HOW TO FILE A PATENT APPLICATION IN INDIA?

HOW TO FILE A PATENT APPLICATION IN INDIA?

HOW TO FILE A PATENT APPLICATION IN INDIA?

Let’s say you have invented a software which according to you is unique and fairly efficient in terms of other software available in the market. Initially, you were skeptical if this invention would work or not. But after the launch, you noticed the rise in its demand because of which you suddenly started to worry that someone else might steal or copy the idea, that’s when the registration of your invention comes into play. It is always a good idea to safeguard your right and establish sole ownership of your creation by registering for a patent under Indian laws.

However, filing a patent is fairly a long and complicated process in India therefore it is always recommended to hire a patent agent or any professional for the same. The grant of patents is regulated by The Indian Patents Act, 1970 and the Patent Rules, 2003 (hereby amended in 2005). Patent, under the Act, is granted by the controller to the inventor for 20 years. The Act provides an inventor substantive rights and secures his monetary right which he can enforce for his benefit either by using it himself or by conveying the privileges to others.

 

In the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511), it has been held by the supreme court that, the purpose of registration is to protect and encourage fair competition in the field of technology to transform inventions or creations into real productive forces as quickly as possible. A country’s market economy is dependent on the successful working of its patent system.

 

PREREQUISITES

 

  1. The invention/creation/idea must be a product or a process. The patents can only be obtained in respect of products and processes, not for services.

  2. For any invention to be patentable, it must mandatorily meet the three requirements:

  • Novelty: It must be new and one of its kind. It should not be published in India or elsewhere before the date of filing of the patent application in India. It will not be considered a novel product/ process if there has been prior publication and prior use of the same or an identical invention.

For instance: A recent grant of patent in the U.S.A. by the US Patent Office to the turmeric products was challenged by The Indian Council of Scientific and Industrial Research (CSIR) on the plea that the patent could not be granted because there existed no novelty in the invention. Also, that it was already published in Indian texts and the use of turmeric preparations has been made in our country since times immemorial.

  • Non-obviousness: The invention must not be too obvious to a person who is skilled in the art to which the invention relates.

  • Industrial Application: The invention should be useful and possess some kind of practical utility so that it can add value to the life of the common man.

  1. There are certain categories of things which do not qualify to be patented as per Sections 3 and 4 of the Indian Patents Act, 1970 in India. It is important to check whether the invention is a patentable subject matter.

  2. The patent application is allowed to be filed by either the inventor (or his assignee or legal representative) or a patent agent claiming to be the true and first inventor of the invention as per Section 6 of the Act.

  3. It is advisable to pen down all the information about the invention which includes a detailed description of what it does, how it works, its advantages, etc. Also, include drawings, diagrams, or sketches explaining the working of such an invention.

  4. Patent search: Before filing a patent application, it is mandatory to conduct a patent search so that you can confirm at your end whether an application for the same invention was made previously. It can be done by conducting a physical search at the patent office or you may conduct it online by visiting the Indian Patent Advanced Search System (InPASS) [1]. It is also important to conduct a patent search on international databases. For instance, WIPO Portal for patent search [2].

 

PROCEDURE

 

The Patent Rules, 2003 specifies the procedure for applying for patents in India.

 

  1. FILING OF THE PATENT APPLICATION

 

This is the beginning of the actual application process for your invention. You may either choose to do it by yourself or hire a professional patent agent. After conducting a thorough patent search and comparing with the existing ‘prior art’, and confirming that the invention is unique, the next step involves the filing of a patent application with the appropriate patent office in ‘Form 1’ [3].

The patent application must be filed along with the Form 2- Provisional or Complete specification [4], Form 3 – Statement and undertaking by the applicant under section 8 [5], Form 5 – Declaration as to inventorship [6], and Form 26 – Authorization as to patent agent [7].

 

The fees for filing a patent is as follows:

  • Startup or an Individual – INR 1600 (for e-filing) and INR 1750 (for physical filing).

  • Small Entity – INR 4000 (for e-filing) and INR 4400 (for physical filing).

  • Others – INR 8000 (for e-filing) and INR 8800 (for physical filing).

 

Patent Specification – Provisional and Complete Specification

 

A patent specification is a document consisting of a detailed description of an invention or creation. It may be provisional which gives the initial description of an invention when the application is filed or a complete specification that gives full and sufficient detail of an invention.

 

A patent application may either be prepared with a provisional or complete specification in ‘form 2’ [4], at the option of the applicant. Nowadays, it has become a practice to first file a provisional application at an early stage of the invention. If the application is filed with provisional specification, then the applicant must file a complete specification within 12 months from the date of filing of the application as per section 9 of the Act.

 

In the case of Pether v. Shaw, 10 PRC 293, The patentee of a feedwater governor described in his provisional specification, an apparatus acting by ‘a rod or other attachment’. In his complete specification he described it as rod, wire, or other suitable means, in the drawing attached to the complete specification, the defendant alleged that the patent was invalid. At the trial, it appeared from the plaintiff’s evidence that the rotary spindle was the essential part of this invention and that the rod was not suitable, but it was claimed differently in the complete specification, therefore the patent was considered invalid.

 

  1. PATENT DRAFTING

 

The drafting of the patent application is the most crucial and important step of the entire procedure which involves both technical and legal understanding. The drafting must be done in the right way by including every detailed description of your invention in a prescribed manner, if not, the patent is likely to get rejected.

 

  1. FILING A REQUEST FOR PUBLICATION

 

The applicant has the option to file a request for early publication in Form 9 [8]. However, the patent application will be published after 18 months from the date of filing or application or the priority date (priority date is the date of filing of the first provisional application) by the patent officer as per Section 11A of the Act.

Published particulars include the Date of application, the Application number, Name, and Address of the applicant along with the abstract, published in the journal released by the controller of the patent office. Also, the application will be open for public inspection after publication.

 

 

  1. FILING A REQUEST FOR EXAMINATION

 

The next step is to file a request for examination of the patent application in Form 18 [9] within 48 hours from the date of filing of the application or the priority date, otherwise, the application shall be treated as withdrawn as per Section 11B of the Act.

 

  1. HANDLING OBJECTIONS

 

At the examination stage, a patent examiner scrutinizes the patent application, checks whether the patent has any grounds for objection. Based on the results of the prior art search and other prescribed details, a report is prepared by the examiner which contains his observations on these issues, including any deficiencies in the application within 1 month.

At this step, the inventor/ applicant shall be allowed to communicate his novelty or correct the deficiencies within 6 months, which may be extended for another 3 months.

 

6. GRANT OF PATENT CERTIFICATE

 

When the application for a patent meets all the prescribed requirements, the patent shall be granted by the controller as expeditiously as possible with the seal of the patent office, also the date on which the patent is granted will be entered in the register. It shall be valid for 20 years.

 

 

BY-

Sharmili Singh

 

REFERENCES:

[1] http://ipindiaservices.gov.in/publicsearch

[2]https://patentscope.wipo.int/search/en/search.jsf

[3]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_12_1/form-1.pdf

[4]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_13_1/form-2.pdf

[5]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_14_1/form-3.pdf

[6]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_16_1/form-5.pdf

[7]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_38_1/form-26.pdf

[8]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_21_1/form-9.pdf

[9]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_30_1/form-18.pdf

10. Laws relating to Intellectual Property – Dr. BL wadehra.

11 www.ipindia.nic.in