INTRODUCTION TO REGISTRATION OF PATENTS IN INDIA: PARTS OF SPECIFICATION AND STAGES
This article was written by Harshita Punjabi, a student of Rajiv Gandhi National University of Law.
Patent is a grant of monopoly, privilege or authority to the inventor by the Government to control the output and within the limits set by demand, the price of the patented products to exclude others from making, using, offering to sell, selling or importing an invention.In case of Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries[1], the Supreme Court observed that “the object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or product patented for a limited period, stimulates new inventions of commercial utility. The price of grant of monopoly is the disclosure of the invention in the Patent Office, which after the expiry of the fixed period of monopoly, passes into public domain.”
In India, law relating to patents contained in the Patents Act, 1970 and has been amended in 1995, 1999, 2002 and 2005 keeping in view the development of technological capability in India. The act was enacted by Government of India in pursuance of its powers under Entry 49 of List I of Schedule VII of Constitution of India.
STEP 1: Writing down the idea or concept with as much details as possible along with drawings, diagrams or sketches explaining work of invention
STEP 2: Patentability search- check whether invention meets criteria of novelty, non-obviousness, industrial application, enabling.
STEP 3: Drafting and filing of patent application – Provisional & Complete specification.
STEP 4: Publication of application- Ordinarily published after 18 months from filing or priority date.
STEP 5: Request for examination- examined by examiners of patents to see whether it complies with requirements of the Act and Rules.
STEP 6: Respond to objections- On the basis of report of examiner, application will receive objections
STEP 7: Clearing all objections- the objections raised in the patent are resolved.
STEP 8: Grant of Patent- The application would be placed in order for grant once it is found to be meeting all patentability requirements
APPLICATION OF PATENTS
Section 3 of the act lists the inventions not patentable-
An invention which is frivolous or which claims anything obviously contrary to well established natural laws;
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 environment.
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature.
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 mere discovery of new property or new use for a known substance or mere use of known process, machine or apparatus unless such process result in a new product.
A substance obtained by mere admixture resulting only in aggregation of properties of the components thereof or a process for producing such substance.
The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
A method of agriculture or horticulture.
Any process for the 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.
Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological process for production or propagation of plants and animals.
A mathematical or business method or a computer programme per se or algorithms.
Literacy, dramatic, musical or artistic work or any other aesthetic creation including cinematographic works and television productions.
A mere scheme or rule or method of performing mental act or method of playing game.
A presentation of information.
Topography of integrated circuits.
An invention which, in effect, is a traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components.
PROCEDURE FOR OBTAINING PATENT
Persons entitled to apply for patents-
Section 6 provides that a patent application can be made-
By any person claiming to be the true and first inventor of application,
By any person being the assignee of the person claiming to be true and first inventor in respect of the right to make such an application,
By the legal representative of any deceased person, who immediately before his death was entitled to make such an application.
Where an employee makes an invention during the course of employment, he would be entitled to apply for a patent. It is not so in the case of inventions made by employees specifically employed for research and development. In such cases the inventions belong to the employer and he is entitled to apply for the patent.
WRITING DOWN IDEA OR CONCEPT- Collect all the information about your invention such as:
- Area of invention
- Description of the invention what it does
- How does it work
- Advantages of the invention
Ideally, if you have worked on the invention during research and development phase you should have something call lab record duly signed with date by you and respective authority. The drawings and diagrams should be designed so as to explain the working of the invention in better way with visual illustrations. They play an important role in patent application.
PATENT SEARCH- before filing a patent application, the preliminary search should be conducted by the applicant so as to confirm whether the application for same invention was previously made. This helps in saving time and provides the applicant pointers for drafting his own application- the applicant may have to draft his application in different way and highlight unique aspects of his application. The research can be conducted at the Patent Office or online on the portal http://ipindiaservices.gov.in under the Published Applications.
