant opposition of patent application

Anyone can file an opposition by way of representation at anytime after the publication of a patent application but before the grant of the patent on the grounds available u/s 25(1).

Post-grant opposition of patent

Only a person interested can file a notice of opposition before the Controller of Patents at any time after the grant of patent but before the expiry of one year from the date of publication of grant of a patent on the grounds available u/s 25(2).

Revocation

A patent can be cancelled during its lifetime on any of the grounds contained in section 64(1):

• By filing a revocation petition by any person interested or by the Central Government at the Intellectual Property Appellate Board or
• On a counter-claim in a suit for infringement of the patent at the High Court.

Information For Foreign Applicants

Convention application: Priority can be claimed in India from the earliest corresponding application in a Convention country, provided that the Indian application is filed within twelve months of the priority date. Multiple and partial priorities are allowed.

PCT application

The national phase application in India has to be filed within 31 months of the priority date of a PCT application.

Power of attorney

Independent POA, in Form 26, must be submitted with Form 1

Statement and Undertaking

Applicants are required to submit in Form 3, at the time of filing an Indian application or within six months from the date of filing, a statement disclosing all other applications existing at the time of filing the Indian application that correspond to the same or substantially the same invention disclosed in the Indian application and also an undertaking to keep the Controller informed of any changes until the grant of the Indian Patent. According to Section 8(2), at any time after filing the application in India and up to the date of grant/refusal of the patent, the applicant is also required to furnish prosecution details of the same or substantially the same applications filed outside India when a request to that effect is made by the Controller. For more information, please refer to our article on Section 8 requirements

Declaration of inventorship

Applicants must file along with their application, a declaration of inventorship in Form 5. The controller may, on a request made in Form 4, extend the period of filing this declaration by one month.

Working of a patent

It is mandatory to submit Form 27 every year for both Indian and foreign applicants providing information about the commercial working of the patent in India. Refusal or failure to supply such information is punishable with a fine. Also, if an applicant knowingly furnishes false information, he/she would be liable for imprisonment and/or fine.

Important Features Of Indian Patents

Section 3(d)

This section has been the bone of contention for the pharmaceutical sector as it prevents “evergreening” of drug patents. Under this section, the following inventions are not patentable:

• a mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance;
• the mere discovery of any new property of a known substance;
• the mere discovery of a new use for a known substance;
• the mere use of a known process unless such known process results in a new product or employs at least one new reactant;
• the mere use of a known machine or apparatus.

The explanation to section 3(d) further clarifies that the salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance may be considered to be the same substance. It however states that such salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of such known substance may be considered as patentable only if they differ significantly in properties with regard to efficacy.

In a recent case, in relation to a pharmaceutical substance, the courts held that efficacy means ‘therapeutic efficacy’. For proving increased therapeutic efficacy, strict standard of proof is required. In other words, in order to overcome the hurdle posed by Section 3(d), data based on research and experimental data showing enhanced therapeutic efficacy must be submitted.

Compulsory licenses

This provision strikes a balance between public interest (access to existing drugs at reasonable prices) and private interest (monopoly rights under patents). A compulsory license merely serves to limit the exclusive monopoly rights of a patent holder. In order to prevent abuse of patent rights, the government may authorize the grant of a compulsory license without the permission of the patent holder.

After three years from the date of grant of a patent, an interested party may apply to the Controller for the grant of a compulsory license alleging that:

• the reasonable requirements of the public with respect to the invention have not been satisfied or
• that the invention is not available at a reasonable price or
• that the patented invention has not been worked in the territory of India.

If the Controller is satisfied that a prima facie case for an applicant for compulsory license has been made, he shall serve a notice on the patentees who, if they so desire, may oppose the application for compulsory license.

Patents and Computer Software

It is possible to patent programs for computers which when run on a computer produce a "technical effect or includes hardware". However, if a program does not produce a technical effect when run on a computer, it is unlikely to be patentable. A technical effect is generally an improvement in technology and needs to be in an area of technology that is patentable. For instance, an improved program for translating between Japanese and English is not patentable because linguistics is a mental process, not a technical field. On the other hand, a program which speeds up image enhancement may be patentable because it produces a technical improvement in a technical area.

Some countries, such as the USA, with a large potential market for your software, have a more liberal approach to software patenting and often grant patents for software, which would be excluded in India and other countries. Deciding whether or not a particular computer program is patentable is a complex issue and advice from a Patent Attorney/Agent may help to determine the most effective form of protection available.