What is a patent? By definition, a Patent is a statutory right attached to an invention which has been given by the Government for a limited period of time to the patentee, in exchange for full disclosure of the invention. It is granted to exclude others from using, making, selling the patented product and/ or process without the consent of the patentee.
Does Indian Patent give protection worldwide? No, Patent protection is territorial right. It is thus effective only within the territory of India. However, the applicant can file another application for the same product, process or invention in the other convention countries. Such an application has to be made within or before the expiry of a period of twelve months from the date of filing in India. Hence, separate patents are required to be obtained in each country where the patentee desires protection for his invention.
Is it possible to file an international application under Patent Cooperation Treaty (PCT) in India? Yes, it is possible. An international application, more commonly known as PCT application can be filed in India in the Patent Offices located at Delhi, Mumbai, Kolkata, and Chennai, which act as Receiving Office (RO) for the international applications.
What can be patented? Any invention which relates to a process or product which is new, involves an inventive step, and is capable of industrial application is qualifies to be patented. However, before any application is made, one must ensure that it must not be the part of the categories of inventions that have been marked as non- patentable under section 3 and 4 of the Act. An application for a patent has to be made for one invention only or a group of such inventions which are linked to each other through one inventive concept.
Who can apply for a patent? Any patent application can be filed by
The true and first inventor or
His assignee.
The application may be filed either alone or jointly with any other person.
The law also provides that a legal representative of any deceased inventor or assignee is also allowed to present an application for patent registration.
For a foreign applicant, a resident agent has to be appointed and the application can be filed at the office in whose jurisdiction the address of service or the authorized attorney’s office is situated.
How to apply for a patent? A patent application has to be filed with the Indian Patent Office with either complete specification or with the provisional specification. This application shall be in the format provided on http://www.ipindia.nic.in/form-and-fees.htm and shall be accompanied by the fee as per schedule 1. If the application is filled with the provisional specification, then the complete specification must be filed within 12 months from the date of filing of the application, for which no extension shall be given.
What is the provision for filing an online patent application? The Indian Patent Office has an online filing system for patent application in place for a decade. The portal is detailed and is for the convenience of the applicants.
What are the criteria of patentability? For anyinvention to become patentable, the subject matter should necessarily meet the below-mentioned criteria:
It should be an inventive step and essentially be non-obvious
It must be novel.
It must have the scope of industrial application.
It must not fall within the categories mentioned as non-patentable as per the section 3 and 4 of the Patents Act 1970.
Should the application for patent be filed before or after, publication of the details of the invention? The patent application has to be filed before the publication or public disclosure of the invention since the disclosure before the filing of the patent application cause disadvantage to the novelty of the invention. However, a grace period of 12 months has been provided for filing the application even after the publication in the journal or public display in an exhibition, under certain conditions.
How is any Patent Specification to be prepared? The Patent Specification must be carefully prepared since it shall decide the fate of the application. It usually comprises of the following:
title of the invention mentioning its technical field;
Background of the invention including the current drawbacks present in the field;
Object of the invention;
Its usefulness;
Statement and scope of the invention;
A summary of the invention;
A detailed description of the invention with reference to drawing/examples;
Brief description of the accompanying drawings;
details of the best method for the working of the invention;
Claim(s); and
Abstract.
What is a provisional specification? The Indian Law of Patents follows the ‘first to file’ system. Thus, a provisional specification describing the nature of the invention and preliminary information is filed to establish the priority in the date of filing of the application and that a delay is expected in the submission of the complete and specific description of the inventive idea. A patent is never granted on basis of a provisional application. A provisional specification is be followed by a complete specification within 12 months after filing of the provisional application, to which no extension is allowed and the application is treated as deemed to have been abandoned if 12 months lapse. Provisional Specification is an independent and permanent scientific cum legal documents to which no modification is permitted to be made. It is a document of record.
Is it necessary to file a provisional application? No, it is not necessary to file the provisional application first. An application with complete specification can be filed in the first instance. The usefulness of the provisional application is to establish the priority date for the invention or inventive idea.