Patent search can also be done on international databases to see if similar invention is already patented elsewhere. An international patent search can be conducted on following databases-
WIPO (For applications filed under Patent Co-operation Treaty)
Google Patents (For US Patents)
PATENTIBILITY SEARCH- There are requirements for invention to be patentable-
Novelty: The invention has to be new and cannot be part of the “prior state of art”. This prior art refers to everything that has been published, presented or disclosed to the public (example on a website, newspaper or in any research article), as on the date of filing for the patent.In Garware Wall Ropes Ltd. v. A.I Chopra, Engineers & Contractors[2], it was held that involvement of technical advance as compared to the existing knowledge or having economic significance is an inventive step and consequently, even assuming that new and useful improvement was made in the systems the same would be invention.
Inventive Step:The invention must be non-obvious or involve an inventive step that means it should not be obvious to the person skilled in the art. It could not be deduced by a skilled person with good knowledge in the technical field of the invention. This person with average knowledge in the technical field is commonly called as Person Ordinarily Skilled in the Art. In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries[3], the Court observed that the inventive step should be more than a mere workshop improvement. It has to be new and useful.
Industrial Application: The invention besides being new and non-obvious must be useful or capable of industrial application. It must be capable of being made or used in the industry. The expression ‘capable of industrial application’ is defined under section 2(1)(ac). It means in relation to an invention means invention is capable of being made or used in industry.
Patentable matter: Finally, the invention must be part of the “patentable subject matter” under the applicable law. It must not fall within any of categories of subject-matter specifically excluded or made subject to exception.
Some inventions are non-patentable under the Act despite of being new, non-obvious and useful-
- Those inventions which are injurious to public health or violate public morality or public interest or causes serious prejudice to human, animal or plant life.
- New method of agriculture or horticulture is non-patentable invention.
- A process of treatment of human beings, plants and animals.
- The mere discovery of new form of known substance which does not result in efficacy of the known substance.
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or animals.
- Any invention which in fact is traditional knowledge
- Inventions relating to atomic energy.
DRAFTING APPLICATION- A patent specification can be prepared by inventor or assignee himself or through registered patent agent. Specialized skills and experience is required to draft a patent application.
Section 7(1) provides that only one application can be made for one invention and it has to be made in the prescribed form and filed in Patent Office.Every specification, whether provisional or complete, shall be made in Form 2 prescribed under Patent Rules, 2003. Section 7(1A) provides for application for international patent under Patent Cooperation Treaty. Section 7(1B) provides that filing date for application referred in (1A) and its complete specification shall be international filing date. Section 7(3) lays down that every application shall state that the applicant is in possession of the invention and shall name the person claiming to be true and first inventor and where the person so claiming to be true inventor is not the applicant, the application shall contain declaration that applicant believes the person so named to be true inventor.
PROVISIONAL AND COMPLETE SPECIFICATION
A patent specification is a technical document describing the invention.Depending upon sufficiency of description, a specification may be either
Provisional specification;
Complete specification
Provisional Specification – When an inventor is in the process of finalising his invention, he may file a specification which is abridged form of complete application and does not contain full and specific description. It contains only general description of the invention, its field of application and anticipated results. In case the application is filed with provisional specification, then the applicant must file a complete specification within 12 months from the date of filing an application. Subsequent applications filed over this 12 month period will be narrower in scope as Indian patent law works on ‘First-to-apply’ principle. The priority date will remain the date of filing of first provisional application.
Advantages of filing a provisional application-
A provisional application helps in establishing an earlier priority date in respect of invention- Drafting the complete application is time consuming process and therefore in many countries 1 year period is given to file complete specification after submission of provisional application. It freezes the priority date and subsequent applications in the field will not be considered.
Funding from investors- Another advantage is that the inventors are able to obtain funding from potential investors on the basis of provisional specification.
Saving time and costs- Extended period of 12 month is given to the inventor for evaluating the commercial viability of the invention and decide to make better commercial use of it, before filing a complete specification. Claims are not required to be mentioned about the invention at the provisional stage.
Confidentiality of invention- During the extended period of 12 months, an inventor can continue to improvise or implement the application without the fear of competitor as no one will be able to use inventor’s research during the period of provisional application.
As per the provisions of Section 9 of the Act, where an application for patent, not being a convention application or application filed under Patent Co-operation Treaty designating India, accompanied by provisional application, complete specification shall be filed within 12 months from date of application and if the complete specification is not filed, application shall be deemed to be abandoned.
