This article has been written by Nagesh H Karale, pursuing a Diploma in US Intellectual Property Law and Paralegal Studies from LawSikho and edited by Shashwat Kaushik.

It has been published by Rachit Garg.

Introduction

A patent is a special right granted by the government to inventors for a specific period of time. To obtain a patent, inventors must disclose their invention fully. In return, they gain the exclusive power to stop others from making, using, selling, or importing the patented invention without permission.

Following are a few important roles played by the patent system:

• Recognition and rewards for inventors.
• Promotion of technology transfer.
• Knowledge sharing and advancement.
• Economic growth and competitiveness
• Encouragement of small businesses and startups
• Protection of intellectual property.

The Patents Act regulates the patent system in India. The patent system in India is regulated by the Patents Act, 1970. It was amended by the Patents (Amendment) Act, 2005. In the original Patent Act of 1970, both the product and the process patents were protected. The patent time period lasts for 20 years The Patents Rules, 2003, provide further guidance on patent-related procedures 

The US patent system protects inventions through patents, trademarks, and copyrights. George Washington signed the first US Patent Act in 1790, shaping patent laws. The USPTO receives numerous patent applications, highlighting the importance of protecting inventions.

Patentability criteria

India

1. Patentability requirement under Section 2(1)(j) of the Indian Patent Act, 1970:
   1. Novelty- Section 2(1)(l) new intention and not in public domain or knowledge 
   2. Inventive step or it must be non-obvious (Section 2(1)(ja))
   3. Capable of industrial application (Section 2(1)(ac) )
2. Subject matter registration under
   1. Excluded Subject matter (Section 3 of the Indian Patent Act 1970)
   2. Inventions relating to atomic energy (Section 4 of the Indian Patent Act, 1970) 

United States

1. Patentability Requirement  (35 U.S.C. §101: Subject Matter Eligibility)
   1. Novel
   2. Non-obvious
   3. Useful
   4. Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
   5. Claimed by the inventor in clear and definite terms
2. What cannot be patented:
   1. The laws of nature
   2. Physical phenomena
   3. Abstract ideas
   4. Literary, dramatic, musical, and artistic works (these can be copyright protected).
   5. Inventions, which are:

• Not useful (such as perpetual motion machines); or
• Offensive to public morality.

Examination process

India

An application for a patent grant is usually not made public for 18 months from the date of filing or the date of priority, whichever is earlier (Under Section 11A). After this period, the Controller will generally publish the application in the journal within one month from the end of the 18-month period or one month from the date of the request for publication (as per Rule 24A of the Patents Act, 2003). To request an application under Section 11A (2), Form 9 is used.

To request an examination under Section 11B of the Indian Patents Act, 1970, Form 18 is used. The request for examination should be made within 48 months from the priority or filing date. If the applicant or any interested person fails to request an examination, the application will be considered withdrawn. An applicant can request expedited examination in certain situations by submitting Form 18A and paying the required fee.

When a request for examination is made, the Controller will assign an examiner to assess the application. The examiner will review under Section 12 of the Act whether the application meets the requirements of the Patents Act, 1970 and associated rules, check for any lawful grounds to object to granting the patent, consider the findings of investigations conducted, and address any other relevant matters as prescribed. The examiner searches for anticipation by previous publication and by prior claim under Section 13 of the Act. 

The Controller will quickly notify the applicant of the gist of the objections raised by the examiner and, if requested, allow the applicant to hear their case. The applicant is required to comply with the requirements within a period of 6 months from the date of this First Examination Report (FER), which can be extended by 3 months. Once the objections have been overcome, the Indian Patent Office may grant a patent.

United States

After assignment for examination, the examiner will review the application contents to assess their compliance with the legal requirements for allowance. The examination involves studying compliance with legal requirements (e.g., utility, double patenting, non-statutory double patenting) and conducting a comprehensive search through U.S. patents, patent publications, foreign patent documents, and available literature. The purpose of the examination is to determine if the claimed invention is new, useful, or non-obvious and if the application satisfies patent statute requirements and rules of practise.

