HOW TO FILE INDIAN PATENT
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| Agency overview | |
|---|---|
| Jurisdiction | Government of India |
| Headquarters | Mumbai, India |
| Agency executives |
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| Parent department | Department for Promotion of Industry and Internal Trade |
| Website | https://ipindia.gov.in |
Intellectual property in India refers to the patents, copyrights and other intangible assets in India.
Government Policy
Indian government approved its first Intellectual Property Rights Policy in May 2016.[1]
Laws
Copyrights
The "Copyright Act, 1957" (as amended by the Copyright Amendment Act 2012) governs the subject of copyright law in India.[2] The history of copyright law in India can be traced back to its colonial era under the British Empire.[3] The Copyright Act, 1957 was the first post-independence copyright legislation in India and the law has been amended six times since 1957.[4] The most recent amendment was in the year 2012, through the Copyright (Amendment) Act 2012.[5]
Trademarks
"Indian trademark law" statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off.[6] Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.[7]
Patents
The Patents Act, 1970[8] were brought into the force on 20 April 1972, and further amendments were carried in 1999, 2002 and 2005.[9] The Patent Rules, 2003 were introduced along with the Patent Act (amendment), 2002 on 20 May 2003,[10] and recent amendments were carried in 2016, and 2017. The Patents (Amendment) Rules 2016 mainly focused on expediting the grant process, benefits to startup, and increase in official fees.[11]
Authority
The Intellectual Property India is administered by the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM). This is a subordinate office of the Government of India and administers the Indian law of Patents, Designs, Trade Marks and Geographical Indications.[12]
- Step 01: Invention disclosure. ...
- Step 02: Patentability search. ...
- Step 03: Decision to file an application for patent. ...
- Step 04: Patent drafting. ...
- Step 05: Filing the patent application. ...
- Step 06: Request for examination. ...
- Step 07: Responding to objections (if any)
One can file the Patent application in the Indian Patent Office by two ways:
a. Online Patent filing :
also known as online Patent registration, can be performed through Indian Patent Office’s Electronic Patent filing application known as e-service portal.
. Offline Patent filing :
Apart from performing Patent filing online, one can also file a Patent through offline method, where one needs to submit hard copies to the respective Patent Office. However, the official fee for filing offline Patent Application is 10 % more compared to the official fee ofonline patent registration
mode.Requirements
- Digital signature : Class III digital signature
https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf
Intellectual Property has always played an increasingly significant role in today’s technology-driven society. Patents are an important asset for an organization. Hence, the innovative strength of an organization can be measured through its patenting activities. Not just the number of patents, it's also the quality of patents that makes the corporation more demanding. Grant of a patent is a long process that entails multiple checks on novelty, non- obviousness, and industrial applicability of the invention.
A patent, granted by the government, gives an exclusive right to an inventor to make, use, and sell his invention. This exclusive right is for a limited period of 20 years from the date of filing. The fundamental idea is to safeguard the inventions that are created and therefore, encourage more developments. Let us look into the steps involved in a patent filing in India.
What is a patent
A patent is a legal document that is granted by the government of the state or the country, depending on the national rules. It gives an inventor of a particular thing, the exclusive right to make, use and sell his or her creation for a specified period of time.
The basic idea of this system is to encourage the inventors to safeguard their own creations. Books, movies, and some artworks cannot be patented. However, one can protect these assets under the law of copyright. The law of patent is one branch of the larger legal field known as intellectual property, which also includes trademark and copyright law.
What inventions are patentable
For any asset or an invention to qualify for a patent, it must meet three basic requirements:
- It must be novel and one of its kind. This means that the particular invention must be new and there should not be any existential trace of it
- It must be unique in itself. An improvement in the current technology by an individual cannot be patented
- It must be useful. It should add value to the life of the common man and it must not benefit or support the use of illegal things or must not be used for any immoral purpose
Some types of inventions (or discoveries) like Issac Newton’s law of gravity or Albert Einstein’s formula for relativity do not qualify to for this. Simply
Step 1: Conceiving your Invention
This is the first step for an inventor who wants to go ahead with his or her invention. It is important to collect as much information as possible. Some of the pertinent questions that the inventor must think through are: what is the field of the invention, what are the advantages, how will it help in improving already existing solutions? Not all inventions are patentable subject matter. Section 3 of the Patents Act provides those subject matter which are not patentable. Therefore, while conceiving, the inventor must be clear that the invention does not fall under any of such categories which are not patentable.
