A Patent is a monopoly right granted to person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. The Patent system in India is governed by the Patents Act, 1970 & The Patents Rules 1972, effective from April 20,1972. Various amendments have been made thereafter.
Patent in India is granted by Indian Patent Office under Ministry of Commerce, and Government of India. It administers the various provisions of the Patent Laws relating to the grant of Patents & The Designs Law, relating to the registration of Industrial Designs. It is located at four locations in India –Delhi, Mumbai, Chennai and Kolkata.
Each Patent office has its Territorial Jurisdiction which comprises of several states as follows:
- Mumbai-The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli.
- Delhi-The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh.
- Chennai-The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep.
- Kolkata-Rest of India (States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands)
The Territorial Jurisdiction for the Application can be determined by
- Place of residence, domicile or business of the applicant.
- Place from where the invention actually originated.
- Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (in case of Foreign Applicants).
Application of Patent can be made by:
An individual or jointly with other person can apply for Patent. The Application of Patent can be made by:
- True and first inventor of new product or process.
- Assignee (person or private or public company or research organization or educational institute).
- Legal Representative of inventor or assignee.
Criteria for Granting Patent:
The following criteria has to be fulfilled for the grant of Patent on New Inventions:
- Novelty: It refers to something that is New which means it is not known anywhere in the world in any format. Any format includes in form of published books; newspapers reports or research papers or even use of invention.
- 2. Inventive Step: An Invention shall be considered as involving an ‘inventive step’ if, having regard to the state of a particular art, it is not obvious to a person skilled in that art; in other words, it must not be possible for an average expert to make the invention by mere routine work.
- 3. Industrial Applicability: Invention should be capable of being used or made in the industry. This means that the invention must take practical form of an apparatus or device, a product such as some new material or substance, or an industrial process or method of operation.
Steps for applying for Patent in India are as follows:
1.Prepare a report with the details of your invention: Before we start pitching, we should jot down every detail of our idea or concept which we want to get Patented. This description may consist information like area of invention, description of the invention what it does, how does it work, advantages of the invention etc. For clarity one may include drawings, diagrams or sketches explaining working of invention. This is for our own convenience. Also refer to the inventions that are not Patentable.
- Make a Novelty Search: To make a Novelty search, one has to disclose every minute detail of the invention to the Patent Agent (fees charged varies) by making him sign Non-disclosure agreement. After this he performs an extensive search in all the sources like databases for Patent, articles, thesis and many more for Prior art. He will prepare a report mentioning all the prior art close to your invention. This will help us decide whether to go ahead with Patent or not.
- Filling of Provisional Application: The next step after making Novelty search is to file a Provisional Application. Provisional application contains title and abstract of the invention. Title should indicate the subject matter of the invention and should disclose specific features of the invention whereas Abstract is concise summary of the matter of invention.
The benefits served by filing provisional specification are to you secure the filing date and get 12 months of time to come up with the complete specification, up on expiry of 12 months your patent application will be abandoned.
Filing the provisional specification is the optional step, if we are at the stage where we have complete information about our invention then we can directly go for complete specification
4.Filing of Complete Specification: Complete specification is techno-legal document. Techno means giving complete technical information about the invention and legal means it will provide legal rights to the inventor.
Once we file provisional application, we have 12 months of time to draft complete patent application giving full details of the invention.
The parts of complete specification are Title, Abstract, Summary, Field of invention, Background, Detailed Description, Drawings, Claims.
The Complete Specification is to be submitted in Form-2 along with the Application in Form-1 and other documents, in duplicate, along with the prescribed fee as given in the First Schedule- http://ipindia.nic.in/ipr/patent/patent_formsfees/Fees.pdf
The documents that are required to be submitted for filing Patent Application are
- Form 1- Application for patent.
- Form 2- Provisional/Complete Specification.
- Form 3- Statement and Undertaking of foreign filing documents.
- Form 5- Declaration to Inventorship
- Proof of Right to make an application
- Form 25- The authorization of patent agent
Link to download the Forms- http://ipindia.nic.in/ipr/patent/patent_formsfees/
5.Publication of the application: The next step after filing the Complete Specification is Publication of the Application by the Patent Office in Official Gazette of Indian Patent Office within 18 months from priority date. It can be accessed here- www.ipindia.nic.in
The Application is published with the Particulars like Application number, Date of filing, Title of Invention, Publication Date, International Patent Classification, Name and address of the applicant, Name of the inventor(s), Priority details like priority document number, date, country etc., Reference to Patent of Addition / Divisional Application along with filing date of the parent Application, Abstract, Number of claims and Drawings (if any).
A request for early publication can be made by the applicant using Form 9 (Request for early publication) ( http://ipindia.nic.in/ipr/patent/patent_formsfees/) and depositing fees of Rs. 2500. In such case patent application will get published within one month of date of request.
The purpose behind the Publication is to make the general public aware about the invention and in case any person has an issue with granting of Patent to the Specific person, he has the right to oppose it.
- Pre-grant opposition: After publication, invention is available to public so any person/party interested can file request to Controller and can oppose the patent by writing application to the Controller. Application/ Representation will include statement and evidence in support of opposition and if party wants hearing, he can apply so.
No patent shall be granted before the expiry of six months from the date of Publication of the Application.
On consideration of the opposition, if the Controller thinks that the opposition is devoid of any merit, an opportunity of hearing shall be granted to the opponent, if requested. After hearing the opponent, if the Controller is still of the opinion that the opposition shall be refused, a speaking order shall be issued rejecting the pre-grant opposition, ordinarily within one month.
However, if the Controller is of the opinion that pre-grant opposition has merit and the application shall be refused or amended, a notice is given to the applicant along with a copy of the representation. The applicant shall, if he so desires, give reply to that representation along with his statement and evidence, if any, in support of his application within three months from the date of the notice.
- Examination: Form 18 (http://ipindia.nic.in/ipr/patent/patent_formsfees/) is required to file request for examination. The applicant has to file request for examination within 48 months from priority date (date of filing Provisional application). Examiner will not examine the patent application unless it is published and request for examination is made.
These are the points that are verified by the Examiners:
- They search for anticipation by previous publication or claiming by other person
- They check for criteria of patenting as stated in beginning of this document – novelty, inventive step and industrial application.
- They check that the invention should not fall in non- patentable inventions (Section 3 and Section 4 of Indian Patent Act 1970)
- They check whether the invention is sufficiently disclosed by the inventor and invention describes the best mode of performing the invention.
- They check for unity of invention i.e. all claims of the invention should point towards the single inventive concept.
The first examination report (FER) is prepared by the examiner on the basis of objections. The Controller considers such report within one month from the date of the receipt. The First Examination Report is sent to applicant along with the application regarding the changes that are required to be made. In case there is no objection to the grant of patent and no pre-grant opposition under Section 25(1) is pending, the patent is granted at the earliest.
- Reply to Examination Report: The applicant has to respond to the requirements made in FER within the 12 months of its issuance, otherwise it will be considered abandon.
9. Grant of Patent: The Controller grants the Patent Application if he is satisfied and finds it in order of grant. On grant of patent the controller publishes the fact that the patent has been granted in the Official Gazette.
- Post Grant Opposition: Form 7 can be used for the same purpose. One can oppose the grant of Patent within one year of its grant.
- Maintenance of Patent: The patent is renewed every year from the date of patent. If annual maintenance is not paid then patent right can cease.
Offline Patent applications can be made at the Indian Patent offices in Delhi, Mumbai, Chennai and Kolkata.