Having a patent registered to one’s name or business is a great way to build a brand, boost its IP valuation, and protect the invention. The Patents Act, 1970, and the Patent Rules, 2003, as amended, govern all aspects of patents in India. Here’s a quick primer on the procedure to file and obtain a patent registration in India.
Basic Requirements to obtain patent registration
Novelty, utility, and non-obviousness are the basic considerations for obtaining a patent registration in India. You can learn more about the NUN’s test of patentability here. Additionally, the Patents Act, 1970 sets out exceptions as to what cannot be considered as inventions, and thus cannot be granted a patent registration. This includes methods of agriculture, horticulture, teaching, surgical methods, mathematical algorithms, scientific principles, biological processes, the discovery of plants or animals, etc.[i]
Where to file?
India has four patent offices located in Delhi, Mumbai, Chennai, and Kolkata respectively. The patent application must be filed only at the patent office designated to one’s application address. Such address can be that of an individual applicant, or a company’s registered address. Patent applications can be filed in-person at the designated patent office or online on http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin. If the application is filed online, the portal will automatically select the patent office based on the application address. In addition to the above, it is necessary to determine one’s eligibility to file a patent application. To find out more about who can file a patent application and which jurisdiction your registered address falls under, click here. It is important to note that the patent office charges an additional 10% fee for an offline application. This may be to encourage more people to use the online portal. If one opts to file the patent application online, then it is necessary to have a Digital Signature Certificate (“DSC”) issued by the Controller of Certifying Authority (“CCA”).
Procedure to file
Depending on the requirement, a provisional or complete application may be filed with the patent office.
Provisional Application
A provisional application is filed to protect the idea of an invention when the inventor/applicant requires more time to complete/execute the invention. This guarantees an earlier priority date, but no grant. The applicant has only 12 months after filing the provisional application to file a complete application.[ii] If (s)he fails to do so, the patent application will be considered abandoned.
Complete Application
A complete application is filed by filling Form 1 which contains the details of the inventors, applicants, and other declarations along with the complete specifications, abstract, and drawing of the invention in Form 2.
Form 3 requires a declaration of information and an undertaking on foreign applications. However, filing form 3 is not mandatory unless a patent application for the same invention has been made in other countries.
In case the applicants and inventors are different, then Form 5 must be filed by the applicants stating their right to apply for a patent. This is intended to protect the interest of the true inventors.
Form 26 must be filed in all cases where the patent application is being handled by a patent agent/attorney.
All applicants are also required to file Form 27 stating the working of the patent for commercial use irrespective of the type of patent applied for.
A start-up or small entity may file Form 28, and submit a start-up certificate issued by the Department for Promotion of Industry and Internal Trade or an MSME Certificate. There are numerous advantages to filing an application as a start-up or a small entity like concession in application fees, and eligibility to file for expedited examination.
In addition to the required forms, requisite fees must be paid to the Patent Office as given in Schedule I of the Patent Rules, 2003, and amended from time to time.
Publication of Patent Application
The patent application will be made available to the public i.e. published in the Official Gazette only 18 months after filing the patent application.[iii] The applicant may also apply for early publication by filing Form 9 before the expiration of 18 months.[iv] Under Rule 24, the Controller of Patents is required to publish the application in the Official Gazette within one month of receipt of the application for early publication.
Pre – Grant Opposition
Any time after the publication of a patent application but before the grant of patent, any person may raise oppositions against the patent application only on the grounds mentioned in the Act, which includes: wrongful obtainment of invention, non-obviousness, publicly known invention, unclear specifications, publication of the invention before the priority date, etc.[v]
Request for Examination
No patent application will be examined by the Controller unless a request for examination is filed by the applicant by filing Form 18.[vi] The applicant's request for examination has to be made within 48 months from filing the application, failing which the application will be considered withdrawn. A patent application is placed in the queue for the generation of examination report only after the request for examination has been filed. After filing a request for examination, the Indian Patent Office may take up to 3 or more years to generate the examination report. Therefore, it is advisable to file a request for examination early.
Expedited Examination
In case the applicant requires an expedited examination, an application for the same can be made by filing Form 18A along with the request for early publication. However, only the following category of applicants are entitled to file a request for expedited examination –
A start-up;
A small entity;
A female (in case of a joint application, at least one of the applicants must be female);
Department of Government or an institution owned/controlled/financed by the Government;
Where the application pertains to a sector as notified by the central government.
Rule 24C requires the examiner to prepare the examination report within 2 months from the date of receipt of the application for expedited examination which shall be handed over to the Controller who is required to dispose of such reports within 1 month. The Controller shall then issue a First Examination Report (“FER”) within 15 days of such disposal. The time limit for putting up the application for a grant is 6 months from the date of issuance of the FER which can be extended by a period of 3 months if a request for an extension under Form 4 is filed by the applicant before the expiry of 6 months. The Controller is required to dispose of the patent application within 3 months from the last date of response by the applicant. These timelines are not applicable where pre-grant oppositions have been filed by a third party.
Post Grant Opposition
Any person can file a patent opposition within 1 year of grant of a patent only under the grounds mentioned in Section 25(2) of the Patents Act, 1970. On receipt of such notice of opposition, the Controller of Patents shall inform the patentee[vii] and constitute an Opposition Board for examination and submission of findings.[viii] The Opposition Board shall give the patentee and the opponent a hearing, post which the Opposition Board has the power to order for the maintenance, amendment, or revocation of the patent.[ix]
References:
[i] Section 3, The Patents Act, 1970. [ii] Section 9(1), The Patents Act, 1970. [iii] Section 11A(1), The Patents Act, 1970. [iv] Section 11A(2), The Patents Act, 1970. [v] Section 25(1), The Patents Act, 1970. [vi] Section 11B, The Patents Act, 1970. [vii] Section 25(3)(a), The Patents Act, 1970. [viii] Section 25(3)(b), The Patents Act, 1970. [ix] Section 25(4), The Patents Act, 1970.
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