Indian Patent law basics – Patent Application procedure
Before all else, I would like to clarify that this article does not deal with how to get a patent in India. This article merely describes the procedure for making a patent application in India. The decision to provide a person with a patent is purely an administrative matter of the Indian Patent Office. Therefore, it is not possible to provide a definitive answer to questions like “Will my product be patented?” or “How long will it take for me to get a patent?”
What is a patent?
Simply put, a patent is a right given to the holder of an invention, for a limited period, to exclude anyone from using that invention without his prior permission. This right is, like any other right, given by law to protect the invention. The holder of such right could be the inventor himself or someone who has bought the invention from the inventor or someone who has been given the right by the inventor. The invention is, basically, a product or a process of making the product that is new, useful and industrially exploitable. So if your product or process of making such product or both seems to fit these basic criteria, you might want to consider applying for a patent. That being said, obtaining a patent is not quite so easy. Honestly speaking, in addition to the procedure being protracted especially in our country, it is an expensive affair. However the perks of obtaining a patent, without a doubt, outweigh the cons of the application procedure.
Okay, so I have this invention….
The very first step is to ensure that what you have is indeed an “invention”. There are any instances where a person thinks he has invented something only to be told otherwise. It is always better to obtain a professional opinion in this regard. In fact, there are different kinds of services tailor-made to suit your ultimate goal for the invention.
However, most inventors treat this as a dispensable expense and proceed to make an application for patent. While there is nothing wrong with this approach, you run a very high risk of losing the patent race at an early stage. So not obtaining a professional opinion about your invention is akin to leaping before looking.
Making an application
The following factors need to be looked into while making a patent application.
Who can file:
A patent application can be filed by the invention-holder himself or by a patent agent authorized by the invention-holder. This authorization is required to be made in Form 26 of the Second Schedule in the Patent Rules, 2003.
Appropriate office for making the application:
The Head office of the Indian Patent Office is situated in Kolkata followed by its branch offices in Chennai, Mumbai and New Delhi. The appropriate office to make an application is determined based on place of origination of the invention, or place of business or residence of the applicant, or the Indian address provided by the applicant if the applicant is not in India, and the appropriate office that covers any of these given places.
Type of application:
There are different kinds of applications that can be made in India. These would be determined based on the existence of prior claim (called priority) to the invention in the same or different country or modification of the invention. Further a patent application can also be made without such priority. It is important to note that priorities are tricky business. Each country has a finite timeline within which the priority can be used to make an application. If you miss the priority deadlines as stipulated by a country, you lose your right to make the patent application in that country. Also remember that if you try to make a patent application independent of this priority, your priority could be used against you as a “prior art”. This means that your invention is no longer new for the purposes of making your application in that country and therefore fails the basic-criteria test I mentioned earlier.
Type of applicant:
An application for patent can be made by an individual or by a legal entity. The official fees and in most cases, the professional fees for patent application fees vary depending on the type of applicant.
Form of application:
Any patent application in India is to be made in Form1 along with an explanation regarding the invention. This explanation is called a specification since it specifies what the invention is and how it works. Generally, an application can be made based on a general outline (called the provisional specification) or by providing a detailed explanation including the best method (called the complete specification) of how the invention works. However, if you choose to apply based on a priority, you are required to file the complete specification. The specification is filed using Form 2. While making an application in India, you will be required to provide the Indian Patent Office with the undertaking that you will inform them should your patent portfolio contain foreign applications identical or similar to your present patent application. This undertaking is provided in Form 3. If this form is not filed along with the application, it is required to be submitted within 6 months of making the application and thereafter within 6 months of every change in the status of such applications. You will also be required to provide a declaration as to inventorship in Form 5. This declaration merely states the name of the inventors.
Contents of the application:
Form 1 is an application for grant of patent. The information that is required to fill this form would generally be the name and address of the applicant, title of the invention sought to be patented, priority if any (priorities are to be substantiated using priority documents obtained from the country where the prior application was filed), name of the inventors, proof of right of the applicant (this is either in the form of signatures of the inventors essentially consenting to such application or an assignment document enclosed with the application), etc.
Form 2 which is the specification consists of the title of the invention, an abstract regarding the invention, detailed working of the invention including the best method of such working, drawings explaining the working of the invention and mostly importantly, the claims of the invention. It is these claims that define what the invention really is and what is sought to be actually protected (or patented, if you will). The official fees for a patent application often vary depending on the name of pages and claims in the specification.
Form 3 consists of details of identical or similar invention made in other countries and Form 5 consists of name and address of the inventors. The application for patent can be made through paper filing or online filing system using the aforementioned forms. Upon making an application, the Indian Patent Office provides an application number based on which the application would be processed.
Publication of the application
Generally, your patent application is published in the Patent Office Journal after 18 months from either the date of your making the application or the date of earliest of the prior claims, whichever is earlier. Alternately, you may also request the Patent Office to publish your application before the prescribed time of 18 months by submitting a request in Form 9. Either way, upon publication, the application becomes open for opposition from any person till the date of its grant. An opposition at this stage would be called a pre-grant opposition. This stage of your application is independent of the examination stage.
Examination of the application
An application for Indian patent would be examined only upon a request made by the applicant within the prescribed time limit. This time limit is calculated from either the date of application in India or the earliest of prior claims, whichever is earlier. Missing this deadline is fatal for the application. There is a lack of clarity with respect to judicial decisions with regard to accepting requests for examination beyond the deadline. However, the law leaves little room for doubt that missing your deadline to file a request for examination would kill your patent application.
Upon the request being made within the time limit, the Indian Patent Office takes up the application for examination (in a sequential manner) and provides you with its first examination report. A reply to this examination report is to be filed within 12 months from the date of your receiving it. Again, if this is reply is not made within the time limit of 12 months, the application is treated as abandoned.
If the Indian Patent Office is satisfied with the response filed, it would generally proceed to grant the patent. However, if it is not satisfied with the response filed, it would provide you with yet another examination report before finally deciding on the fate of the application.
Publication of the grant
If the Patent Office decides to grant you a patent, a notice of the grant is published again in the Patent Office Journal. While technically this is the final stage of the patent application procedure, there is still one final lap called the post-grant opposition. This post-grant opposition can be filed any “interested person” (meaning anyone whose rights have been affected, adversely or otherwise) within one year from the publication of grant. Upon conclusion of this one year period, the fate of your patented invention is in your hands as the patent-holder.
A patent for your invention not only increases its monetary value, it also helps you generate more revenue through its commercialization. It is human nature to look for an easier and more efficient way of doing things. So if you have an invention which addresses this tendency of humans, go for a patent!