In today’s technology-driven world, Intellectual Property has an indispensable role to play. Similarly, a patent is an important asset for an organization. An organization can grow in demand through its patenting activities. However, obtaining a grant of a patent is a long process with multiple checks on novelty, non-obviousness and industrial application of the invention. A patent gives an exclusive right to the inventor to make, use and sell his invention. This exclusive right is given for a period of 20 years from the date of filing. The main idea behind a patent is to protect the inventions that are created, thereby encouraging more developments. Biswajit Sarkar is the best lawyer Patent Registration in India.
Patent Search in India
An applicant should conduct a patent search to determine if there are any patents similar or identical to the applicant’s invention. A thorough patent search can improve the chances of obtaining a patent registration. One can also conduct a patent search to find information on patented inventions.
You can examine the legal status of a granted patent using the Indian patent search database. Enter the patent number and the displayed code in the ‘Patent E-register’ tab, then click Show E-register. It displays the legal status, the date of its renewal and bibliographical data of the patent.
Before making a patent application, conducting a patent search can help improve the chances of obtaining a patent grant. The claims to be filed in the patent application may be determined by this process. To determine the validity of a granted patent, an applicant may use the InPASS.
An applicant can conduct a patent search in India free of cost by going through the Patent database of India. One can search for either a published or a granted patent. The user can view and search for a patent through the following categories:
1. Application date
2. Title
3. Abstract
4. Complete specification
5. Inventor’s name
6. Application number
7. Filing office
8. PCT application number
Keyword Search – One may use the keyword search only in the case of the title, abstract, claims, and description search criteria. The ‘Boolean Operators’ and/or ‘Wild Cards’ are combined with the keyword search to conduct a patent search. Two columns will display the search results. The left column displays the application number, title, application date and status. Details [Bibliographic Data, Specification, and Status] of the patent application/granted patent will appear in the right column when a row in the left column is selected. In the respective tab, you may also see the details of bibliographic data, patent specification, and application/patent status.
Applicant Name Search – By typing the applicant’s name against the appropriate row in the Indian patent search database, one can check for patent applications/patents. Simply type in the Applicant’s name and hit the search button. The result displays the titles of all innovations published or granted in the name one entered.
Inventor Name Search – In the same way that you may search for an applicant’s name in the relevant row and see the results, you can also search for an inventor’s name in the appropriate row and see the results.
On entering the appropriate details, it shows several relevant search results. On selecting a patent application, a document opens with the application number, title, application date and status. The user can get more details by clicking on the application number, title, application date and status. The user can find the following details through a patent search:
1. Invention title
2. Publication date and type
3. Application number and filing date
4. Priority date, number and country
5. Field of invention
6. Classification
7. Applicant’s name, address, country and nationality.
8. The user can also view the summary of the patent application under the abstract column.
Patent Registration Process in India
An inventor should collect as much information as possible about the invention they wish to work on. They should conduct an extensive research, the advantages that come with it and if it can improve already existing solutions. However, not all inventions are patentable subject matter. Section 3 of the Patents Act, 1970 give those subject matter which are not patentable. Thus, the inventor must be aware of these subject matters that are not patentable while conceiving the invention. Hence, patent registration is important.
The inventor conducts a patent search to understand whether the invention is novel or not. Under the Patents Act, all inventions must meet the novelty criteria. The patent search identifies the closest prior development known to the public in relation to the invention. The search results give an opinion about the patentability of the invention. It can be negative, positive or neutral. The inventor can choose to directly file an application; they are, however, highly recommended to conduct a search beforehand.
Following the patent search, one should draft the patent application effectively. The application should include various parts such as claims, background, description, drawing, abstract and summary. These parts must be drafted carefully to provide an effective disclosure of the invention.
