In India, the law governing patents is the Patents Act, 1970. In India’s continued efforts to comply with its commitment under TRIPS, the Patents Act has been amended thrice since 1995, by the Patents (Amendment) Act, 1999, the Patents (Amendment) Act, 2002 and Patents (Amendment) Act, 2005. Prior to the Third Amendment, the President of India had promulgated Patents (Amendment) Ordinance, 2004 (“Ordinance”), which was later replaced by the Third Amendment. The legislation is supported by the Patents Rule, 2003 (“Rules”), which were recently amended in 2016. The following outlines the current Indian patent law framework.
Which Inventions are Patentable?
Not all innovations are “inventions” within the definition of the Patents Act. The term “invention” is defined under Section 2(1) (j) of the Patents Act as “a new product or process involving an inventive step and capable of industrial application”.
Novelty – If the invention was known or used by any other person, or used or sold by the applicant to any person in India and/or outside India, then the applicant would not be entitled to the grant of a patent. Public use or publication of the invention will affect the validity of an application in India. The patent application must be filed prior to any publication or public use (though there is a 12-month grace period). Patent rights are essentially territorial in nature, the criteria of novelty and non-obviousness are to be considered on/compared with prior arts on a worldwide basis.
Inventive Step – The Patent Act, under Section 2(1) (ja) defines ‘Inventive Step’ as “means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. Therefore, for an invention to be non-obvious/have an inventive step, it should involve, technical advance when compared to the existing knowledge; having economic significance; or both and such an invention should not be obvious to a person skilled in the art.
Industrial Application – The Act defines ‘capable of industrial application’ in relation to an invention as capable of being made or used in an industry or can be reproduced with the same characteristics as may be necessary.
Inventions that are ‘not’ Inventions
Section 3 of the Patents Act enlists the innovations that are not classified as “inventions” within the meaning of the Act, like a method of agriculture or horticulture; mere discovery of any new property/known substance/known process, an invention which is frivolous or claims anything contrary to the established laws etc. By the Second Amendment, there have been a lot of additions to the list for example, a mathematical or business method, topography of integrated circuits etc.
Who can be an Applicant of filing a Patent?
It is on a first-to-apply basis. The application can be made either by the inventor or the assignee or legal representative of the inventor. Foreign applicants are given national treatment.
Process of Registration
There are seven types of applications that may be filed in the Indian Patent Office:
Ordinary application or non-provisional application
Pct international application
Pct national phase application
Patent of addition
The procedure for filing and obtaining patents in India is as below:
On the date the application is filed, it is numbered. Generally, within a month of filing the application, the Patent Office sends a preliminary objection letter, which has to be complied with within a specified time limit.
The application is published in the Official Gazette and is open to the public after 18 months from the date of filing of application or the date of priority of the application, whichever is earlier.
Then, a request for examination is to be filed by the applicant or any other interested person within 36 months from the date of priority or filing of the patent application, whichever is earlier.
Within 3 months from the date of publication or before the grant of patent whichever is later - any person may file opposition on limited grounds. Opposition is considered only when request for examination filed. The Examiner of Patents is required to issue a First Examination Report, within one month but not exceeding three months. This Report raises various substantive and procedural objections. The applicant has to comply with the objections to put the application in order for acceptance within 6 months from the date of the Report (can be extended for 3 months). If the Applicant complies with objections raised within the required timelines, the Controller if required, will schedule a hearing and decide on the grant or rejection of the patent. If not, the application is deemed to have been abandoned. If granted, within 1 year from the date of publication of grant of a patent, any person interested may file an opposition on the grounds enlisted in Section 25(3) of the Act.
Every patent granted under the Act shall be dated as of the date on which the complete specification was filed. The Second Amendment prescribed a uniform term of 20 years (there is no provision for extension) from the date of filing the patent application in India for all categories of patents in compliance with Article 33 of TRIPS.
Cost of filing a patent application
The cost of filing a patent application for an individual is INR 1750/- and request for examination is INR 4400; whereas for online filing it is INR 1600/- and INR 4000/- respectively (digital signature is must).
Can a Patent be surrendered?
Yes, at any time by giving a notice to the Controller in the prescribed manner a patent can be surrendered.
Assignment/Mortgage/License of Patent, whether possible?
Yes, only if specified conditions listed under the Act are satisfied.
How can a Patent be cancelled or revoked?
Either the Intellectual Property Appellate Board (IPAB) by way of a revocation application or the High Court by way of a counterclaim in a suit for infringement of the patent.
How do you check if your idea is already patented?
The Indian Patent Advanced Search System, InPASS, was introduced on 27.02.2015. Prior to InPASS, IPAIRS [Indian Patent Information Retrieval System] was used to conduct patent search in India. Below are the steps:
In the 'Patent Search' tab, there are two check boxes provided that allow you to search for either Granted patents or Published applications or both.
Next, you can search for patents or applications published based on any of the following search parameters – Application date, Title, Abstract, Claims, Description, Application Number, Patent Number (for granted patent), Applicant Name, Inventor Name, Inventor Country, Inventor Address, Filing Office, International Patent Classification (IPC), PCT Application number (for national phase application), PCT Publication number, Field of Invention and Patent Assignee Country.
By Keyword Search:
First, you will have to collect the keywords relevant to your invention or patent. The keyword search can only be used in the search parameters – title, abstract, claims, and description. The patent search can be performed using the keywords along with 'Boolean Operators' and/or 'Wild Cards'. The search results will show in two columns. In the left column, the application number/patent number, title, application date and status will display. Based on the selection of a row in the left column, details [Bibliographic Data, Specification, and Status] of the patent application/granted patent will display in the right column. Further, you can view the details of Bibliographic data, patent specifications, and application/patent status in the respective tab.
By Applicant Name Search:
The Indian patent search database also allows you to search for patent applications/patents by entering the name of the applicant against the relevant row.
By Inventor Name Search:
Similar to the applicant name search, you can also search the inventor name in the relevant row and the result display.
In addition to the above searches, you can also perform various search queries to retrieve the results based on your requirements.