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Getting Patent in India and Foreign countries

This article brief about the patent, what is patentable, what is not patentable, types of application for filing patents and step-wise procedure of filing patent in India and in foreign countries with timeline.

Patent

According to World Intellectual Property Organization (WIPO) [1], 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 principle, the patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner's consent.

What is patentable?

Any new invention is patentable which must fall under five statutory classes such as Processes, Machines, Manufactures, Composition of matters and new uses of any above classes. Patent also classified as Process Patent and Product Patent. The invention must be useful, novel, and non-obvious.

According to Section 2 of Indian Paten Act (IPA) 1970 [2], "invention" means a new product or process involving an inventive step and capable of industrial application. "Inventive step" 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.

"New invention"
means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification. There are three types of patents; Utility Patents, Design Patents and Plant Patents.

What is not patentable?

According to Section 3 of Indian Patent Act 1970 [2], the following inventions are not patentable:

  1. Invention which is frivolous
  2. Invention related to atomic energy
  3. Inventions based on traditional knowledge
  4. Invention which are contrary to natural laws
  5. Inventions which are injurious to human health
  6. Method related to agriculture or horticulture
  7. Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic
  8. Mathematical or business method or a computer programme per se or algorithms
  9. Literary, dramatic, musical or artistic work or any other aesthetic creation
  10. Presentation of information
  11. Topography of integrated circuits
  12. Arrangement or rearrangement in a known way.

According to Section 4 of IPA 1970, inventions relating to atomic energy are not patentable.

Types of Patent Applications

According to Section 7 of IPA 1970, every application for a patent shall be for one invention only and shall be made in the prescribed form and should be filed in the patent office (situated at Mumbai, Chennai, Delhi, Kolkata)

There are two basic forms for Patent application according to the Section 9 of IPA 1970. Inventor can file Provisional application or complete application. Provisional application comprises title of invention and idea of invention. Complete application (which is known as complete specification in patent act) includes title, abstract, full description, its utility, scope, diagram and claims.

If provisional application is filed then within 12 months, complete specification must be filed. If patent successfully granted then the date of patent will be the date of filing provisional application. The provisional application gives benefits such as securing filing date, 12 months of time to file complete specification with low cost/fees. If the invention is ready then complete application can be directly filed.

According to the Sections 7, 16, 54, 135 of IPA 1970, the types of Patent Applications are:

  1. Ordinary Application
    An ordinary application is filed at the Patent Office in which there is no priority is claimed. It is an application made without any reference to any other application under process in the patent office. The filing date and priority dates are same in case of ordinary application. An ordinary application shall be accompanied with a complete specification and claims.
     
  2. Convention Application
    According to Section 135 of IPA 1970, a patent application which is first filed in a convention country (any country amongst 173 countries which are party of Paris Convention for the protection of IPR) and then within 12 months it is filed in India is known as convention application. Convention application is filed first in a country other than India and then same invention is being filed in India.
     
  3. PCT National Phase Application
    India became the signatory of PCT (Patent Cooperation Treaty) in December 1998. So any PCT application is governed by PCT norms. When an international application is made according to PCT designating India, National Phase Application can be filed in India within 31 months from the international filing date or the priority date (whichever is earlier)
     
  4. PCT International Phase Application
    PCT (Patent Cooperation Treaty) International Phase Application can be filed in 148 countries (now 152 countries became signatory of PCT). The PCT application allows applicant to claim the patent in multiple countries through only one application and it also gives a time period of 31 months from the international filing date or priority date to enter into each of the country and to claim protection. The PCT application can be filed with complete specifications only (provisional application is not allowed).

    An Indian applicant can file PCT International Phase Application in 3 ways:
    1. File patent application in India first and after 6 weeks and within 12 months of such filing, file PCT International Application (IA) with India as the receiving office. If IA is filed within 6 weeks of filing in India, then according to Section 39 of IPA 1970, permission has to be taken from the Indian Patent Office.
       
    2. File International Application at the Indian Patent Office as the receiving office.
       
    3. File the International Application at the International Bureau (IB).
      According to Section 39 of IPA 1970, in all above types of filing, permission has to be taken from the Indian Patent Office.
       
  5. Divisional Application
    According to the Section 16 of IPA 1970, Divisional Application is further application divided out of the first mentioned patent application. Patent is granted only for single invention. Therefore, for more than one invention, the applicant is required to claim or file for a separate patent application which is known as Divisional Application. As the divisional patent application arises from the parent application hence it has the same priority date as that of parent patent application.
     
  6. Patent of Addition
    As per the Section 54 of IPA 1970, Patent of Addition is an application for patent in respect of any improvement in or modification of the invention for which patent application has already been filed or patented. Patent of Addition application can be filed anytime after filing the main patent application. The major advantage of filing patent of addition application is that no separate renewal fee is required during the term of patent and it expires along with the main patent.


