Anuhuj Dhingra Law Office

  FAQ



PATENT FAQ's

  1. What is the definition of a patentable invention under the Indian Patent Law?
  2. What are the unpatentable inventions under the Indian Patent Law?
  3. What are the requirements for patentability of an invention?
  4. Is there a possibility for patent registration when the technology sought to be covered by the Patent has been publicly known or described in a publication before an application is filed?
  5. Can an applicant file an application in foreign language in India?
  6. Is it possible to have global or world Patent?
  7. Is India a signatory to the Paris Convention and the Patent Cooperation Treaty?
  8. APPLICATION PROCEDURE
    1. What is the application procedure?
    2. What is Form 1? Should this Form necessarily contain the signatures of the Inventors and the Applicant? If an employee invents a new technology who should be the Applicant for Patent?
    3. What is Form 2 or Specification? What is the difference between Complete and Provisional Specification?
    4. Who will read my Patent Specification?
    5. What should be the contents of the Specification?
    6. Is there any limit on number of pages or claims in the Specification?
  9. EXAMINATION PROCEDURE
    1. Is there an automatic right to Publication and Examination once a Complete Specification is Lodged?
    2. Can this examination be expedited? When does the publication take place?
    3. What should we do after the issuance of First Examination Report?
    4. Is it possible to amend the Patent Specification once filed?
    5. What happens if the requirements of the First Examination Report (FER) is not What happens if the requirements of the First Examination Report (FER) is not complied within the stipulated time? Will the applicant have a right of hearing and appeal?
  10. MISCELLANEOUS
    1. What is the term of patent in India and when does the renewal fee become payable?
    2. If two or more persons work together to make an invention, to whom will the patent be granted?
  11. Does the Indian Law provide for Compulsory Licensing?

1. What is the definition of a patentable invention under the Indian Patent Law?

All inventions that have commercial application can be covered by Patent - “invention means a new product or process involving an inventive step and capable of industrial application” (Section 2(1) (j).

2. What are the unpatentable inventions under the Indian Patent Law?

Sections 3 & 4 of the Patents Act, 1970 enlist the non-patentable inventions.
Section 3 reads as follows:
The following are not inventions within the meaning of this Act,

(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) 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] (But the dividing line between invention and discovery is very thin a lot of it will depend on the projection of the invention);
(d) 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 Derivatives of a same substance such as salts, esters, ethers, polymorphs, metabolites, new form particle size and other derivatives of a known substance will be considered as the same substance unless they defer significantly in properties with regards to efficacy)
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; (A synergistic admixture is patentable. If the admixture discloses a beneficial new properties not disclosed by the individual ingredients, the same is patentable)
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) a method of agriculture or horticulture;(Crop protection chemical and new devices used in agricultural of horticultural operations are patentable)
(h) 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 or that of their products;
(i) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;(New plant varieties can be protected under a different law)
(j) a mathematical or business method or a computer program per se or algorithms;(But if the software is responsible for causing an improved technical effect or improves the efficacy of the existing device, then the technical or the improved device can be patented)
(k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;(The same can be protected under the Laws of Copyright)
(l) a mere scheme or rule or method of performing mental act or method of playing game;
(m) a presentation of information;
(n) topography of integrated circuits; (This can be protected under a different law)
(o) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.](But an improvement to the traditional knowledge complying with the requirement of novelty, utility and non-obviousness can be a subject matter of Patent)

And Section 4.:
No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 (33 of 1962)

3. What are the requirements for patentability of an invention?

  1. Novelty
  2. Inventive Step
  3. Further, “Inventive step means a feature that makes the invention not obvious to a person skilled in the art”. (Section 2 (1) (j)) is to be replaced by “Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.” (Section 2 (1) (ja))
  4. Industrial Applicability

4. Is there a possibility for patent registration when the technology sought to be covered by the Patent has been publicly known or described in a publication before an application is filed?

Novelty is crucial for Patent protection. Usually, the novelty is lost by:
(a) prior publication;
(b) prior public use;
(c) prior claiming (if it has been claimed in an earlier specification.)

However Section 31 and 32 provide that if the disclosure is before a scientific body or an exhibition notified by the Union Government, then, within twelve months from such publication or display, a patent application can be made.

A non-commercial experimental use does not defeat novelty. But, it is always better to apply for a patent first and publish or exhibit the product after patent application. If such publication or display had occurred prior to the application, contact a patent attorney immediately to know whether an application can be made notwithstanding the disclosure.

