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This article presents the steps on how to file a patent in India, enlisting a detailed filing process. The vital components required for an invention to be signified as a patent has been discussed in detail. It arranges a comprehensive analysis of the various criteria involved in filing a patent provisional application, extending over to publication and renewal.
Innovation plays a key role in the economic development of a nation. Patent is an exclusive right granted by the authorities to the applicant of an invention for a limited period of time in lieu of full disclosure of his invention. “Invention” means any new product or process involving an inventive step and capable of industrial application.
In the recent years, there has been an increase in the perception to protect one’s innovation resulting in increase in Intellectual Property Rights (IPR) awareness in India. Due to this increased awareness, there has been a gradual rise in the number of patent applications filed in India.
Any person claiming to be the true and first inventor of the invention can apply for a patent. Any person being the assignee of the person claiming to be the first and true inventor in respect of the right to make such an application can apply for a patent. Also, a patent can be applied by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
Criteria for Patenting
First criteria for patenting is novelty. Novelty means that the invention should not have been published in India or elsewhere, and it should not have been in prior public knowledge in India. Second criteria for patenting is an inventive step. “Inventive step” means a feature of an invention that involves technical advancement 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.
Third criteria for patenting is capable of industrial application. Capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry.
For applicants who are residents of India, the appropriate office is determined according to the place of residence/business/origin of the invention. While for applicants not resident of India or with no place of business in India, the appropriate office would be according to the address for service given in the application patent Head office in India is in Kolkata, and the branch offices are in Mumbai, Delhi, and Chennai.
The patent office comes under the Ministry of Commerce & Industry. Branch offices have their own fixed territory and accept application forms from areas lying within its geographical limits.
Indian Patents Act
The Indian Patents Act, 1970 was passed and it came into force on April 20, 1972. The Patents Amendment Act 1999, was brought into force retrospectively from January 1, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agrochemicals though such patents were not allowed. However, such applications were to be examined only after December 31, 2004.
The second amendment to the 1970 Act was made to the patents (Amendment Act) 2002 (Act 38 of 2002). This Act came into force on May 20, 2003 with the introduction of the new Patents Rules 2003 by replacing the earlier Patent Rules, 1972.
The third amendment to the Patents Act, 1970 was introduced by the Patents (Amendment) Ordinance, 2004 with effect from 2005. This Ordinance what was later replaced by the Patents Amendment Act, 2005 (Act 15 of 2005) on April 4, 2005. which was brought into force from January 1, 2005.
The Patents Rules 1972 was notified and brought into force with effect from 1972. The new Patent Rules 2003 was brought into force by replacing the 1972 rules. These rules were further amended by the Patent (Amendment) Rules 2005 and the Patent (Amendment) Rules 2006. The last amendments were made effective from May 5, 2006.
Procedure of filing a patent – File A Patent In India
Step 1: Filing provisional application
An idea or concept can be filed as a provisional patent application in India. Patent drafting is techno-legal content writing of an invention to be filed in a patent office. The patent drafting follows guidelines laid out by the patent offices and differs from one country to another. After assuring that the invention is patentable, the inventor can proceed for drafting the patent in Indian patent format. Patent Draft format is decided on the basis of content and stage of the invention/innovation.
Provisional Patent Drafting and Complete/Non-Provisional Patent Drafting
Provisional or non-permanent right is given to an inventor for establishing a priority for an idea or a concept with very less or incomplete technical information. Provisional application is a temporary application which is filed when the invention is not finalized and is still under experimentation.
An applicant/inventor can file a patent by direct visitation to patent office or direct online filing or through an attorney. Provisional Patent, as the word suggests, is not a final legal documentation and is suggested to be filed only if the inventor has incomplete information or just an idea and intends to get some time period to develop the product or gain complete information of the invention. Unlike non-provisional patent applications, there are no specific requirements or set guidelines for what has to be included in a Provisional Patent Application.
The nature of one’s idea- like whether it’s a simple consumer product or a game-changing innovation-has to be taken into account. If it is a simple consumer product one may be able to generate income without ever needing to file a non-provisional application. If it is a game-changing innovation, the person will need a wall of patents to keep others at bay. Provisional patent drafting has to be converted into a complete/non-provisional patent within a period of 12 months otherwise the patent priority lapses.
Step 2: Non-provisional patent drafting
Complete patent specification is a legal document filed in the patent office for claiming the rights of an invention and its details. Complete/Non-Provisional Patent Drafting is a legal document prepared in techno-legal language and defined by boundaries set by Claims for the invention.