What inventions are non-patentable
Even though the idea of a patent is to safeguard the maker’s creation, there are certain things that do not qualify for this according to the Indian law (section 3 and 5 of Indian Patents Act, 1970):
- Any method of agriculture or horticulture
- Any process under the bracket of medicinal, surgical, curative or other treatment of human being, animals or plants
- An upgrade or discovery of anything that relates to atomic energy
- Discovery of unique machine, apparatus or a process
After getting clarity over the invention, the inventor must do a patentability search. This is important since it will help in understanding whether the invention is novel or not. All inventions must meet the novelty criteria under the Patents Act. The patentability opinion can be examined upon conducting an extensive search and forming a patentability report. The patentability search identifies the closest possible prior arts (known to the public) relating to the invention and based on the results obtained, an opinion about the patentability of that invention may be provided which can be positive, negative, or neutral. Nevertheless, one can choose to directly file the application, but a patentability search is highly recommended.
The next step which follows is effective drafting of the patent application. The application consists of various parts such as Claims, Background, Description, Drawing (if any), Abstract, and Summary. All such parts must be carefully drafted to provide effective disclosure of the invention. It is advised that utmost care and precision must be taken while drafting the application.
Step 3- Filing the Patent Application
This is where the actual process starts. After drafting the patent application, this can be filed in the government patent office as per the application form in Form 1. A receipt would be generated with the patent application number. One can also file a provisional patent application, in case; the invention is at an early stage under Form 2. The benefit of filing a provisional application is that one can secure a prior date of filing which is crucial in the patent world. Also, one gets 12 months to file the complete specification. In the case of start-ups and small entities, the application form in Form 28 must be used to file for patents.
Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai. The patent application has to be filed in the appropriate office based on your/your company's location.
- Visit the Comprehensive e-filing portal.
- Please remember to do the following.
- Fill the registration form. If a user is already registered s/he can log in using the User ID and Password or Digital signature. ...
- Once logged in, the users can file their applications using the "Quick form filing" option.
https://ipindia.gov.in/form-and-fees.htm
What are the documents and information required for filing a national phase/ convention application in India?
The documents and information which are required for filing a national phase or a convention application are summarized in the table below:
| S. No. | Document/ Information | When is it required | Can it be submitted later? |
| 1 | Complete specification (in English) | Along with the application | No extensions are available for filing the complete specification at a later date |
| 2 | Drawing(s) | Along with the application | No extensions are available for filing the drawings at a later date |
| 3 | Name, address and nationality of inventors' | Along with the application | No; although inventor(s) may be added/ removed subsequently by filing a request |
| 4 | Name, address and nationality of applicants) | Along with the application | No; although applicant(s) may be added/ amended subsequently by filing a request |
| 5 | Power of Attorney (To be filed in case the application is filed by a patent agent) | Within 3 months of the application date | Yes, an extension may be obtained by filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit. |
| 6 | Assignment Deed or Application Form endorsed by the inventor (if the inventors are not the applicants) | Within 6 months of the application date | Yes, an extension may be obtained by filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit. |
| 7 | Details of corresponding applications filed in other countries (Information and undertaking under Section 8) | Within 6 months of the application date | Yes, an extension may be obtained by a filing a request for extension before the expiry of the time limit or by filing a petition after the expiry of time limit. |
| 8 | Verified English translation of the Priority application (required for convention applications) | Within 3 months of priority date | No extensions are available |
| 9 | Verified English translation of the PCT application (required only for national phase applications) Agent can verify the English translation of PCT application on behalf of the applicant. | Within 31 months of priority date | No extensions are available |
| 10 | Certified copy of the priority application, if requested by the Controller (required usually for convention applications, but may also be requested for national phase application in case the priority document was not submitted with the International Bureau) | Within 3 months of request by the Controller | No extensions are available |
| 11 | Sequence listing in computer readable text format (if any) (no print form is required to be submitted) | Along with the application | No extensions are available |
| 12 | Permission from National Biodiversity Authority (in case any Biological material used in the invention is from India) | Permission must be requested for before applying for the patent | The permission may be submitted after filing of the patent application but before grant. |
| 13 | Microorganisms must be deposited with International Depository Authority (In case microorganisms are used that are not available to public and cannot be appropriately described) | Before filing of the application | The accession number (identification number) may be included in the specification within 3 months from the date of filing of the application. In case a request for publication is filed, then accession number must be included before filing of such a request for publication. |
Step 4- Publication of the Application
After filing the complete specification, the application is published after 18 months from the date of filing. There is no need for any special requirement from the applicant for publication. In case, the applicant does not want to wait till the expiry of 18 months, an early publication request can be made along with prescribed fees by filing Form 9. Generally, the patent application is published within one month from the request of early publication.