After one drafts the patent application, they may file the same in the patent office through application Form 1 following which they receive a receipt generated with the patent application number. If the invention is at an early stage, one can file a provisional patent application. Filing a provisional patent application can help secure a prior date of filing which is important as it secures your invention from the very beginning. Moreover, one has 12 months to file the complete specification. One may file for patents through Form 28 if one has a start-up or a small business.
After the applicant files the complete specification, the application is published after 18 months. If the applicant does not want to wait till 18 months to get publication, an early publication request can be made through Form 9 with the prescribed fees. In such a case, the patent application generally gets published within 1 month from the request of early publication.
Rule 24 states that the application for patent will not be ordinarily open to the public within 18 months from the date of filing of such application or the date of priority. Given that the period within which the controller will publish the application will be ordinarily 1 month from the date of expiry of such period, or from the date of request for publication under rule 24A within 1 month. As per rule 24A, the applicant may request for publication on Form 9 under section 11A (2).
The applicant should request the patent office to examine the patent application as it is not an automatic process. The applicant must file a request for examination within 48 months from the date of filing the application through Form 18. The Controller, on such request, gives the examiner for examination on factors like novelty, non-obviousness, inventive step and industrial applicability of the patent. The applicant is then provided with the First Examination Report. Rule 24C of the Patents Rule, 2003 states that an applicant may also apply for an expedited examination through Form 18 with the prescribed fee.
The Patent Office may raise objections in the First Examination Report. The applicant has to file a written response to the objections raised. The applicant can negate the entire objection and prove the patentability of the invention through a written response. If they require it, they may request a physical hearing.
One places the application for a grant when the Office addresses all the objections. They must ensure that their patent meets all the requirements. The patent journal publishes the grant of a patent following which any interested person may file a post-grant opposition within 12 months of such publication.
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Patent Opposition in India
Patent opposition, if used properly, is an important tool to prevent the grant of frivolous patents. One may acieve the same by revocation and other litigious methods, opposition serves as a more cost-effective way. However, this raises question of the misuse of opposition to prevent patents with great competitive value thereby affecting the business of competitors. Thankfully, the opposition procedure in India has its own checks and balances to address such fears.
Once a granted patent passes the opposition procedure, it acquires a higher patent value. There are two kinds of patent opposition process at two different stages of patent prosecution in India which are as follows:
1. Pre-grant opposititon: In a pre-grant opposition, third parties receive the opportunity to oppose the grant of the patent, just after the publication of the patent application. Anyone can file an opposition in the case of a pre-grant opposition. They need not pay any fee.
2. Post-grant opposition: If they wish to do so, an interested party opposes the patent after it is granted in a post-grant opposition. It should be within 1 year of the date of grant of patent. A post grant opposition is not as common as a pre grant opposition which is more common and cost-effective.
As per Section 25(1) of the Patents Act, 1970, one opposes the grant of a patent after the patent application is published. The grounds for filing a pre-grant opposition are stated in section 25(1) (a) to (k). They are as follows:
1. Someone obtains the invention in a wrongful manner.
2. Publication of invention before the priority date.
3. Prior claiming of invention in other specification.
4. Residents of India publicly use the invention, or at least know about it.
5. It is obvious and lacks any inventive step.
6. Invention is not patentable.
7. It is not clearly and sufficiently described in specification.
8. Fails to disclose information regarding foreign application.
9. Convention application file after 12 months of being filed in the convention country.
10. Specification does not give the source of biological material.
11. Invention is based on knowledge of the local or indigenous community.
The opposition files Form 7(A) with a statement and evidence supporting the same. They can also request a hearing. They receive a period of 6 months from the date of publication of the application. The reason behind it is that third parties receive an opportunity to object the grant of the patent. A representation for opposition can only be filed if a request for examination of a patent has already been made. The Controller considers the representation, and decides whether there is any merit in the application that the opposition filed. Then the Controller sends a notice of opposition to the applicant. After receiving the notice, the applicant should file a reply to the representation for opposition with evidence, within 3 months of receiving the receipt of notice.
