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Frequently Asked Question – Patent


1) WHAT IS THE PATENTABILITY CRITERIA?
In order to get a patent granted for an invention (whether process or product), it needs to meet the following patentability criteria in India:

  • Novelty (New/Novel)

An invention is considered novel or new, if it has not been anticipated in India or elsewhere in the world by publication in any document, oral disclosure, claimed in any claim of prior filed complete specification or available within any local or indigenous community. The subject matter of the invention should not fall in the public dom            ain or does not form part of the state of the art.

The novelty of an invention is destroyed if it is anticipated by the prior publication, prior use or prior public knowledge.

  •  Inventive Step (Non-Obviousness)

An inventive step means a feature of an invention that involves technical advancement and/or economic significance or both and that makes the invention not obvious to person skilled in the art.

It is pertinent to note that if an invention lies merely in verifying previous predictions, without substantially adding anything for advancement in the art, the inventive step is lacking.

The combination of teachings from mosaic of prior art documents is permissible, while assessing the inventive step.

  • Capable of Industrial Application (Industrial Applicability)

An invention should be capable of being made and used in the industry.

Therefore, it is advisable that the innovator or applicant should not disclose his invention by launching or offering for sale (online or through any other available mode), discussing with manufactures or vendors, displaying in exhibitions or technical fair or symposium, publishing in newspapers or journals or books or any other print media anywhere in the world before date of filing the patent application for his invention.

2) ARE CERTAIN INVENTIONS CONSIDERED AS NON-PATENTABLE?
Yes, certainly inventions falling under section 3 and 4 of Indian Patents Act are considered non-patentable subject matter, even though such inventions are patentable. These are mentioned below:

  • frivolous inventions;
  • commercial exploitation which is contrary to law, injurious to public, animal or plant life or health; violates norms of public order or morality;
  • mere discovery/formulation of: a scientific principal, abstract theory or living/ non-living things occurring in nature;
  • mere discovery of new form of known substance without enhanced efficacy or mere discovery of a new property or a new use for known substance;
  • mere admixture resulting in aggregation of properties of its components or process for producing the said admixture;
  • mere arrangement or rearrangement or duplication of known devices each functioning independently;
  • method of agriculture or horticulture;
  • Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment;
  • plants and animals in whole or any part thereof;
  • mathematical or business method or a computer program per se or algorithms;
  • literary, dramatic, musical or artistic work or any other aesthetic creation;
  • scheme or rule or method of performing mental act or method of playing game;
  • presentation of information;
  • topography of integrated circuits;
  • traditional knowledge; and
  • inventions relating to atomic energy.

3) HOW CAN IT BE DETERMINED WHETHER AN INVENTION IS PATENTABLE?
In order to ascertain patentability of an invention (or concept), an inventor may conduct a preliminary prior art search on available databases; a few links are given below for quick reference. However, it is always advisable to get the prior art search done by an expert. You can contact us for assistance in this regard.

4) WHO CAN APPLY FOR A PATENT?
Any of following persons, either alone or jointly with any other person, can file an Application for a Patent for an invention:

  • True and first inventor;
  • True and first inventor’s assignee; or
  • Legal representative of deceased true and first inventor or his/her assignee

5) WHERE CAN AN APPLICATION FOR PATENT BE FILED IN INDIA?
In India, the Indian Patent Offices are located at New Delhi, Mumbai, Chennai and Kolkata. Appropriate, territorial jurisdiction is determined on the following basis:

  • Place of residence, domicile or business of the applicant;
  • Place where the invention actually originated; and
  • Address for service in India for Foreign applicants.

6) WHAT ARE VARIOUS TYPES OF APPLICATIONS?

  • Ordinary Application

An application for grant of a patent filed with the Patent Office without claiming priority of a convention application or without any reference to any other application is called an ordinary application.

Ordinary application can be filed by applicant of Indian origin or from abroad by a foreign applicant.

  • Provisional Application and Complete Specification

Provisional specification or application is filed in order to secure a priority date over concurrently developing similar/ same inventions, when the invention has not attained final stage or is just on conceptual stage.

Complete Specification is required to be filed within 12 (twelve) months from the date of filing of the provisional specification, otherwise the application is deemed to be abandoned.

  • Convention Application

An application for grant of a patent filed with the Patent Office claiming priority of a convention application, disclosing same or substantially similar invention is called a convention application.

A convention application is required to be filed within 12 (twelve) months from the earliest priority date with the Indian Patent Office.

The priority document and verified English translation (in case priority application is in language other than English) is required to be filed within 3 months from the date of filing the application in India or as directed by the Controller.

  • PCT International Application

A patent application filed either with the International Bureau (IB)- WIPO or Receiving Office (RO), under the Patent Corporation Treaty (PCT), is called a PCT International Application. The deadline to file PCT International Application is 12 (twelve) months from the earliest priority date.

