Have you invented anything? Or devised a new way of doing things? If yes, then do you wish to protect your invention from theft and duplication? All you have to do is apply for a patent. Before we delve into the procedure of filing patent application, let’s understand ‘what is a patent?’.
Patents are exclusive rights granted to an individual/entity by the Government for the discovery, innovation, or invention of a product or process. To obtain a patent, public disclosure of your invention via a patent application form is mandatory.
A patent granted by the government gives an inventor the exclusive right to make, use and sell his invention. This special right is for a limited period of 20 years from the date of filing. The fundamental idea is to protect the inventions that are created and, therefore, encourage more development.
Patents are an important asset for an organization. Therefore, the innovative strength of an organization can be measured through its patenting activities. Not only the number of patents, but also the quality of the patents makes the corporation more demanding. Granting a patent is a lengthy process that requires multiple checks on the novelty, non-obviousness, and industrial applicability of new products.
Filing a Patent Application with the Indian Patent Office is the first step towards obtaining a patent for your invention in India. To file a patent application, a set of forms must be submitted to the Patent Office. Forms can be submitted online (http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin) if you have Class 3 digital certificate. Alternatively, you can send hard copies to the Patent Office. The Patent Office charges an additional 10% fee if the applications are filed offline.
Patentability of an Invention
Before filing patent application, one must check the patentability of their invention. There will be slight variations in the patentability eligibility criteria based on your jurisdiction. However, the main criteria for patentability are as follows: –
- Total novelty: – The invention should be new with no public disclosures in any part of the globe or through any other platform;
- Non-obvious invention: – No skilled person in the relevant area of technology should be able to decode your invention easily. Your invention should have a distinctive value-adding feature compared to existing inventions in the same field;
- Business or industrial application: – The newly invented product or process should have a wide range of industrial utilities with positive economic implications.
You can also claim a patent for software if it represents a technological advancement that solves a technical problem.
Who may apply for a Patent?
Section 6 of the Indian Patent Act provides for persons entitled to apply for a patent. Any person who is the first and true inventor of an invention is eligible for filing patent application and can apply for a patent in respect of that invention at the Patent Office. However, such right of application may be transferred in favour of an assignee of the first and true inventor of the invention. In such a case, the application must be accompanied by proof of authority to make the application with a declaration that the person making such claim is the first and true inventor of the invention. An application for a patent may also be filed by the legal representative of the deceased person who was entitled to such patent before his death.
Different Types of Applications Filed Under The Indian Patents Act, 1970
Different Types of Applications Filed Under The Indian Patents Act, 1970 are as follows: –
- Provisional Application: – A provisional patent application (PPA) is a document issued by Patent and Trademark Office to help protect a new invention from being copied during the 12-month period before a formal patent application is filed. Its purpose is to give the inventor time to pitch the idea, test its commercial viability, or refine a product before committing to the expensive and time-intensive process of a formal application;
- Ordinary or Non-Provisional Application: – An application filed at the Patent Office without claiming the priority of an application made in a convention country or without reference to any other application under process at the office is called a general application. A typical application should be accompanied by complete specifications and claims;
- Convention Application: – A Convention application is filed to claim a priority date on the basis of a similar or substantially similar application filed in any of the Convention countries. The applicant is required to file an application with the Indian Patent Office within one year from the date of initial filing of a similar application in the Convention country. As per section 135 of the Act, a Convention application is an application made under the Act within 12 months from the date on which the application for a patent is made in respect of an invention in a Convention country (also known as basic application);
- International Application: – An international application is an application that is filed in accordance with the Patent Cooperation Treaty. Such applications provide patent protection in a large number of countries through a single application rather than filing multiple regional applications. Such application is treated as an application for a patent under the Act if it is filed before the Controller in India. The filing date of such application is considered the international filing date under the Patent Cooperation Treaty. The complete specifications include description, images, abstracts and claims filed with the International Application under the Act;
- Divisional Application: – Section 16 of the Act deals with the division of an application. Such an application may be settled either at the will of the applicant prior to the grant of the patent or on the demand of the Controller, the objection raised by him on the ground that the claims of the complete specification pertain to more than one invention. In such case, the applicant may file further application in respect of the invention mentioned in the provisional or complete specification, as the case may be, along with the application already mentioned;
- PCT National Phase Application: – A national stage application is filed in each country seeking protection. The national stage application must be filed within 30 or 31 months from the priority date or the international filing date, whichever is earlier. It is one-time submission to apply for a patent through Patent Cooperation Treaty (PCT) member states. This streamlined process provides patent protection while adhering to the individual needs of each nation. It is dated prior to the original date of filing.