Complete Specification– The complete specification is the full description of the invention containing all the claims over which the applicant seeks monopoly right. A complete specification gives sufficient details of an invention in a such a manner that the person skilled in the art can use the invention when he reads such description.The object of complete specification is to define clearly and with precision the monopoly claimed and to make available the invention to the public on the expiry of the term of the patent.
Section 10 of the Act lists the contents of the complete specification as follows-
Title of the invention- The invention shall be titled sufficiently indicating the subject-matter to which the invention relates.
Description- The full and particular description of the invention and its operation or use and the method by which it is to be performed.
Best Method- The disclosure of best method of performing the invention which is known to the applicant and for which he is entitled to claim the protection.
Prior art and summary of invention-The title is followed by the background,which explains the prior art, containing the following details-
The description of prior art,
The deficiency or gap in the prior art,
The solution provided by the inventor to obviate the drawbacks of prior art,
A brief description of invention, its usefulness, drawings and details of method of implementation
Summary-The background is usually followed by a summary of the invention which explain how the invention works, its features and how it addresses the drawbacks in the prior art.
Abstract- The abstract should be within 150 words and provide a summary of the specification. It should commence with the title disclosing specific features of the invention. It should state the technical field to which invention belongs, the problem to which it relates, the solution provided by the invention to the problem and uses of invention.
Claims- The complete specification filed after a provisional specification include claims in respect of development or addition to the invention. The claim or claims should define the scope of the invention for which the protection is claimed. The claim should cover only one single invention or to group of inventions linked so as to form single inventive concept which shall be clear and shall be fairly based on matter disclosed in specification. The claims should be drafted neither in a broad way nor in a narrow way.
Drawings and Models- The applicant can submit drawings for inventions which have an apparatus or a machine. The formula should be mentioned in case of chemical compounds. On the request of the controller, the models or samples have to be submitted.
Declaration- the declaration as to inventorship of the invention, shall be furnished within the period prescribed after filing of the specification.
FILING OF PATENT APPLICATION
A patent application shall be filed on Form-1 along with Provisional/ Complete Specification, with the prescribed fee as given in First Schedule at an appropriate Patent office in India which are located in Chennai, New Delhi, Mumbai, Kolkata in accordance with the jurisdiction. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority by the applicant. The provisional application must be followed by a complete application within 12 months otherwise the application gets abandoned. Patent (Amendment) Rules 2014 has introduced a new category of applicant as “small entity”. Small entity, for Indian applicant, is defined as an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under Micro, Small and Medium Enterprise Development Act, 2006. A new Form 28 has been introduced which needs to be filed by a small entity applicant and must be accompanied by proof of registration under The Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006). The prescribed fees under different heads are given below:
(a) E-filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| For Filing Patent Application | 1600 | 4000 | 8000 |
| For each sheet of Specification in addition to 30 pages | 160 | 400 | 800 |
| For each claim in addition to 10 claim. | 320 | 800 | 1600 |
(b) Physical Filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| For Filing Patent Application | 1760 | 4400 | 8800 |
| For each sheet of Specification in addition to 30 pages | 176 | 440 | 880 |
| For each claim in addition to 10 claim | 352 | 880 | 1760 |
More information related to online filing of application are available on website of Patent Office www.ipindia.nic.in
PUBLICATION-Chapter IV of the Patent Act, 1970 as amended by Patents (Amendment)Act, 2005 talks about publication and examination of applications. The application is ordinarily published in Patent Office Journal after 18 months from its filing or priority date, whichever is earlier. The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract. The applications for patent are not open for public inspection before publication. An applicant can make request to the Controller for early publication in Form-9 after which the application will be published within 1 month from date of request.The prescribed fees for early publication are as follows:
(a) E-filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Application for request for Publication | 2500 | 6250 | 12500 |
(b) Physical Filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Application for request for Publication | 2750 | 6875 | 13750 |
The application for patent can be withdrawn atleast 3 months before the first publication. The application can also be withdrawn at any time before the grant of patent. The application withdrawn before the publication can be refiled provided it is not open to public otherwise.