The Controller after considering both the representation for opposition and the applicant’s reply may either reject the opposition and grant the patent or ask the applicant to amend the specifications before proceeding to grant the patent.
As per Section 25(2) of the Patents Act, any interested person can file a post-grant opposition within 12 months of the date of publication of the grant of a patent by giving notice of opposition to the controller. The grounds to initiate a post grant opposition is identical to that of the pre-grant opposition. After the Controller receives the receipt of the notice, the Controller informs the patentee of the opposition. Thereafter, the Controller orders the Opposition Board to examine and give its recommendations.
The opponent should file a written statement of opposition and evidence in duplicate copy. The opponent in the written statement should specify:
1. The nature of its interest in the patent.
2. Facts on which the case relies.
3. Evidence
The patentee submits a written statement along with evidence to the patent office. The opponent also receives a copy of the written statement. The patentee completes such action within 2 months of receipt of notice of opposition. If they fail to do so, the Office revokes the patent.
Thereafter, the opponent may file reply evidence to the patent office within 1 month of receiving the patentee’s reply statements.
The Opposition Board has three members. The Controller nominates one out of the three members to chair the board. The members of the board are generally patent examiners. The Opposition Board examines the documents submitted by the patentee and the opponent. The Board suggests a recommendation to the Controller with reasoning for each ground mentioned in the notice of opposition.
The Opposition Board does not disclose their recommendations to the concerned parties. This changed in Cipla Ltd. v. Union of India where the Supreme Court held that the Opposition Board must furnish its recommendations to the parties so that they can strengthen their contentions before the Controller.
After receiving the recommendations of the Opposition Board, the Controller fixes the date and time for hearing both parties. The members of the Opposition Board are also present at the time of hearing. The Controller considers the Opposition Board’s recommendation. He hears both parties, and orders that the patent be either maintained, amended or revoked.
Patent Renewal in India
In India, applicants register their patents for a period of 20 years. It is crucial to renew the patent on time to avoid any surcharge. In the case that one does not renew the patent it will cease to exist and will become available in public domain. Thus, one will not be able to take action against a third party who may exploit the benefits of said patent.
To renew a patent there is no need to fill any special form, a patentee can directly pay the renewal fee by making a request to the Controller of the patent. Thereafter, one must pay the first renewal fee before the start of the third year of the patent following which the patentee needs to make a yearly payment of renewal fees. Ideally, they must pay the renewal fee for the coming year before the expiration of the current year.
For example: The applicant must pay the renewal fee for the 8th year before the expiry of the 7th year of the patent.
If the patentee does not make the payment within the prescribed time, then, they may request a 6 month extension by paying the late fees. The late patent fee increases with each month after the expiry of the patent. The fee also depends on the type of entity holding the patent and the mode of payment. The patentee can file for the restoration of the lapsed patent if the patent expires.
Reinstating a patent is a complex and expensive process. The patentee must file Form 15 within 18 months from the date of expiry of the patent. Upon the discretion of the Controller, the applicant may seek a 1 month extension. The applicant along with Form 15 must prove that the non-payment of the renewal fee was unintentional and for a genuine reason. The evidence for the same must be provided in the form of a letter, copy of documents or deed. The controller examines this evidence who decides whether the instance of non-payment was genuine or not.
Any interested person may oppose the restoration application. The person should apply through Form 14 within 2 months from the date of publication of the application for restoration. Thereafter, both the patentee and the opponent are heard before the Controller who decides the case.
Patent Infringement in India
Patent infringement is the commission of a prohibited act in relation to a patented invention without the permission of the patent holder.
A patent infringement usually occurs through the usage or sale of the patented invention. In many countries the usage of patent must be commercial in nature to constitute patent infringement.
There are two types of patent infringement in India. They are:
1. Direct Infringement: A direct infringement of a patent occurs when a product is similar or identical to any patented product and where a commercial use of the invention is carried out without the permission of the patent holder.
