Patent Application Process

Introduction

The word “Patent” is derived from the Latin word, ‘patere’, which means, “to lay open”. A patent is an Intellectual Property sanctioned to the inventor by the concerned government for a finite period (usually 20 years from the date of filing). The inventor is a granted patent for the novel creations, which forbids others from exploiting the invention except the inventor.

According to World Intellectual Property Organization (WIPO), “A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application”.

In India, the Patents Act, 1970, governs the patents. The Act explains everything about patents including the procedure to file for a patent.

Historical Background of Patents in India

The first patent in India was approved to George Alfred of Calcutta, a civil engineer for his creation, “Effective Pankah Pulling Machine” under the Act VI of 1856.[1] Act VI of 1856 is the first legislation in India concerning the Patent. Act IX of 1857 repealed the Act VI of 1856. Then the Act of 1859 replaced the Act of 1857. This act granted protection for inventions only and excluded designs. For the protection of both inventions and designs, the ‘Patterns and Designs Protection Act’ was enacted in 1872. This Act was an amended version of the Act of 1859, which included any new and original pattern or design within the ambit of ‘new manufacture’.

Further, the Act of 1859 was amended in 1883, which protected the novelty of the creations, which were revealed in the Public, before making the applications.

The Indian Patents and Designs Act, 1911 was enacted, which replaced all prior legislations relating to patents. First time under this Act, the administration of patents was handled by the Controller of Patents. After a series of Amendments, the Patents Act, 1970 was introduced which replaced the Act of 1911. The Patents Act 1970 came into operation in the year 1972. There have been various amendments to the Patents Act of 1970, the recent amendment being in 2020 pertaining to Form 27.[2]

Importance of Patent

Application for patents provides various advantages starting with a monopoly market position, where the inventor could either exploit or license the creation preventing others from using it. Licensing of patents allows entry to new markets, by which the inventor obtains huge revenue. A patent is a pass to take legal action against the infringers or the imitators. To avail of these benefits, an application for patents is necessary. In India, there are three patentability criteria, which are as follows:

  • Usefulness – The creation or invention must have  industrial applicability
  • Novelty – The invention must be a novel technology, which is not published elsewhere and is not known to the people.
  • Non-obviousness – Creation, which is possible by any amateur, is obvious and cannot be patentable. Thus, creation must be non-obvious.[3]

Non-Patentable Subject Matter

The non-Patentable subject matter is elucidated in Section 3 of the Indian Patent Act, 1970. According to which the following few aspects belong to non-patentable subjects.

  • Frivolous Invention- Inventions which are contrary to the natural laws
  • Inventions injurious to public health- Invention leading to counterfeiting of currencies
  • Mere discovery of an existing scientific theory- Discovery of already existing bacteria is not patentable
  • A substance obtained by mere admixture
  • Rearrangement of known devices
  • Method of Agriculture
  • Literary, dramatic, musical works including cinematographic works are not patentable[4]

Process of Patenting

In India, the office of Controllers General of Patents Designs and Trademarks administers the patent registration process. This office comes within the ambit of the Department of Industrial Policy and Promotion (DPIIT). The patent filing procedure is as follows:

Filing of Application (Section 7 of The Patents Act, 1970)

  • The first step is to apply for a patent to claim priority. There are four patent offices in India at Mumbai, New Delhi, Chennai, and Kolkata.
  • The applicant has to file a patent application under Section 7 of the Patents Act, 1970[5] using prescribed forms (FORM 1).
  • The Structure of the patent application would include the title, abstract, background, summary, drawings, and claims.
  • If the invention is still at its conceptual stage, even then the applicant could file for an application to acquire the priority. Then within 12 months, the applicant has to file the entire specification in the recommended format (FORM 2)

 Publication of Application

  • The Application is published by the patent office after the expiry of 18 months starting from the filing date.
  • The publication date is very crucial as, after the publication, the invention forms a part of the prior art.
  • The Indian Patent law also provides provisions where an applicant could apply for an early publication on request, which is elucidated in the Section 11(A) (2) of the Patents Act, 1970[6]. (FORM 9)

Opposition of Patent

  • Once the Publication is complete, it is open for opposition on various grounds such as the absence of novelty, usefulness, and non-obviousness.
  • There are two types of opposition namely the pre-grant opposition and post-grant opposition. Pre-grant opposition can be filed within three months of publication

Examination

  • The applicant has to apply for an examination within 48 hours of filing the application with recommended fees.
  • The examiner analysis all the features of patentability i.e. Novelty, industrial applicability, and non-obviousness, and the First Examination Report (FER) is issued to the applicant.
  • If objections are raised in the examination report, the same has to be cleared by the applicant within one year.

Grant of Patent

  • Once the applicant clarifies the objections raised, the Controller grants the patent. Grant of a patent is published and then anyone could oppose on various grounds of patentability criteria, this is called post-grant opposition.
  • The patent is sanctioned for 20 years from the date of application.[7]
  • All the important forms relating to patents can be accessed on the IP India Website

Foreign Filing

An applicant can file a patent application in a foreign country within 12 months from the date of priority. After the application has been filed, the applicant has to submit a ‘Priority Document’ received from the Indian Patent Office to the foreign country.

There are two methods for filing a patent application in a foreign country, which are as follows:

  • Convention Application

Convention Application is the direct filing of the patent application to the country, which is a member of the Paris Convention. For example, if an application is filed in India first and then directly filed in the United States Patent and Trademark Office (USPTO), the application filed in USPTO is called a convention application

  • PCT Application

The procedure to apply for patents in different countries is time-consuming and involves huge monetary investments, as patents are territorial rights. To overcome this shortcoming, the Patent Cooperation Treaty (PCT) was introduced in 1970. The PCT allows filing a single international patent application instead of separate applications in different countries. PCT provides priority dates in all the member countries, which are more than 145 countries through a single application.

PCT application is made within 12 months from the date of filing the first patent application with the Receiving office of the national or regional patent office. The application can be directly filed with the receiving office of WIPO if the national security provisions of the applicant’s national law permits. [8]

Conclusion

A patent is one of the important types of Intellectual Property Rights (IPR), which aids in the economic development of the country. The patent being a territorial right, the application format differs from country to country according to their Patents Laws. In India, the Patent Act, 1970 is the national legislation dealing with all the aspects relating to the application and grant of patents. The convention application and PCT application are the types of foreign filing to protect an invention. The procedure to apply and grant patents might differ from nation to nation but the ulterior aim is to secure the invention, their market and provide them with legal status in case of infringement.


[1]Origiin IP Solutions, Handbook on IPR, Origiin IP (Last visited on May. 27, 2021) https://www.origiin.com/bin2017/wp-content/uploads/2018/11/HANDBOOK-ON-IPR-V3.0.pdf.

[2]Origiin IP Solutions, supra note 1, at 1.

[3]Lalit Jajpura, Bhupinder Singh, Rajkishore Nayak, An Introduction to Intellectual Property Rights and their Importance in India Context, JIPR (2017) https://docs.manupatra.in/newsline/articles/Upload/41C26FED-7AFE-40EA-8736-4E6C516917AE.pdf.

[4]The Indian Patent Act, 1970, No. 39 of 1970, Acts of Parliament, 1970 (India).

[5] ibid.

[6] ibid.

[7] JIPR, supra note 3, at 2.

[8] Origiin IP Solutions, supra note 1, at 1.


Authored By: Sparsha S. Pai, 5th Year, SDM Law College, Mangalore

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