The filing of the PCT International Application (under Patent Corporation Treaty) defers the time limit to 30 or 31 months from earliest priority application for entering the PCT contracting states, which in turn defers the filing cost. Otherwise, applicant has to file patent application in various nations (where he wishes to have patent rights) within 12 months from the date of earliest priority.

  • Divisional Application

According to the provisions of the Indian Patents Act, an application should claim only a single inventive concept i.e. having unity of the invention.

When an application for a patent claims plurality of the distinct inventions, the applicant, either of his own accord or to address official objections, may divide the application and file separate applications for each of the inventions. Such applications are termed as divisional applications.

  • Patent of Addition

Patent of Addition is filed for an improvement or modification of the invention for which an application for patent is already filed or has obtained a patent. The term of the patent of addition is equal to the term of the parent patent.

No renewal fee is payable in respect of a patent of addition so long as the parent patent remains in force.

7) IN WHICH LANGUAGE CAN AN APPLICATION FOR PATENT BE FILED WITH THE INDIAN PATENT OFFICE?
Specification and other documents or copies of the documents which are required to be furnished with the India Patent Office, should be either in English or Hindi language.

8) DOES, THE INDIAN PATENT OFFICE ACCEPT PATENT APPLICATIONS THROUGH PHYSICAL FILING ONLY?
The Indian Patent Office also provides the facility of filing the patent applications and other relevant documents or forms through comprehensive e-filing portal of the Patent Office. It is also pertinent to note that 10 % additional fee is required to be paid when applications for patent and other documents are filed through physical mode.

9) DOES, THE SEQUENCE LISTING/ NUCLEIC ACID SEQUENCE CONSTITUTE PART OF THE COMPLETE SPECIFICATION?
Yes, sequence listing / nucleic acid sequence constitutes part of the complete specification.

10) WHAT ARE THE REQUIREMENTS TO BE COMPLIED WITH IN CASE THE INVENTION PERTAINS TO A BIOLOGICAL                       MATERIAL?
When an invention is disclosing a biological material and such material is not available to the public, the applicant has to submit the disclosed material to an International Depository Authority. Such deposit should be made before the date of filing of the patent application in India, and reference to the said deposit should be made within three (3) months from the date of filing of the application.

Microbial Culture Collection (MCC), Maharashtra and Microbial Type Culture Collection and Gene Bank (MTCC), Chandigarh are recognized International Depository Authorities in India.

11) WHAT ARE THE RIGHTS CONFERRED ON AN APPLICANT WHEN AN APPLICATION FOR A PATENT IS PUBLISHED BY A           PATENT OFFICE?
As per the provisions of the Indian Patents Act, an application for a patent is published in the official journal of the Patent Office within one month from the expiry of 18 months from the date of filing of the application or earliest priority date, whichever is earlier.

On and from the date of publication of the application for patent until the date of grant of a patent in respect of such application, the applicant will have like privileges and rights as if the patent for the invention has been granted on the date of publication of the application, except that the applicant shall not be entitled to institute any proceedings for infringement until the patent is granted.

Where an application for a patent has been published but a patent has not been granted, any person may file a representation by way of opposition to the Controller of Patents against the grant of the patent on the grounds provided in the Indian Patents Act.

12) WHAT ARE CIRCUMSTANCES UNDER WHICH AN APPLICATION FOR PATENT IS NOT PUBLISHED IN THE OFFICIAL                  JOURNAL?
In the following circumstances, a patent application is not ordinarily published in the Official Journal:

  • Secrecy directions under Section 35 are in force;
  • Application is deemed abandoned if complete Specification not filed within twelve months from the date of filing of Provisional Specification; or
  • If the application is withdrawn three months prior to the publication period.

13) CAN A REQUEST FOR EARLY PUBLICATION BE FILED WITH THE INDIAN PATENT OFFICE?
Yes, a request for early publication on Form 9 along with the prescribed official fee can be filed with the Indian Patent Office. In such a case, the application is published within one month from the date of said request.

14) IS IT MANDATORY TO FILE A REQUEST FOR EXAMINATION WITH THE INDIAN PATENT OFFICE AND WHAT IS                            DEADLINE TO FILE SUCH A REQUEST?
Indian Patents Act mandates the applicant to file a request for examination with the Indian Patent Office within 48 months from the earliest priority date. If no such request for examination is filed within the prescribed time limit, the application shall be treated as withdrawn by the applicant.

15) WHO CAN FILE A REQUEST FOR EXAMINATION?
An applicant or person interested may file a request for examination with the Indian Patent Office. When a request for examination is filed by person interested, the examination report is sent to the applicant and an intimation in this regard is provided to the person interested.

According to the Indian Patens Act, person interested means a person engaged in or in promoting research in the same field to which the invention relates.