2. Indirect Infringement: In an indirect infringement, a patent infringement occurs due to an accident without any intention for infringement.
1. The patent holder can reach the collector of customs and prohibit entry of the infringed goods into the Indian market. The patent holder must provide the relevant details in such a case.
2. An interim injunction may be granted where there is prima facie evidence in favour of the patent holder. In a trial, if the same is proved then a permanent injunction may be granted.
3. If it is proved that the defendant was aware about the existence of the patent at the date of patent infringement, then, damages may be granted.
PCT Filing Procedure in India
The Patent Cooperation Treaty (PCT) is an International Treaty with over 145 contracting states. The World Intellectual Property Organisation (WIPO) is responsible for administering PCT. As a result, PCT protects the invention of the applicant in many countries. Besides, a single international patent application can be made, instead of filing multiple national or regional patent applications. For instance, one may file the application in a single country, in a single language. This ensures the filing of the patent in various countries, in various languages.
1. The applicant should file an international application in a Receiving Office (RO). The RO in India is the Indian Patents Office in Delhi, Mumbai, Kolkata, or Chennai. Similarly, an international application can be filed with the International Bureau (IB) of WIPO as the RO.
2. The international application should include a request (Form PCT/RO/101) with the description, claims, abstract and drawings if required of the invention in English or Hindi. One should file it in triplicate, with the prescribed fees (Transmittal fee, international filing fee and search fee). Likewise, the applicant must pay the fees within 1 month from the date of receiving the receipt of the international application.
3. After the application is submitted, the RO checks whether it has all the necessary details such as name of the applicant, at least one applicant being the resident or national of any PCT contracting state, descriptions and claims. After conducting these checks, the RO accords the international filing date. Any country designated in the international application considers the international filing date as the actual filing date.
4. Thereafter, the RO keeps one copy of the international application for record purposes with the name “Home copy”. The International Bureau of WIPO receives a copy titled the “record copy”. Finally, the International Search Authority (ISA) also receives a copy of the application, for conducting international search. It is the “search copy”.
1. Name, address and nationality of the applicant or the inventor.
2. Title of invention, priority application number and filing date.
3. Address for service in India.
4. On their appointment, a patent agent requires a power of attorney.
5. The applicant needs an instrument of assignment if they aren’t the inventor.
6. Verification should be provided in the case of a translated document.
ISA after receiving the search copy of the international application conducts an international search. Subsequently, the applicant can opt for an international preliminary examination by the International Preliminary Examining Authority (IPEA). WIPO recognizes some of the Patent Offices in the world to function as ISA and IPEA under the PCT. An applicant can choose any of the recognized Patent Offices to conduct the search and examination. For example, Indian applicants may choose the Patent Offices listed down below:
The ISA after conducting the international search establishes the International Search Report (ISR). It identifies the published patent documents and technical literature that may influence the patentability of an invention. Furthermore, the ISA also establishes a Written Opinion of the Search Authority (WOSA) on the potential patentability of the invention. The search fee can vary based on the ISA chosen.
WIPO publishes the international application, along with the International Search Report. Thereafter, it is published after the expiry of 18 months from the priority date of the application.
Once WIPO publishes the application, the applicant may opt for the international preliminary examination. Thereafter, the International Preliminary Examination Authority establishes an International Preliminary Report on patentability. Besides, if the applicant does not opt for a preliminary examination, the WOSA is published as the International Preliminary Report, by the International Bureau of WIPO.
Then, the IPEA carries out an additional patentability analysis and sends a written opinion to the applicant. Thereafter, the applicant may make any amendment to the international application as required.
After the PCT procedure ends, or after international search or preliminary examination or before 30/31 months from the priority date, an application for the grant of a patent can be filed before the national patent office of the country in which the patent is desired. The date of filing is the international filing date in all such countries.
The applicant must file a national phase application in India before the expiry of 31 months from the date of priority of the application to get a grant of patent in India.