 The examiner’s decision is communicated through an “office action” sent either to the attorney/agent of record or directly to the applicant if unrepresented. An office action is a communication from the patent office that explains why an application does not meet certain legal requirements, as specified in Sections such as 35 U.S.C. 102, 101, 103, and 112. It highlights deficiencies related to novelty, utility, eligibility, non-obviousness, and written description. The office action allows the applicant to address and resolve the issues raised by the patent office.

The applicant must submit a written response. The response should identify alleged errors in the office action and provide a point-by-point reply to each objection and rejection. It should offer arguments, evidence, or amendments to support the applicant’s position and address the issues raised in the office action. It is important that the response demonstrate a sincere and legitimate effort by the applicant to move the case forward towards a final decision or allowance, rather than merely making a general claim of examiner error.

The opportunity to amend the disclosure and present arguments against the examiner’s decision is provided at no additional cost, as long as the response is submitted within the specified timeframe indicated in the office action. When making amendments in response to a rejection, it is crucial for the applicant to clearly explain why the amended claims are eligible for a patent, considering the prior references or objections cited. Furthermore, the response should effectively demonstrate how the amended claims successfully address and overcome the cited references, rejections, or objections.

Promptly respond to office communication to avoid additional fees or application abandonment, as the reply period is specified in the office action and a delayed response may result in restrictions. Consider scheduling an interview with the examiner for clarification. After responding to the first office action, a second office action may be issued, potentially labelled “final,” requiring a more limited response.

 Options after a final office action include

• Filing a reply after final under 37 CFR 1.116 or under the After Final Consideration Pilot 2.0 that addresses all rejections and objections.
• Filing a Request for Continued Examination (RCE) in order to continue prosecution of your application, or
•  Filing a Notice of Appeal with the Patent Trial and Appeal Board (PTAB) 

Various programmes are available to assist applicants during the examination and after final rejection. Failure to address rejections within six months from the mailing of the final rejection may lead to application abandonment, unless prosecution is reopened or conditions for allowance are met.

Patent prosecution and amendments

India

Pre-grant oppositions and post-grant oppositions

During the period between patent application, publication and grant, anyone can oppose the grant of the patent. The opposition is done through a written representation. The grounds for opposition are specified in Section 25(1) of the Patents Act.

Within one year of the publication of a granted patent, any interested person can give notice of opposition to the Controller. The opposition can be based on grounds specified in Section 25(2) of the Patents Act.

Amendments and corrections

The Controller has the authority to allow amendments to an application for a patent, a complete specification, or related documents. This can be done upon an application made under Section 57 of the Patents Act of 1970. It can only be made in the form of a disclaimer, correction, or explanation. No amendments are allowed unless they incorporate actual facts. Amendments to a complete specification are generally not permitted.

United States

Amendments and restriction requirements

As per 37 CFR 1.221(b), the Office will only grant a request for correction to a published patent application if it makes a material mistake. Requests for corrections to a patent application publication caused by a USPTO error must be submitted in writing.

The AFCP (After Final Consideration Pilot 2.0) Response Form (PTO-2323) is designed to authorise additional time for examiners to search andand/or consider responses after final rejection. Examiners have the option to use the additional time to schedule and conduct an interview with the applicant if the applicant’s response does not bring the application to a state ready for approval. 

During this interview, they can discuss the results of their search and/or consideration with the applicant. The applicant, irrespective of whether the submission was considered under AFCP 2.0, has the option to request an interview with the examiner. This opportunity is outlined in MPEP 713.

Patent litigation in the US has shifted to trials conducted by the PTAB of the USPTO.  PTAB trials provide faster timelines, lower costs, and a narrower focus than district courts or the ITC.  PTAB trials offer an alternative venue for resolving patent disputes. The PTAB allows for more efficient and streamlined proceedings. PTAB trials are explicitly designed for patent-related cases, ensuring specialised expertise and understanding. The PTAB offers a forum for challenging the validity of patents.