What are the steps involved in Filing Patent Application in India?
The steps involved in a Fliling Patent Application in India are as follows: –
- Conceiving your Invention: – This is the first step for an inventor who wants to proceed with his invention. It is important to collect as much information as possible. Some of the relevant questions the inventor should consider are: What is the scope of the invention, what are its advantages, how will it help improve already existing solutions? Not all inventions are patentable subjects.
Section 3 of the Patent Act provides for subjects which are not patentable. Therefore, while conceiving, it should be clear to the inventor that the invention does not fall under any category that is not patentable.
- Patent Search and Drafting: – After obtaining clarity on the invention, the inventor must conduct a patent qualification search. This is important as it will help in understanding whether the invention is novel or not. All inventions must meet the novelty criteria under the Patent Act. Patent qualification opinion may be scrutinized by conducting a comprehensive search and creating a patent eligibility report.
The patent qualification search identifies the closest possible prior art (known to the public) related to the invention and, based on the results obtained, provides an opinion that may be positive, negative or neutral about the patentability of that invention. Still, one can choose to file an application directly, but a patent qualification search is highly recommended.
The next step is effective drafting of the patent application. The application consists of various parts like claim, background, description, drawing (if any), abstract and summary. All such parts must be carefully prepared to provide effective disclosure of the invention. It is advised that utmost care and accuracy should be exercised while drafting the application.
- Filing the Patent Application: – This is where the real process begins. After the patent application is drafted, it can be filed with the Government Patent Office as per the application form in Form 1. A receipt will be generated with the patent application number. If a person can also file a provisional patent application; The invention is in preliminary stage under Form 2.
The advantage of filing a provisional application is that one can secure an earlier date of filing which is important in the patent world. Also, you get 12 months to file the complete specification. In the case of start-ups and small entities, the application form in Form 28 should be used to file for a patent.
- Publication of the Application: – After filing the complete specification, the application is published after 18 months from the date of filing. There is no special requirement from the applicant for publication. If the applicant does not wish to wait until the end of 18 months, an early publication request can be made by filing Form 9 along with the prescribed fee. Generally, a patent application is published within one month from the request for early publication.
- Rule 24 of the Patent Rules 2003: – The period for which an application for a patent shall not ordinarily be open to the public under sub-section (1) of section 11A, eighteen months from the date of filing of the application or the priority date 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 the said period or one month from the date of request for publication under rule 24A;
- Rule 24A: – The request for publication under sub-section (2) of section 11A shall be made in Form 9. After publication, any person may oppose the grant of a patent through a pre-grant protest. 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, as a protest to the Controller, against the grant of a patent may represent in writing on the grounds specified in section 25(1)(a) to (k). This is known as a pre-grant protest. The controller can decide on merits and inform the applicant about the opposition, after which the applicant is required to submit his answer, and a decision can be taken thereafter.
- Request for Examination: – Unlike publication, the examination is not an automated process and the applicant is required to request the Patent Office to examine the patent application. The general request must be filed within 48 months from the date of filing the application under Form 18. On such request, the controller makes an application to a patent examiner who examines it with various patent eligibility criteria, which are novelty, non-obvious or inventive step, and capable of industrial applicability to provide First Test Report (FER) to the applicant.
The applicant can also file a request for expeditious scrutiny of the application under Form 18A. Rule 24C- An applicant may make a request for expedited examination in Form 18A, together with the fee specified in the First Schedule, by electronic transmission duly certified within the period prescribed in Rule 24B, on any of the following grounds, namely: –
- that India has been indicated as a competent international search authority or has been selected as an international preliminary investigation authority in the relevant international application; or
- that the applicant is a start-up.
- Respond to the Objections: – The applicant has to respond to the objection received from the Patent Office through the first examination report. The applicant is expected to file a written reply to the objection raised in the examination report. The applicant may prove the patentability of the invention and attempt to negate the entire objection being raised. Physical hearing or video conferencing may also be requested, as the case may be.
- Grant of Patent: – After all objections are cleared, the application will be placed for grant after meeting all patent qualification 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 interested person may, by giving notice of opposition to the Controller, file a post-grant protest within 12 months from the date of publication of the grant of a patent. Section 25(2) of the Patents Act 1970 states that at any time after the grant of a patent but before the expiry of a period of one year from the date of publication of the grant of the patent, any person interested may give notice is opposed to the Controller in the prescribed manner on any of the following grounds mentioned in Sections 25(2)(a) to (k).