Rule 24 of the Patent Rules 2003- The period for which an application for patent shall not ordinarily be open to the public under sub-section (1) of section 11A shall be eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier. Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of the request for publication under rule 24A.
Rule 24A- A request for publication under sub-section (2) of section 11 A shall be made in Form 9. After publication, any person may oppose the grant of a patent by way of the pre-grant opposition. Section 25(1) of the Patents Act 1970 states that where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of a patent on the grounds stated in Sections 25(1)(a) to (k). This is known as pre-grant opposition. The controller can decide on the merits and can notify the applicant regarding the opposition, after which the applicant needs to submit his or her reply, and a subsequent decision can be taken thereof.
Step 5- Request for Examination
Unlike the publication, the examination is not an automatic process and the applicant is required to request the patent office to examine the patent application. The normal request must be filed within 48 months from the date of filing of an application, under Form 18. Upon such request, the controller gives the application to a patent examiner who examines it with different patentability criteria, which are novelty, non-obviousness or inventive step, and capable of industrial applicability thereby, providing the applicant with the First Examination Report (FER). The applicant can also file a request for expedited examination of the application under Form 18A. Rule 24C- An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or (b) that the applicant is a startup.
Step 6- Respond to the Objections
The applicant needs to respond to the objection received from the patent office by way of the First Examination Report. The applicant is expected to file a written response to the objection raised in the examination report. The applicant can prove the patentability of the invention and try negating the entire objection being raised. Physical hearing or video conferencing can also be requested, as the case may be.
Step 7- Grant of Patent
After addressing all objections, the application would be placed for a grant once it is found to be meeting all patentability requirements, and finally, the patent will be granted to the applicant. The grant of a patent is notified in the patent journal which is published from time to time.
Any person interested may file a post-grant opposition within 12 months from the date of publication of the grant of patents, by providing a notice of opposition to the controller. Section 25(2) of the Patents Act 1970 states that at any time after the grant of patent, but before the expiry of a period of one year from the date of publication of the grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds stated in Sections 25(2)(a) to (k).
recap
Steps for application of patent
You can choose to apply for a patent all by yourself or take help from registered agents. When it comes to the cost of getting a patent, the following two elements come into the picture:
- Government fees for forms and renewals
- If you choose to have an agent, then the charges for the professional
It is always recommended to get a patent through a registered agent. Here are the steps required to apply for a patent:
Step 01: Invention disclosure
The first step is to disclose your invention to the professional. This is done by signing a non-disclosure agreement.
Pro-tip: It is recommended to submit each known fact about your invention. Do not hold anything back.
Step 02: Patentability search
Usually, a professional charges a fee (approx INR 10,000 to INR 20,000) at this step. At this stage, your professional performs extensive research for prior evidence in all the possible databases. Further, he or she builds a patentability search report based on your invention.