PTAB trials provide a cost-effective option for addressing patent disputes and potential infringement. The PTAB provides a range of adversarial post-grant proceedings, which include Inter Partes Review (IPR), Covered Business Method (CBM), and Post-Grant Review (PGR). These proceedings allow interested parties to challenge the validity of a patent after it has been granted, providing an avenue for resolving disputes and addressing potential issues with the patent’s claims.

IPR focuses on patent validity challenges related to anticipation and obviousness, with limited prior art allowed. CBM and PGR proceedings allow for a wider range of legal challenges, addressing subject matter eligibility, enablement, indefiniteness, and written description support.

Patent grant and timeline

India

Grant of patent and publication

After a patent is granted, the information is published for public inspection. The patent’s date is based on the application filing date recorded in the register. Legal action for infringement can only be taken after the date of publication of the patent application.

Post-grant procedures

To maintain a patent’s validity, renewal fees stated in the First Schedule must be paid. The fees for a patent are due at the end of the second year from its date, as well as subsequent years. These payments must be submitted to the patent office before the expiration of each respective year. Multiple years’ renewal fees can be paid in advance. If a patent is granted more than two years after filing, fees for that period can be paid within three months from the recording date. An extended payment period of nine months from the recording date is allowed. 

In India, patent grants usually take 3-6 years from the date of application filing.

United States

Grant of patent and publication

If the examiner determines that the applicant’s application meets the patent requirements, the applicant or their legal representative will receive a Notice of Allowance. This means the applicant is entitled to a patent. The Notice of Allowance specifies the fees required for patent issuance. The Applicant must pay these fees within 3 months of receiving the notice to avoid application abandonment. This deadline is non-extendable.

If the Applicant has additional inventions disclosed in their application or improvements to their current invention that were not previously disclosed, they may choose to file additional applications (Divisional, Continuation, or Continuation-In-Part) to pursue patent protection for this subject matter. The USPTO now issues electronic patent grants (e-Grants) for all patents.

Post-grant procedures (e.g., reissue, re-examination)

In the United States, the official fee for patent issuance must be paid within three months of receiving the allowance notice. Annual fees are due at 3.5, 7.5, and 11.5 years from the patent issuance. A 5-month grace period is provided to pay the fees without surcharge. Late payment with a surcharge is allowed within six months after the specified period. Advance payment is not an option for patent fees.

US patentees can file a reissue application within two years of the original patent grant under 35 U.S.C. § 251.  The reissue application allows them to correct errors and omissions and expand the scope of their original patent.

The reissued patent provides greater protection for the invention if specific requirements are fulfilled. Ex parte reexamination, which is governed by 35 U.S.C. §§ 302-307 allows individuals, including the patent owner, to request a review of any claim in a patent. The requester must submit a written request, fee, relevant prior art, and explanation of its applicability to the claim(s) to the USPTO. This procedure enables a review of the patent’s validity based on the submitted materials.

Obtaining a patent can take two to three years, known as patent prosecution. However, the process can become longer and more complex if the patent faces opposition or if the USPTO requests additional information.

Recent developments and reforms in Indian Patent Laws

Patents (Amendment) Rules, 2021

The silent features of the Patents (Amendment) Rules, 2021:

• The patent fees for educational institutions have been significantly reduced by 80% to encourage their participation in research and development (R&D) activities. The amendment to the Patents Rules, 2003 allows all educational institutions to avail the benefit of reduced fees, expanding it beyond government-owned recognisedrecognized institutions.
• The expedited examination system, initially introduced for patent applications filed by startups, has been expanded to include eight additional categories of patent applicants. This system allows for the augmentation of manpower by recruiting new examiners, resulting in faster patent grants. The fastest granted patent under this system was issued just 41 days after filing the request. It is expected to take half the time (average 24-30 months) for the final disposal of patent applications from the filing date.
• Fast tracking through the patent prosecution highway programme