5. Can an applicant file an application in foreign language?

An application can be filed in India either in English or Hindi.

6. Is it possible to have global or world Patent?

No, patenting is a matter that falls within the domestic jurisdiction of a State. However, Article 27 of the WTO TRIPS agreement establishes ‘international minimum standard in patent protection.’ Paris Convention on protection of Industrial Property, 1883 confers on all the Applicants irrespective of Nationality, among other things (a) a right to national treatment; (b) right of priority.

Patent Co-operation Treaty (PCT) facilitates filing of a single application that can be deemed as an application for all member states of PCT. National application in India has to be filed within 31 months of PCT Application. Grant of Patent in pursuant of the PCT National Phase Application is still left to the discretion of Local Patent Office.

International filings have to be made within 12 months of the filing of the Domestic Application.

7. Is India a signatory to the Paris Convention and the Patent Corporation Treaty?

Yes.

8.1 What is the application procedure?

An application for patent has to be made in Form 1 (duplicate) and shall be accompanied by prescribed fee (Rs. 1000/- for individual and Rs. 4000/- for artificial legal entities), Form 2 (provisional or complete specification) and Form 3 (a declaration and undertaking regarding the foreign patent filings of the same invention).

8.2 What is Form 1? Should this Form necessarily contain the signatures of the Inventors and the Applicant? If an employee invents a new technology who should be the Applicant for Patent?

If an invention originates in the course of Contract of Employment (in the absence of a contract to the contrary) the technology vests with the employer and he should be shown to be Applicant for Patent.

Form 1 need not have the signature of Inventors for the initial filing. If the initial filing is made without the signature of the inventors, subsequently, From 1 duly signed by the inventor must be logged with the Patent Office within six months of the Application.

If the Applicant is a Company, Form 1 must be signed by the Company Secretary or a Director or any Authorized Signatory who has been specifically authorized to represent the Company by means of a Resolution passed by the Board of Directors of the Company.

8.3 What is Form 2 or Specification? What is the difference between Complete and Provisional Specification?

Specification is the most important document in the entire Patenting procedure. We strongly recommend that you consult an Attorney before finalizing the specification. There are two types of specification provisional and complete.

Provisional Specification is logged to achieve earliest priority date. When the inventive concept is in its formative stages, and a lot of final details of the invention have to be worked out in future, it is better to log a provisional specification. On the other hand, if every thing about the invention is known and the invention can be commercialized or marketed the next day, it is better to log the complete specification straight away.

If a provisional specification is followed by a Complete Specification, the Applicant will also have to log the declaration of inventorship as in Form 5.

If a Complete Specification is not logged within 12 months of logging the Provisional Specification, the Patent Application will be deemed to have been abandoned.

8.4 Who will read my Patent Specification?

A good specification is Legal, Technical and Commercial Document. To begin with, the Specification would be read by the "Examiner" in Patent Office who would normally be a person skilled in the art or the field of the invention. However, during the later stages the Specification would be read by
(a) the Controller of Patents
(b) Investment Banker
(c) Lending Banker
(d) A Judge
Hence, it must be comprehensible even for those who are not so skilled in the area of invention.

8.5 What should be the contents of the Specification?

Adopt the following format while preparing the Specification.

  1. Title of the invention.
  2. Area of the Invention.
  3. Background of the invention.
  4. Summary of the invention.
  5. Explanation about the drawings. Law does not compel you to submit drawings. But remember a good drawing can save you from pages of written description.
  6. Detailed description of the invention.
  7. Claims. This is the most important part in a Patent Specification. Please always consult an Attorney before drafting the claim.
  8. Abstract.

8.6 Is there any limit on number of pages or claims in the Specification?

Even though there is no limit to the number of pages in the specifications, it is better to be precise. The official fee will depend upon number of pages and the claims.
The fee for application having 30 pages including drawings for 10 claims with single priority is Rs. 1,000/- for individuals and Rs. 4,000/- for artificial legal persons.
For each additional sheet beyond 30 and additional fee Rs. 100/- per sheet for individuals and Rs. 400/- for artificial legal persons become payable.
For each additional claim beyond 10 claims an additional fee of Rs. 200/- per claim for individuals and Rs. 800/- for artificial legal persons become payable.

9.1 Is there an automatic right to Publication and Examination once a Complete Specification is Lodged?

There is an automatic right to Publication. The application gets published after 18 months from the date of filing of application or the date of priority of the application, whichever is earlier.

