PATENT FILING PROCESS IN INDIA: ALL ONE NEEDS TO KNOW!

INTRODUCTION

Patent belongs to the domain of Intellectual Property Rights. IPR is a conglomerations of the
rights related to the property arising out of the creating labor of an individual. IPR are a kind of
delimiting rights which sets a limit beyond which no other can interfere with the rights of
intellectual property holder.

The right of Patent is a territorial right which is granted by the government of the nation to which
the inventor is interested to exercise. The right can be exercised only to the extent to which the
jurisdiction of the concerned government extends.

In India, Patents is governed by THE PATENTS ACT, 1970 and THE PATENT RULES, 2003
(herein after referred as act and rules respectively), and can be granted for a new product or
process that involves inventive step and which are capable of industrial application.

STEP BY STEP PROCEDURE FOR FILING A PATENT IN INDIA.

Filing a patent is cumbersome process, it is a techno legal document which is to be carried out by
the professionals having sufficient knowledge of law and legal procedures along with excellent
drafting skills. Patent Agents are such professionals which takes care of this whole process. The
following steps are broadly taken care of while filing a patent:

1. ANALYSING THE INVENTION

The first step towards the filing of a patent is to be executed by the inventor
himself/herself. Inventor must analyse his/her invention and prepare some data;
- the filed to which the invention belongs;
- background of the invention;
- any existing problem, if solved by the invention.

Inventor must also take care of the subject – matter of the invention. Section 3 of the act 1
excludes certain subject matter which can’t be patented at all. This indicates that not all
the inventions can be patented under the act. Once the inventor conceives this much
information about the invention, he/she can proceed towards next step.

2. PATENT SEARCH AND PATENTABILITY SEARCH REPORT

This step is not a mandatory step, and it totally depends on the discretion of the inventor.
However, preparing a patentability search report is highly advised, as it gives a rough
probability of whether the invention can be patented or not.
Patentability search report analyses the novelty of the invention, one of the crucial
requirement under the patents act for a patent to be granted, it check how much the
present invention, if, over lapping with the prior art, and also the obviousness of the
invention in the public domain at that time. The result of the report is positive, negative
or neutral, where positive indicates the possibility of patent to be granted, negative
indicated that there are very less chance of getting a patent and neutral means 50 – 50
chance. Opting for this step depends on many factors such as budget of the inventor, the haste to
file the application, etc.

3. DRAFTING OF PATENT SPECIFICATION

It is one the most crucial step of patent filing. Any invention is conceived by a written
document only, irrespective of the physical embodiment of the invention itself. So, no
matter how different two invention may look physically, if their drafting is in such a way
that both of them seems quite similar and interfering with other’s function or in any
sense, the invention latter one can’t be patented because of its similarity with the existing
one.

Patent Specification is the document, which is filed with the patent office, it is like an
identity card of the invention, whatever will be written in this document, would become
the truth and fact for the invention.

A typical patent specification goes in the following way;
- title;
- background;
- summary;
- drawings, if any;
- detailed description;
- claims;
- abstract .

Drafting must be done with due care and caution, as it defines the scope and future of the
invention.

4. FILING OF APPLICATION

The application can be filed with the concerned government patent office in FORM – 1.
This form is used to file the application for a complete invention. However, one can file a
provisional application via FORM – 2, if the invention is in developing stage and the
inventor believer that some more feature would be revealed in the near future, the
provisional has to be followed up by the complete specification within 12 months. It is a
statutory requirement as per section – 9 of the act. 

The benefit of filing a provisional is that for all the future purposes the priority date
would be the date of filing of provisional. It also save the invention of the inventor and
especially in highly competitive fields where if the inventor waits for filing the
application once the invention will be completed, if some other invention gets patented,
the possibility the former invention of getting patented would be strike out completely.

5. PUBLICATION OF THE APPLICATION

Once the complete specification is filed, the application is published after 18 months
from the date of filing the application or the date of priority, whichever is earlier. While
no such request has to be filed by the applicant for the publication after 18 months period,
a request for expedite publication can be proposed by the applicant in FORM – 9 after
paying the prescribed fee. The application is published within one month from such
request.

Once the application is published, and person may oppose the grant of patent, what is
known as pre – grant opposition . The statutory provisions as to pre – grant opposition
is contained in section – 25 (1) (a) to 25 (1) (b) of the act 3 . It is the controller who then
decides on merit and notifies the applicant, after which the applicant has to file his/her
reply, and a subsequent decision can then be taken thereof.

6. EXAMINATION OF THE APPLICATION

A request for examination of the patent has to be filed by the applicant in FORM – 18
under RULE – 24 B after 48 months from the date of filing the application or the date of 

priority, whichever is earlier. After which the controller gives the invention to a patent
examiner who prepares and provides to the applicant a First Examination Report. The
applicant can also request for expedite examination in FORM – 18A under RULE – 24
C.

7. GRANT OF PATENT

Once the applicant completes the statutory procedures and responds to all the objections
in the form of written replies, the patent is granted to the applicant.
The patent so granted is notified by publishing in patent journal which is updated time to
time and open to be accessed by the public.

Within 12 months from the date of publication of the patent in the patent journal, any
person may raise an objection to the grant of the patent to the controller by what is known
as post – grant opposition u/s 25 (2) (a) to 25 (2) (k) under the act 4 .

This is how a Patent is granted in India. Indeed the whole process is cumbersome and requires
ample amount of time and money and also the engagement of professionals, but it provides to the
inventor a monopoly to use, sell, offer to sell, and importing rights pertaining to the invention. In
this way it incentivize the inventor, as he\she can charge royalty by licensing the invention.

AUTHORED BY,
RAHUL BHUJBAL