A Bilateral Patent Prosecution Highway (PPH) pilot program has started between the Indian Patent Office (IPO) and the Japan Patent Office (JPO). Guidelines have been published for requesting expedited examination under the PPH program. Applicants can request expedited examination by following the prescribed procedure and submitting relevant documents to the Office of Later Examination (OLE).The number of PPH requests in IPO is limited to 100 cases per year, with a maximum of 10 requests per applicant. Special status for the expedited examination should be requested online using the prescribed form. The timelines for filing a request for expedited examination are as per the Patents Rules, 2003.

Other provisions of Patent (Amendment) Rules, 2021:

• Online application and granting of patents
• Video-conferencing for patent case hearings
• Revamped websites and real-time dissemination of IP information
• Promotion of digital processes in patent application and granting
• Startups Intellectual Property Protection (SIPP) scheme facilitates Startups by providing assistance and reimbursement of professional charges for filing and processing their applications.
• A feedback/complaint mechanism is available on the IPO website to address stakeholders’ suggestions or grievances regarding the functioning of IP offices. A dedicated team promptly responds through email.
• DPIIT, in collaboration with the office of CGPDTM and Cell for IPR Promotion and Management (CIPAM), conducts regular awareness activities to disseminate information and knowledge about IPR. These activities target schools, universities, industries, legal and enforcement agencies, and other stakeholders, often in partnership with industry associations.

Key changes in US Patent Laws and regulations 

The U.S. patent system underwent significant changes with the enactment of the America Invents Act (AIA) on September 16, 2011, introducing comprehensive reforms to the patent system.

Following are the major changes-

• On March 16, 2013, the AIA changed the U.S. patent system from “first-to-invent” to “first-inventor-to-file,” aligning it with global patent norms. The effective filing date of a patent application, not the date of invention, determines priority under the new system.
• AIA allows third parties to submit prior art to the USPTO for consideration in pending patent applications. USPTO can use the submitted material to reject claims in the application. The procedure is inexpensive and straightforward, but not without risks.
• Inter partes re-examination was replaced by inter partes review (IPR) proceedings, which are more trial-like. Post-grant review (PGR) proceedings were added, allowing for broader grounds for invalidity. Ex parte re-examination remained largely unchanged as a means of challenging patent validity.
• The AIA introduced supplemental examination, allowing patent holders to address withheld or misrepresented information, potentially avoiding allegations of fraud. If a substantial new question of patentability is raised, an ex parte re-examination may be ordered, but it should be carefully considered due to costs and time.
• The AIA expands the prior commercial use defence in U.S. patent law, allowing trade secret holders to use a business method despite a later patent covering that method. The defence applies to all technologies and a wider range of defendants, requiring commercial use at least one year before the effective filing date or public disclosure of the claimed invention. The defence is personal and transfers only to the entire enterprise or related business line.
• The AIA restricts false marking suits to specific situations, such as when filed by the United States or by someone who has suffered competitive harm, and it allows virtual marking, enabling patentees to associate an article with a patent number through a free website link marked as “Patent” or “Pat.”
• Under the pre-AIA system, patent applicants could use interference proceedings to challenge competing applicants’ claims of invention dates. Still, the AIA replaces these with derivation proceedings that have a higher burden of proof, limited filing window, and lower complexity, while also introducing miscellaneous changes to patent prosecution at the USPTO.