Step 03: Decision to file an application for patent
This is where the actual process begins. After detailed research about (any) existing history of your invention, you can decide if you want to go ahead with the patent application filing.
Please note: Your invention must have an ‘inventive step’ as compared with existing prior art pieces to qualify for a patent. It must have either ‘technical advanced’ or ‘economically significant’ or both, over any existing piece of arts.
The step where you decide to go ahead with the filing process by writing an application is called patent drafting.
Step 04: Patent drafting
You can choose to draft the application on your own or take a professional’s help to do this. If you choose to take help, you might have to pay somewhere around INR 20,000 to INR 30,000.
Please note: This is one of the most crucial steps of the entire process. It requires both technical and legal understanding. If not drafted the right way, all the efforts you out in gets wasted. Hence it’s a good idea to take professional help here.
Step 05: Filing the patent application
After you are done with a review of your patent draft and are satisfied with the scope and details, you are ready to file for a patent.
You can file the patent application in a prescribed manner with appropriate forms with fees. You need to pay fees of INR 1,600 or 4,000 or 8,000 (based on the type of application) while submitting the patent application in the patent office. If you do not file a request for early publication, the patent application will be published on expiry of 18 months.
Step 06: Request for examination
This is the step where the applicant is required to request the Indian patent office to examine your patent application, within 48 hours. Request for examination fees ranges from INR 4,000 to INR 20,000 (based on the type of applicant).
Step 07: Responding to objections (if any)
The draft and the report submitted to the officers in the patent office are thoroughly examined at this step. At this step, there is a chance for the inventor to communicate his novelty or inventive step over any other piece of art found during the assessment. If all the things are well clarified and solved, the patent application is almost ready to come to action.
Step 08: Grant of patent
If the application meets all the prescribed requirements, it is placed in order for the grant. Usually, the final grant of the application is notified through a journal that is published
Step 09: Renewal of your patent
Usually, a patent is in force for 20 years. On completion of 20 years, the owner is required to renew the patent by paying a small fee.
Benefits of getting a patent
- Prevents theft of your invention
- The freedom of exclusivity
- Easy to build a merchandise and commercialize
- Higher market share since your idea becomes a brand
- More monetary value and higher profit margins
Although the entire process of filing a patent is long and complex, one must remember the importance it has. With digital advancements, it is probable that the process might get simplified and easy.
Having a patent in place ensures that no individual can claim rights over your invention. If at all there happens to be an infringement, you can take help from legal bodies and avoid the problems that can prove to be a hurdle in your growth.
References
- ^ "Cabinet approves Intellectual Property Rights policy", The Hindu, 13 May 2016
- ^ http://copyright.gov.in/
- ^ Arul George Scaria, Piracy in the Indian Film Industry: Copyright and Cultural Consonance (Cambridge University Press 2014) 47-53
- ^ Jatindra Kumar Das, Law of Copyright (PHI Learning Private Ltd. 2015) 88
- ^ http://www.wipo.int/wipolex/en/details.jsp?id=13230 (WIPO Lex)
- ^ Narayanan, P. (2004). Law of Trade Marks and Passing off(6th ed.). Kolkata: Eastern Law House. p. 3. ISBN 9788171772322.
- ^ "DIPP under Ministry of Commerce and Industry".
- ^ "Indian Patent System".
- ^ "Amendments in Patent Act - Overview & Comparison".
- ^ "WIPOLex". wipolex.wipo.int. Retrieved 17 March 2019.
- ^ "The Patents (Amendment) Rules 2016" (PDF).
- ^ "About Us | Intellectual Property India". www.ipindia.nic.in. Retrieved 23 February 2019.
REF
(The writer is an Associate with Khurana & Khurana Advocates and IP Attorneys, a leading IP and Commercial law firm in India with presence internationally across countries.)
By , ET CONTRIBUTORS
https://razorpay.com/learn/apply-for-patent-in-india/
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An invention can be registered for a patent in India. Patents are rights granted by the government to an individual or enterprise that prevent others from making, using, selling, or importing patented products or processes.
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