The Applicant has to specifically request for Examination after the publication of the Specification in the Patent Office Gazette, by paying prescribed fee. If the Examination is not requested within 48 months of the Priority Date, the Application will be deemed to have been abandoned.

9.2 Can this examination be expedited? When does the publication take place?

Normally publication of the application is done after 18 months from the date of filing of application or from the date of priority of the application, whichever is earlier. An applicant can request for examination only after publication.

Request for expedited publication can be made in Form 9 by paying the prescribed fee of Rs. 2,500/- for individuals and Rs. 10,000 for companies.

Thereafter, request for examination has to be made in Form 18 with a prescribed fee of Rs. 2,500/- for individuals and Rs. 10,000/- for companies.

The Express Request for Examination for National phase applications is possible on further payment of official fee of Rs. 1,000/- for individuals and Rs. 4,000/- for companies.

9.3 What should we do after the issuance of First Examination Report?

Usually, the First Examination Report will comprise many objections from the Patent Office. All the requirements of the Report would have to be complied within 1 Year from the date of the issuance of the First Examination Report.

In between, the Patent Office may issue further Official Actions if warranted by circumstances. If the requirements of the Examination Report are not complied within 1 year, then the application is deemed to be abandoned

9.4 Is it possible to amend the Patent Specification once filed?

The Patents Act, 1970 considers 2 types of amendments. After the receipt of the First Examination Report, amendments may be made to comply with the requirements of the Report. These are involuntary amendments made at the instance of the Patent Office and the same can be done free of cost.

In addition, voluntary amendments are also possible by filing Form 13 on payment of the prescribed fee. Voluntary amendments can be made either before or after the grant of the Patent.

However, amendments cannot be made for the purpose of increase in the scope of the claims or for incorporating additional disclosure.

The prescribed fee for amendment before grant is Rs. 500/- for individuals and Rs. 2,000/- for companies.

The prescribed fee for amendment after grant is Rs. 1,000/- for individuals and Rs. 4,000/- for companies.

Minor amendments for changing the name, address of the applicant and address for service can be effected on payment of reduced fee of Rs. 200 for individuals and Rs. 800/- for companies.

9.5 What happens if the requirements of the First Examination Report (FER) is not complied within the stipulated time? Will the applicant have a right of hearing and appeal?

If the requirements of the FER are not completed within the stipulated time, the application is deemed to have been abandoned. In case of abandonment, the Controller does not pass any speaking order but merely informs the applicant that the application has been abandoned. In such a case, the applicant does not have any right of appeal, but the aggrieved applicant can either file a Review Petition under Rule 130 of the Patent Rules before the Controller of the Patent or file a Writ petition under Art.226 of the Constitution.

Under the Patents Act, there is no automatic right of hearing before the rejection of the Patent application. If an applicant is very keen to have an oral hearing, he must specifically request for hearing. If the Controller rejects the application, even after hearing, the applicant can file an appeal within 90 days to the Intellectual Property Appellate Tribunal (IPAT) within 90 days of the order of rejection. As on date, the jurisdiction to hear patent appeal has not yet been conferred on IPAT and hence, the High Courts within whose jurisdiction the Patent Office is located are empowered to entertain Miscellaneous Appeal.

10.1 What is the term of patent in India and when does the renewal fee become payable?

A patent is valid for 20 years from the date of filing of the application. In case of International applications filed under Patent Cooperation Treaty designating India, the term of the patent is 20 years from the international filing date.

10.2 If two or more persons work together to make an invention, to whom will the patent be granted?

If each had a share in the ideas forming the invention as defined in the claims - even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application.

11. Does the Indian Law provide for Compulsory Licensing?

Yes. Indian Laws on Compulsory licensing are fair reasonable and/ or inconformity with the Paris Convention and WTO TRIPS agreement. Under Indian Law, any person interested may make an application for grant of Compulsory licence after 3 years from the date of the grant of the patent. A compulsory license can only be granted:

  1. if the reasonable requirement of the public (domestic and foreign) have not been satisfied;
  2. if the Patented Invention is not available to the public at a reasonable price;
  3. if the Patented invention worked in India.

Thus it follows that if a Patentee is meeting the local demand for a patent at a reasonable cost, he can successfully prevent compulsory licensing.

In addition, in the case of a national emergency or extreme urgency for the purpose of preventing major disease like AIDS, Tuberculosis, malaria or other epidemics, the Controller can permit compulsory licensing irrespective of the above three conditions.

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