 Impact on the patent grant process

• Under the AIA, the requirement to disclose the “best mode” of carrying out an invention remains, but failing to do so no longer results in the patent being declared invalid. The omission of the best mode can now be corrected without penalties or consequences for the validity or enforceability of the patent.
• AIA allows companies to apply for patents on their own behalf, whereas previously only individual inventors could apply. The company-assignee can file a substitute statement. A substitute statement can be filed by the company-assignee if the inventor is unavailable, deceased, legally incapacitated, or refuses to provide an oath or declaration.
• The AIA simplifies the inventor’s oath or declaration process by allowing the use of a post office or work address, removing the requirement to state being the “first” inventor, and eliminating the need to list the inventor’s citizenship. An assignment document can serve as an inventor’s oath or declaration by including the necessary statements. The filing of the inventor’s oath or declaration can be postponed until the patent application is nearing the granting stage.

Conclusion

The patent grant processes in India and the United States share similarities in terms of patentability criteria and examination procedures. However, there are notable differences in subject matter eligibility, response requirements, and post-grant procedures. Recent reforms in India aim to expedite patent grants and encourage research and development.

Key similarities and differences

Similarities between Indian Patent Act and US Patent act

• Aim to provide exclusive rights to inventors.
• Requirements for novelty, usefulness, and non-obviousness.
• Time-limited monopoly (20 Years) for patentees.
• Provisions for compulsory licensing.
• Mechanisms for filing and examination of patent applications.
• Recognition of industrial applications.
• Disclosure requirements.
• Require non-obviousness as a criteria for patentability, but the testing methods differ.

Differences between the Indian Patents Act and the US Patents Act

• In India, the patent laws state what cannot be patented, while in the US, the laws take an illustrative approach by stating what can be patented.
• India’s patent laws do not permit the patenting of the mere discovery of processes, machines, or products, while the US patent law allows for utility patents covering novel, useful, and non-obvious processes or machines.
• In India, third parties have the option to oppose the grant of a patent within six months of its publication, while in the US, third parties can submit prior art to the USPTO during the examination process.
• Indian patent law does not allow for minor changes or extensions to already granted patents, while US patent laws grant this flexibility.
• The Indian courts may have relatively less expertise in patent law than the US courts.
• Indian Patent law does not allow software patenting alone, requiring it to be accompanied by hardware or computer inventions, whereas software patents are granted in the US.
• Indian patent law does not permit the patenting of new and novel business models, while the US allows for such patents.
• Indian patent law does not have a provision for plant patents, whereas the US allows for the patenting of new plant discoveries or inventions.
• The patent examination in the US is considered to be more stringent and rigorous compared to India.
• In Indian patent law, it is permissible to pay renewal fees for multiple years in advance, whereas in US patent law, advance payment of patent fees is not allowed.
• The Indian PTO does not have a system for extending the patent term, while in the US, the USPTO provides a system for extending the patent term in certain circumstances, such as delays caused by the patent office during the examination process.
• In India, patent infringement proceedings can commence only after the patent has been granted, whereas in the US, they can be initiated after the patent application has been published.
• In India, patent infringement cases are handled in civil court, which may lead to a slower and less effective legal process and potentially lower compensation for the patent holder. The United States has a stronger legal system. Patent infringement cases are heard in federal courts, which provide better remedies and enforcement options. This enhances the protection of patents for holders in the United States.
• Overall, US patent laws offer more flexibility than Indian patent laws due to the conditions set for what can be patented.

References

• https://ipindia.gov.in/
• https://ipindia.gov.in/manual-patents.htm
• https://www.uspto.gov/patent
• https://patentbusinesslawyer.com/comparative-study-between-indian-us-patent-laws/#:~:text=Under%20Plant%20Patents%2C%20U.S%20allows,offer%20more%20flexibility%20than%20India.
• https://www.legalserviceindia.com/legal/article-10891-comparative-analysis-of-patent-laws-in-united-states-and-india-.html
• https://www.finnegan.com/en/insights/articles/ptab-basics-key-features-of-trials-before-the-uspto.html
• https://www.nextias.com/current-affairs/25-09-2021/patents-amendment-rules-2021-has-been-notified
• https://www.finnegan.com/a/web/116002/finnegan-america-invents-act-changes-brochure.pdf

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