16) IS THE OFFICIAL FEE PAID FOR REQUEST FOR EXAMINATION REFUNDED IF THE PATENT APPLICATION IS                                  WITHDRAWN?
Yes, 90 % of the official fee paid for request for examination or expedited examination is refunded when a request to withdraw the application is filed before the issuance of first examination report by the Indian Patent Office.

17) CAN, THE DEADLINE FOR FILING A RESPONSE TO THE FIRST EXAMINATION REPORT BE DEFERRED?
Yes, the Patents (Amendment) Rules 2016, have a provision for filing request for extension of time, up to a maximum of three months to submit response to the objections raised in the First Examination Report (FER). However, the said request is required to be filed before the expiry of actual time limit for responding to the FER.

18) CAN, A PATENT BE RESTORED?
Yes, a patent lapsed due to non-payment of renewal fee can be restored by filing a request for restoration of patent within eighteen (18) months from the date on which patent ceased to have an effect. The request for restoration is published in the official journal of the patent office and any person interested may file a notice of opposition to restoration of patent within two (2) months from the date of such publication.

19) WHAT IS THE TERM OF A PATENT?
The term of a patent is 20 years from the date of filing of the application in India or date of filing of PCT International Application, provided that the renewal fee is paid every year before the due date or within the extended period (maximum six months).

20) WHAT RIGHTS ARE PROVIDED TO THE PATENTEE UPON GRANT OF A PATENT IN INDIA AND ARE SUCH RIGHTS                       ENFORCEABLE IN OTHER COUNTRIES AS WELL?
The patentee can enjoy the following exclusive rights upon grant of a patent for his invention:

  • Patented Product: exclusive right to prevent third parties, from the act of making, using, offering for sale, selling or importing for those purposes that product in India.
  • Patented Process: exclusive right to prevent third parties, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.

21) WHAT ARE THE POST GRANT COMPLIANCES UNDER THE ACT?
The Patents Act and Rules provides that the Controller, at any time during the continuance of the patent, has the power to call for information as to the extent to which the patented invention has commercially worked in India. It is also obligatory on the part of the Patentee and every licensee (whether exclusive or otherwise) to furnish such information in respect of every calendar year by 31st March of the following year.

22) WHAT ARE THE PENALTIES WHEN PATENTEE REFUSES OR FAILS TO PROVIDE DETAILS OF COMMERCIAL WORKING            OF THE PATENTED INVENTION IN INDIA OR PROVIDES FALSE INFORMATION ?
If patentee refuses or fails to provide Statement of Working of the Patented Invention on Commercial Scale in India, he shall be punishable with fine which may extend to INR one million.

However, if he provides false information in this regard, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.

23) DOES THE INDIAN PATENTS ACT MANDATE SEEKING THE FOREIGN FILING LICENSE (FFL)? WHAT ARE THE                              CONSEQUENCES OR PENALTIES IN CASE SUCH PERMISSION OR LICENSE IS NOT SOUGHT?
Yes, it is mandatory to seek the FFL wherein:

  • a person is residing in India during the development of an invention and he wishes to file the application for the same invention first outside India; or
  • applicant wishes to file application outside India for which application has already filed in India, before the expiry of six months from the date of filing of the said application in India.

In case the applicant does not comply with the aforesaid requirement, he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

24) DOES INDIAN PATENTS ACT HAVE A PROVISION OF PRE-GRANT OPPOSITION?
Yes, after publication of a patent application but before the grant of a patent, any person may file a represent by way of Pre-Grant Opposition against grant of a patent with the Indian Patent Office on the following grounds:

  • Wrongfully obtained;
  • Prior publication / prior claim;
  • Prior claim in India;
  • Prior public knowledge or public use in India;
  • Obviousness and lack of inventive step;
  • Not an invention or the invention not patentable;
  • Insufficient description of the invention;
  • Failure to disclose information or furnishing false information relating to foreign filing;
  • Convention application not filed within the prescribed time of 12 months;
  • Incorrect mention of source/geographical origin of biological material; and
  • Invention anticipated with regard to traditional knowledge of any community.

Grounds other than afore-stated statutory grounds are not permissible for pre-grant opposition. No appeal can be filed with the Appellate Board against the order of the Controller in pre-grant opposition.

25) DOES INDIAN PATENTS ACT HAVE A PROVISION FOR POST-GRANT OPPOSITION?
Yes, any person interested may file a notice of Post-Grant Opposition with the Indian Patent Office, within one year from the date of publication of grant of a patent on the following grounds:

  • Wrongfully obtained;
  • Prior publication / prior claim;
  • Prior claim in India;
  • Prior public knowledge or public use in India;
  • Obviousness and lack of inventive step;
  • Not an invention or the invention not patentable;
  • Insufficient description of the invention;
  • Failure to disclose information or furnishing false information relating to foreign filing;
  • Convention application not filed within the prescribed time of 12 months;
  • Incorrect mention of source/geographical origin of biological material; and
  • Invention anticipated with regard to traditional knowledge of any community.