The patent draft is a representation in front of the patent office and the decision of the patent office on the grant of the patent will be made based on the draft itself. Hence, not doing a patent draft properly may lead to a patent application which does not get a grant or if granted does not help the inventor in stopping competitors effectively.
Complete Specification should be preferably drafted by experienced patent drafters who first identify the novelty aspects of the invention, defines the primary and secondary claims, structural limitations, drawings and details of the drawings and then uses their skills to create an enforceable patent application. The structure way of drafting the complete specification is as follows:
- Title of the invention – Choose a suitable invention title within 15 words which can denote your patent application;
- Technical description – A brief of which domain the patent application belongs to and specifically what is aimed to solve.
- Background of the invention – A background of what is conventional patents are, what do the conventional patent applications lack in and how the present complete patent application is solving those drawbacks.
- Summary of the invention – Summary of the complete patent application is generally in the lines with claim and sometimes it is a paraphrasing of the claimed features and structure of the invention.
- Brief Description of Drawings – This includes a brief introduction of the drawings which support the claims of the patent application diagrammatically.
- Detailed Description of Drawings – This section elaborates the drawings in detail to provide an in-depth knowledge of the complete patent application and support claims with additional details such as experimental details of the complete patent application and advantage of the patent application.
- Claims – This section is utterly important and has to drafted in broad manner specifying novel aspects of the complete patent application.
- Abstract of the Invention – This section is a brief of primary features of the complete patent application.
Step 3: Publication of the application
Every patent application which is filed with the Indian patent office is kept as a secret until the time it is published in the official patent journal. Indian patent office will publish patent applications ordinarily after eighteen months. This is an automatic event and you need not make any request. However, if you wish to get your application published earlier, you can make a request for early publication (Form 9) and your application will ordinarily be published within one month of the request.
The date of publication is important as the patentor’s privileges and rights start from the date of publication, although they can’t enforce their rights by way of any infringement proceedings until their patent is granted. It is also important to know that there are a few scenarios under which a patent application may not be published and kept as a secret:
- Secrecy directions have been imposed under the Patent Act. Secrecy directions are imposed if the invention falls in a category publication of which could be against the interest of the nation.
- A complete application was not filed within twelve months from the date of filing of the provisional application
- A request for withdrawal was made. Such a request has to be made at least three months prior to publication. So, for practical purposes, it is fifteen months from the date of priority in a standard patent application process.
Step 4: Pre grant opposition
After publication invitation is available to the public so any person/party interested can file a request to the controller and can oppose the patent by writing an application to the controller.
Step 5 – Examination of the patent application
Every patent application which is filed for protection has to be substantively examined before a patent is finally granted. The examination process is where your patent application will finally be examined on merits of the invention as described and claimed in the patent specification.
The examination process, unlike publication, doesn’t happen automatically by way of filing of the Indian patent application. The applicant has to specifically make a request for examining their patent application (Form 18). Only when a Request for Examination (RFE) is received, will the application be queued for examination. So, the earlier one makes the RFE request, the earlier one’s application may be examined by the examiner.
If a patentor wishes to fast track their patent application even further and jump the examination queue, they can file a request for expedited examination (Form 18A). However, an expedited examination is only available to the applicant if the applicant is either a start-up; or the applicant chose the Indian Patent Office as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) during their international application (PCT application).
On the contrary, some patentors may sometimes not want to get their application examined early for strategic reasons. Reasons for deferring the request could include extending the patent-pending life, waiting for funding, et cetera.
Examination process (Objections by examiner & responding to objections)
Once, the Request for Examination has been filed, it will eventually land up on the desk of the examiner from the relevant technology background for examination. During the examination process, the examiner will scrutinize the application to ensure that the application is in accordance with the Patent Act and Rules. The examiner also performs a search to understand similar technologies to ascertain if the invention would satisfy the patentability criteria.
Based on the review of the application, the examiner will issue an Examination Report to the applicant, stating the grounds for objections. The first such examination report is called the First Examination Report (FER).
Once, the FER is issued, the patent applicant needs to successfully overcome the objections to receive a patent grant. The whole process may involve responding to examination reports, appearing for hearing, etc. The total time needed to put an application in order for the grant is six months (earlier it was twelve months) from the date on which the FER is issued to the applicant. However, this six-month period can be extended for a period of three months by the applicant by filing a request for an extension of time (Form 4)
Step 6: Final decision on grant of patent
Once, the patent application overcomes all the objections, the patent will be granted and published in the patent gazette.
Step 7: Renewal
After the patent has been granted, it has to be renewed every year by paying the renewal fee. A patent in India can be renewed for a maximum period of 20 years from the patent filing date.
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