Procedure for getting Grant of Patent in India

Stepwise procedure from applying for patent to getting grant of a patent is as follows:
Step 1: File Patent application in Indian Patent Office
Step 2: Formality Check
Step 3: Publication
Step 4: Request for Examination
Step 5: Examination and Issue of First Examination Report (FER)
Step 6: Response from the Applicant
Step 7: Pre-Grant Opposition
Step 8: Examination of Pre-Grant Opposition
Step 9: Consideration of Pre-Grant Opposition
Step 10: Grant of Patent
Step 11: Post-grant opposition

Filing a patent application in the Indian Patent Office is the first step towards getting grant of a patent. For filing a patent, a set of forms has to be submitted to the patent office. These forms can be submitted online [3] if applicant has a class 3 digital certificate. True copies or hard copies can be submitted to the patent office [4].

To file a patent application, applicant has to submit form 1 (Application for Grant of Patent), form 2 (Provisional/Complete Specification), form 3 (Statement and Undertaking Under Section 8) and form 5 (Declaration as to Inventorship) [5].
Then formal checking of the patent application is done by the authority of patent office.

In step 3, the application is published after 18 months of first filing. Request for early publication can be made with prescribed fees. Generally, the patent application is published within a month from request form of early publication.

The application will be examined in step 4, after receiving the Request for Examination Form (REF). Patent examiner will examine the patentable subject matter, novelty, non-obviousness, inventive step and its industrial application in step 5. Examiner will create First Examination Report (FER) after reviewing all above parameters. The first FER submitted to the controller consists of prior arts (existing documents related to the claimed invention) which are similar to claimed invention. The FER is published and send to the applicant. The applicant has to reply the objections stated in FER within 6 months.

According to Section 25 of IPA 1970, any person or third party or government can file pre-grant opposition (step 6). Pre grant opposition is filed before getting the grant of patent, so it acts as a defensive guard to confirm the validity of the patent application before patent is granted to the applicant. In step 8 and 9, if there are pre grant oppositions received by the controller then they are considered and examined.

When all the criteria are fulfilled then the patent is granted to the applicant for 20 years. Post grant opposition can be filed at any time after the grant of patent within 12 months from the date of publication of grant of patent. Any person interested (means person who is working in the field of invention in which patent is granted) can file Post grant opposition which is further heard by the court. After the patent has been granted, it has to be renewed every year by paying the renewal fee. The detail information is available on government website of IPR [6].

Procedure for getting a Patent in Foreign countries

Any Indian Nationals can use convention route and file application in 173 countries which are party to the Paris Convention for the Protection of Intellectual Property. Application must be filed within 12 months in India and claim priority of the earliest filed application in India. However, in this case, inventor has to file separate application in 173 countries which is tedious and time consuming.

Under PCT (Patent Cooperation Treaty), inventor is required to file a single application which is known as International Application (IA) in any language. Through this application, invention is claimed in all 148 countries which are the signatory of PCT.

PCT does not provide the grant of the patent; it is just a method of applying a patent in many countries using only one application. The responsibility of giving the grant of patent will remain with the patent office of member countries as per their laws. Applicant has to take permission from the Indian Patent Office before filing International Application.

Licensing a Patent

According to the Section 48 of IPA 1970, patentee has rights to authorize the person who can use his invention through licensing. Licensing is very useful way of raising finances. Patentee has to sign a license and the licensee (the person who is signing the license) has to obey the terms and conditions mentioned in the agreement. The main advantage of license is that invention can be converted into product which may give financial benefit to the patentee. Licensing plays a vital role in technology commercialization.

Licensing is basically classified in two types as exclusive, and non-exclusive. In exclusive licensing, all the rights are given to the licensee. After signing the exclusive license agreement, even the patentee cannot sell the goods in the territory where the licensee has acquired exclusive license.

In non exclusive licensing, patentee gives the same right to more than one licensee. That means one licensee may use the invention along with the other licensee and has same rights.

Timelines
Inventor has to follow the timelines stated in Indian Patent Act 1970.

The deadlines for filing Patent Application

For National Phase Application- Within 31 months from the priority date
For Convention Application - Within 12 months from the priority date
For Divisional Application- Any time before the grant of parent application
For a Patent in Addition- Any time before or after the grant of parent application
For Complete Specification- Within 12 months from the date of filing Provisional Application
For PCT International Application- Within 12 months from the date of priority or date of filing of the priority application in India
Publication- After 18 months, on request within a month from date of filing a patent
Examination- Within 48 months from the date filing a patent application
Declaration of Inventorship- Within 1 month from date of filing complete specification
First Examination Report- FER should be replied by applicant within 12 months
Pre-grant Opposition- Within 6 months from date of publication
Post-grant opposition- Within 1 year from date of grant of patent
In India and in foreign countries, 3-6 years are required to get a Grant of Patent.

Conclusions:
Intellectual Property Rights has become more significant nowadays. With the rapid globalization, it is possible and easy to file patents in any country. India is taking substantial efforts to protect the inventions through the Indian Patent Act 1970. This act was amended many times to provide more protection to the inventions and to give more financial benefits to the inventors. This articles explained stepwise procedure to file a patent and hopefully clarified most of the doubts related to filing the patent in India and in foreign countries.

References:

  1. https://www.wipo.int/portal/en/index.html
  2. http://ipindia.nic.in/writereaddata/Portal/ev/sections-index.html
  3. http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin
  4. http://www.ipindia.nic.in/address-of-patents-offices.htm
  5. http://www.ipindia.nic.in/form-and-fees.htm
  6. http://www.ipindia.nic.in/

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