The grounds other than afore-stated statutory grounds are not permissible for post-grant opposition.

26) WHO CAN FILE REQUEST FOR COMPULSORY LICENSE ON A PATENTED INVENTION AND WHEN?
Any person interested can file a request for Compulsory License after expiry of three years from the date of grant of Patent in India.

27) WHAT ARE GROUNDS ON WHICH A REQUEST FOR COMPULSORY LICENSE (CL) ON A PATENTED INVENTION CAN BE              FILED?
The grounds for Compulsory License are as follows:

  • Reasonable requirements of public not met with respect to the invention;
  • Invention not available to the public at reasonably affordable price; and
    • Invention not worked in the territory of India.

28) WHAT IS SMALL ENTITY CRITERIA?
As per the Micro Small Medium Enterprise (MSME) Development Act, 2006, the criteria for Small Entity is as follows:

  • In case of an enterprise engaged in the manufacture or production of goods, the investment in plant and machinery does not exceed Rupees One Hundred Million i.e. INR 100,000,000.
  • In case of an enterprise engaged in providing or rendering of services, the investment in equipment does not exceed Rupees Fifty Million i.e. INR 50,000,000.

For calculating the investment in plant and machinery, the cost of pollution control, research and development, industrial safety devices and such other items as may be specified by the notification, shall be excluded.

29) HOW CAN AN APPLICANT FILE A REQUEST FOR MSME REGISTRATION OR UDYOG AADHAAR?
The Applicant may apply for an Udyog Aadhaar at: http://udyogaadhaar.gov.in/UA/UAM_Registration.aspx

30) DOES INDIAN PATENT SYSTEM PROVIDE ANY BENEFITS TO THE APPLICANT BELONGING TO SMALL ENTITY?
Yes it certainly does. The official fees applicable for applicants qualifying for the small entity criteria as specified in MSME Development Act, 2006 and having MSME registration Certificate or Udyog Aadhaar No., is substantially less than for other than Small Entity.

31) HOW CAN AN APPLICANT CLAIM OFFICIAL FEE BENEFIT PROVIDED TO A SMALL ENTITY?
In order to claim the official fee benefit under the Small Entity category, a request on Form 28 is required to be filed: a) prior to submitting any form or fee in case of subsequent filings; and b) alongwith application for grant of a patent in case of new application filing.

The following relevant documents in support of Small Entity need to be filled:

  • Indian Entities/ Applicants– MSME Registration Certificate or Udyog Aadhaar.
  • Foreign Entities/Applicants– Declaration duly executed by the applicant, stating that the applicant qualifies for the Small Entity criteria as specified in the MSME Development Act, 2006.

32) WHAT IS START UP CRITERIA?
Start-up means an entity, incorporated or registered in India:

  • Not prior to seven years, however for Biotechnology Startups not prior to ten years,
  • With annual turnover not exceeding INR 250 million in any preceding financial year; and
  • Working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property.

Provided that such entity is not formed by splitting up, or reconstruction, of a business already in existence.

Provided also that an entity shall cease to be a Start-up if its turnover for the previous financial years has exceeded INR 250 million or it has completed 7 years and for biotechnology startups 10 years from the date of incorporation/ registration.

Provided further that a Start-up shall be eligible for tax benefits only after it has obtained certification from the Inter-Ministerial Board, setup for such purpose.

33) HOW CAN AN APPLICANT FILE A REQUEST FOR A START UP CERTIFICATE?
The Applicant may apply for Certificate of Recognition by DIPP and Inter-Ministerial Board of Certification at:
http://startupindia.gov.in/startup-recognition.php

34) DOES GOVERNMENT OF INDIA (GOI) PROVIDE ANY BENEFITS IN FILING PATENT APPLICATIONS TO THE INDIAN                     APPLICANTS BELONGING TO START UP?
Yes, GoI does provide benefits to Start Ups in filing Patent Application in India, under the Scheme for Facilitating Start-ups Intellectual Property Protection (SIPP).

The facilitators are empanelled by the Controller General of Patent, Trademark and Design (CGPDTM). The facilitators will assist the start up as per the provisions specified in the Scheme. The Start-Ups are required to bear the official fee pertaining to filing and prosecuting the patent application as prescribed in the Indian Patents Act. The applicable fee for Start-Ups is that of Individuals/Natural Persons.

For any further query, please contact: Mr. Sanjay Chhabra at schhabra@archerangel.com

The FAQs are intended as a general overview and not as a substitute for taking legal advice in specific situation. Archer & Angel will not take any responsibility for any actions taken or not taken on the basis of these FAQs.

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