PRE-GRANT OPPOSITION- Any person contesting the matter disclosed in the application for patent can file pre-grant opposition.Filing a pre- grant application within 6 months from date of publication ensures that opposition will be considered.The applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted. The grounds for pre-grant opposition are listed under Section 25(1) which includes-
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in India on or after the1st day of January, 1912; or (ii) in India or elsewhere, in any other document: Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
(d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step;
(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(h) in case of foreign application , the failure to disclose information relating to such application filed in a foreign country;
(i) that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground.
REQUEST FOR EXAMINATION- After the publication of application, the applicant must make the request for examination according to Section 11B. The request must be made within 48 months from the date of priority of the application or from the date of filing of the application,whichever is earlier. Where no request for examination of the application for patent has been filed within the prescribed period, the aforesaid application will be treated as withdrawn.The prescribed fees under different heads are given below:
(a) E-filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Express request of examination of application for patent | 4000 | 10000 | 20000 |
| Particulars | Individual | Small Entity | Other than Small Entity |
| Request of examination of International Application for patent | 5600 | 14000 | 28000 |
(b) Physical Filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Request of examination of application for patent | 4400 | 11000 | 22000 |
| Particulars | Individual | Small Entity | Other than Small Entity |
| Request of examination of International Application for patent | 6160 | 15400 | 30800 |
EXAMINATION-At the examination stage, the application for patent is examined by examiners of patents to see whether it complies with the requirements of the Act and the Rules, whether there is any lawful ground of objection for the grant of patent, and whether the invention has already been published or claimed by any other person. It will be taken up for examination, according to the serial number of the requests received on Form 18. A First Examination Report (FER) is prepared by the Examiner stating the observations on the issues, including deficiencies in the application within 6 months from the date of request for examination or date of publication, whichever is later.The examiner makes a search in publications available in the Patent Office and specification of prior applications to check whether the same invention has already been published or claimed or is the subject matter of existing or expired patents.
The examiners to whom such application and specification are referred shall ordinarily make the report to the Controller within 1 month. However, this period shall not exceed 3 months from date of reference of application.
COMMUNICATION TO APPLICANT- On examination, if any examinations are raised by the Patent Examiner concerned, the Patent Office will communicate to the applicant the objections so raised. The objections generally relate to the drafting of the specification and claims, anticipation of any of the claims in any prior publication of any specification or claim or documents, or prior publication of invention in some book. The applicant has opportunity to correct any deficiencies within 12 months. If the deficiencies are not satisfactorily rectified, the Controller, after giving an opportunity of hearing to the applicant, may refuse the acceptance of the application.
In case of overcoming the all objections raised by learned Examiner of Indian Patent Office, the Controller of the Indian Patent Office will accept the complete specification and advertise it in the Official Gazette published by the Indian Patent Office. From the date of acceptance of the Indian Patent Application till the date of sealing of the Indian Patent , the applicant will have the benefits of the protection of Patent but applicant will not have any right to initiate any proceeding against infringement until the patents is sealed.
POST GRANT OPPOSITION- By Patents (Amendment) Act, 2005, dichotomy was inserted by providing for opposition to pre-grant by Section 25(1) and for opposition to post-grant vide Section 25(2). Under post-grant opposition, an application may be filed at any time after the grant of patent within one year from the date of publication of the patent. The grounds of opposition are same as that of pre-grant opposition. The above notice under Section 25(2) shall be filed on Form-7 and sent to the Controller in duplicate along with prescribed fee as follows-
(a) E-filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Notice of Opposition (Post-grant opposition) | 2400 | 6000 | 12000 |
(b) Physical Filing
| Particulars | Individual | Small Entity | Other than Small Entity |
| Notice of Opposition (Post-grant opposition) | 2640 | 6600 | 13200 |
The Controller will forward a copy of the notice of opposition to the applicant who may subsequently file the relevant evidence in support of the Patent Application. Finally, the opposition proceedings of the application for Patent registration shall conclude through hearing and would be decided in favour of Applicant or the Opponent and the Application for patent registration will be rejected or accepted by the Learned Controller of Indian Patent Office.