Does the Patent Office Keep information about the invention Secret and when can it be published? The patent applications and the specifications are all kept confidential for 18 months from the date of filing. Thereafter, are published in the Official Journal of the Patent Office and available on the IPO website. It is after this application that the general public has access to the information and can inspect the information and the documents. A copy may also be obtained upon payment of the prescribed fee. The applicant can also make a request for early publication as per Form 9 accompanied by the prescribed fee and the Patent Office then publishes the application within 1 month, provided the invention is in no way related to defence or atomic energy.
Is patent application once filed is examined automatically? It is only after the receipt of the request of examination either from the applicant or a third party, the patent application is examined. Such request for examination can be filed within 48 months from the date of priority or date of filing of the application. The applications are examined in the order in which requests for examination are filed and no requests for early examination are entertained. However, a provision is provided for an express request for examination to be filed before the expiry of 31 months for the applications filed under the Patent Cooperation Treaty. These applications are commonly now as National Phase applications and can be made with the prescribed fee.
What is the examination of the patent application?
The Patent office, upon the examination issues a First Examination Report (FER) to the applicant after which the applicant has to comply with the requirements within 12 months from the date of FER, the limit to which no extension is granted.
If the applicant does not meet the requirement as above within the stipulated time, the application is deemed to have been abandoned. In such cases, no opportunity to be heard is given to the applicant.
When the application is found to be in order and there is no pre-grant opposition pending, the patent is granted. A letter patent is issued to the applicant.
When any pre-grant opposition is pending, the further actions are delayed till the disposal of pre-grant oppositions.
Before refusing an application, the Controller is required to provide the applicant with an opportunity of being heard, if such a request for hearing has been made a minimum of 10 days in advance before the expiry of the statutory period.
What are the stages involved in the grant of the patent?
After the application for the grant of the patent, a request for examination shall be made, either by the applicant or any third party. The examination is then taken up by the Patent office
The First Examination Report is issued and the opportunity to correct the deficiencies is provided to the applicant and to meet the objections raised in FER.
After the requirements are met within the prescribed the time period, the patent is granted and notified in the Patent Office Journal.
Between the period of granting of the patent and the publication of the application, any person is allowed to make a representation for a pre-grant opposition.
Also, a pre-grant opposition by a third party must be filed within 6 months
Section 25(1) of the Patents Act 1970 provided the grounds on which the representation can be filed.
The pre-grant opposition can be filed before any request for examination has been made, however, shall be considered only upon the request for examination made.
There is no fee for filing the pre-grant opposition.
Within how much time limit can post-grant opposition be filed? The post-grant opposition can be filed within 12 months from the date of publication of the grant of the patent and can only be filed by an interested person. The grounds are mentioned in 25(2) of the Patents Act 1970. It can be submitted in the prescribed format with a fee of Rs.1500 for a natural person and Rs.6000 for others.
What are the contents of the Patent Office Journal? All the information of the patent application is published in the Patent Office Journal which is issued on every Friday and is available in on the website of the Patent Office. The Journal contains information relating to
Patent applications published under section 11A,
Post-grant publication,
Restoration of the patent,
Non-working patents,
Indexes,
Notifications,
Notices Issued by the Patent Office etc.
The Journal can be downloaded from the website, free of charge, a hard copy or CD be subscribed for by making payment of Rs 400/- in cash or by DD/cheque in favour of the Controller of Patents.
19. What is implied by the words "Patent Pending" or "Patent Applied For"? These words are generally used by the patent applicant with their products after filing the patent application to make the public aware that a patent application has been filed to the proper authority in respect of that invention. It is prohibited by law to use these words without an application pending in place. Use of such words does not prohibit any third party to plead as innocent unless the application has attained finality and the patent number is indicated. Hence the words have no legal significance and the infringement action can be initiated only after the patent is granted.
20. How to know which invention has already been patented? This can be easily done through a preliminary search on the Patent Office website examining the Indian patent database of granted patent and/ or the Patent Office Journal. the reference room in the Patent Office has the Indian patents arranged according to international patent classification system and is open to the general public. The search is free of charge The person concerned also has an option of making a request for such information under section 153 of the Act.
21. What is the term of a patent? In India, theterm of every patent is 20 years from the date of filing of the patent application. Every patentee has to maintain the patent by renewing the same upon payment of the renewal fee. In case the renewal fee is not paid the patent shall be ceased in which case, a request for restoration can be filed within 18 months from the date of cessation of patent along with the fee.