GRANT- The order of grant is given if all the requirements of the Patent Act are complied. The grant of patent is notified in the patent journal which is published time to time. Section 53 of the Act lays down the term of patent after the commencement of the Patents(Amendment) Act, 2002 or the term of every patent which has not expired and has not ceased to have effect, on the date of commencement od said act shall be20 years from the date of first filing of patent application (it can be either from date of filling or priority date, whichever is earlier). However, in case of PCT National phase applications, the term of 20 years begins from International filing date.The granted patent remains active in the register maintained by the Indian Patent Office only by paying the renewal fees from time to time.
SEEKING PROTECTION OF PATENT IN MULTIPLE COUNTRIES
The filing process of the patent is quite expensive and the businesses file patent applications only in countries where they have commercial interest and where the use of invention would be economically viable. The country usually apply for patents where they have to sell their products due to involvement of additional costs.
There are two routes under the international conventions through which applicant can claim protection of patents in multiple countries depending on the cost they wish to incur and the number of countries they wish to apply.
- Patent Co-operation Treaty
- Paris Convention
Before filing an application with a foreign authority, an applicant is required to seek permission of the Controller under Section 39 of the Patents Act. As per Patent Rules, such permission is given within 21 days. The refusal can be made where the subject matter of the application of patent relates to atomic energy or security of India.
Filing application under Patent Cooperation Treaty
If patent protection is sought in more than three countries, then this route is viable for the applicants. The PCT has 146 members. In the PCT filing, within 12 months from the filing of an Indian Application, an ‘international application’ is required to be prepared and filed at International Bureau of World Intellectual Property Rights
An international application is processed in 2 phases in WIPO-
International Phase- This includes a search process by an international search authority which in turn helps in setting at uniform standard for determination of prior art. National authorities could also undertake independent prior art search.
National Phase- An international application is forwarded to national level patent authorities. It can ordinarily take about 30 months for an application to reach national authorities.
Filing application under Paris Convention
The Paris Convention has 174 member states. If patent protection is sought in up to 3 countries, applications are filed under Paris Convention as it is comparatively less expensive. It is also known as ‘direct filing’ because under this mode applications are directly filed with Patent Authorities of relevant countries unlike the PCT application, where there is common international application. Filing under Paris Convention is less time consuming.
CONCLUSION
The patent law recognises the exclusive right of a patentee to gain commercial advantage out of his invention. This is to encourage the inventors to invest their creative faculties, knowing that their inventions would be protected by law and no one else would be able to copy their inventions for a certain period during which the respective inventor has exclusive rights. The patent becomes effective from the date of filing of complete specification. An invention after publication becomes the patentee’s sole property for 20 years, so that patentee’s immediate interests are in opposition to those of the rest of the world. The date of every patent shall be entered in the register. The term of patent which is usually of 20 years can be cut short by grant of compulsory license.
In case of Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries[4], Supreme Court observed that the purpose of the invention is to protect and encourage fair competition in the field of technology so as to transform inventions or creations into real productive forces as quickly as possible. A country’s market economy is dependent on successful working of its patent system.
In case of patent of any machine, apparatus or other article, may be made or used and any process in respect of which patent is granted may be used by any person, for the purpose of experiment or research including imparting of instructions to others. In case of patent in respect of any drug or medicine, the medicine or drug may be imported by the Government for the purpose of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to public service may specify in that behalf by notification in the Official Gazette.
REFERENCES
Books-
Indian Patents Act, 1970
V.K Ahuja, Law Related to Intellectual Property rights, Lexis Nexis, Noida 2013, 2ndEdition
B.L Wadehra, Law Relating to Intellectual Property, Lexis Nexis, Fifth Edition, Reprint 2016
Other Sources-
http://patentinindia.com/procedure-patent-registration-india/
http://www.iiprd.com/patent-registration-process-in-india/
http://www.sethassociates.com/procedure-for-grant-of-patent-in-india.html
[1] (1979) 2 SCC 511:AIR 1982 SC 1444: 1979 All LJ 290:(1979) 1 SCWR 337: (1979) 2 SCR 757
[2] (2009) AIHC 3230
[3] (1979) 2SCC 511:AIR 1982 SC 1444: 1979 All LJ 290:(1979) 1 SCWR 337: (1979) 2 SCR 757
[4] (1979) 2 SCC 511:AIR 1982 SC 1444: 1979 All LJ 290:(1979) 1 SCWR 337: (1979) 2 SCR 757
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