This article is written by Gautam Chaudhary, a law student at Chander Prabhu Jain College of Higher Studies and School of Law, GGSIPU. The present article provides a step-by-step procedure to register or file a patent in India.
It has been published by Rachit Garg
Intellectual property in terms of patent law can be defined as something tangible in nature that is framed out of someone’s intellectual knowledge and innovative spirit. This knowledge and innovative spirit that an individual possesses acts as a source of livelihood for an innovator in the world of intellectual property rights and innovative industries. The creator of a particular invention may earn great wealth through his invention in the form of royalties if he lets companies use his innovation for which he issues a licence. The innovator may also sell his innovation for a considerable amount, or he may even start his own business, among many other options. All the above-mentioned riches may only be available to the creator if he registers his invention for patent protection. Therefore, the present article discusses why there is a need to register a patent in India, followed by exhaustive step-by-step procedures for the same.
Patents in Indian Patent Act, 1970
Section 2(m) of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for any invention under the provisions of this Act.” Now, from the mere reading of the above-given definition, it is clear that the meaning of patent is not explicatory.
Therefore, in an attempt to define the same, a patent is, in simple terms, an exclusive monopoly right that is granted to the creator or sole inventor of the invention. This right is only given to the sole inventor because he is the one who has invested his hard work, sweat, and capital into the creation of the said invention, which protects the invention from other competitors in the market by preventing them from selling, manufacturing, using, and distributing the patented technology or inventions.
As per the Indian Patent Act of 1970, a patent is only granted when a certain technology or product fulfils the following criteria, which are also discussed in depth for clear comprehension.
New or novel
For the grant of a patent in the Indian jurisdiction, any invention created has to be mandatorily novel in nature. The Act uses the term “novel invention” in relation to the definition. Therefore, it is necessary to first define the term ‘invention’ which is given under Section 2(1)(j) of the Indian Patent Act and elucidates that anything can be termed an invention when it is created through an inventive step, i.e., introducing technical advances to the existing technology and giving out a product or process that is capable of industrial use.
Now, on to the novel aspect of this invention. Section 2(1)(l) of the Act provides that an invention is said to be new or novel when it is not anticipated in the document or used in India or the world before the filing of the patent application with the specified subject matter of the invention in the Indian patent office. What must be seen to consider the invention as new is that it did not exist in the state of the art because it enables every individual in the country to access the prior existing technology or invention. The same aspect was observed in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1978), that an invention must have a novelty of such a nature that it was not known in society before the date of the patent for the grant of a patent.
An invention shall only be patented when it involves an ‘inventive step’. The mentioned term, in plain language, means an advancement to an invention’s technicality, which is new and different from the existing technology in the particular field. Another criterion by which an invention is considered to involve an inventive step is when it is non-obvious to a person skilled in the field.
Let us understand this through an example. Say a person named ‘A’ works in the field of electric motor vehicles, and he has invented a system where every time a person hits the brake, the energy goes directly to the vehicle’s battery cabinet, thereby enabling the charging of the battery while in use. The said invention is patentable since it involves an inventive step of such a nature that is new from the existing technology and is non-obvious to a person skilled in the related field as no one could ever think of this system.
The Supreme Court in M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries, (1978) coined the phrase, “As per the criteria, the patent for a created invention would only be granted when the invention is of such new use in relation to technological advancement and said that some problem related to a particular field is solved because of the said creation. Moreover, it is provided that the invention must not be a mere workshop improvement, what has to be looked at is whether the technique is new or unique, which is producing new articles or new aids in the relative industry.”
An invention is said to be non-obvious when it is different from the existing inventions present in the state of the art. For the grant of patent protection, the aspect of ‘newness’ is not enough for the invention. What has to be seen is that it also comprises elements that are undoubtedly different from the existing inventions in the relevant industry. Also, an invention must be of a nature that is not obvious or simple in its operational aspects. The person in the relevant field who is not an expert must be able to conclude that the invention sought to be patented is different from existing inventions and adds a new element that is not obvious in nature.
In Rado v. John Tye Son Ltd. (2013), it was held that “a non-obvious invention is that which is beyond the thinking of a mere person working in the field.” What is to be noted is that the invention should be something that sets the standard and technology apart from existing technical trends that are not natural and usual.
Further, in Graham v. John Deere Co. (1966), the U.S. Supreme Court provided criteria to ascertain whether something was obvious or not. Providing, the court should consider:
- The scope and content of prior art.
- The difference between the prior art and the claim of the new invention.
- The level of skill in the pertinent art.
- The failure of others to solve the problem.
- Long unsolved problems related to the related field.
Section 2(1)(ac) provides that the invention is said to be of industrial applicability when it is capable of being made or used in the industry. The term ‘industrial application’ refers to the use of the invention sought to be patented. The patent office explicitly looks at the uses that the invention would provide in the industry and whether it would truly be of some aid for industrial matters or not. The use of the invention is termed the ‘utility’ of a patent. If the inventor who sought his invention for a patent cannot satisfy himself as to how his invention contains the potential for industrial use, then the invention will not be patented because it is a rule that creation must have its fundamental use in the relative industry.
For reference, in Chiron Corp v. Murex Diagnostics (1994), the industrial application was best defined. The court stated that “the phrase capable of industrial application must carry with it a meaning of trade or manufacture in the broadest sense, and there must be profit to be made since no industry would make use of something which would be useless.”
Further, in Lakhpat Rai & Ors. v. Srikissen Dass & Ors., (1918), the Allahabad High Court termed the industrial use of the invention as its utility, where it was observed that the required invention’s use or aid does not necessarily mean improvement, as it means practicability. The utility test is based on whether the invention will do what it claims or provides to do.
Need to register a patent with the Indian patent office
The following are the essential reasons for having the invention patented in India:
Protection and possession
In this technology-ridden era where all businesses are driven by high-tech technology, it is essential for the innovators to protect their knowledge since it is the only tangible asset that is responsible for all their operations because of their created technology. So, it is essential for the running of business operations to protect this very technology from other players in the market. Apart from this, the concept of the original inventor also comes into play since what a man invents must be his asset because he is the only one who has invested his sweat, energy, time, and, most importantly, knowledge and skills in the creation of the said invention. Unfortunately, in today’s time, every other corporation, whether it’s small or giant, is indulged in the race to achieve the best that can be achieved by new inventions and ideas. Therefore, in order to protect and possess what is yours, it is essential to patent the invention.
Once the inventor of a certain invention acquires its patent, he is open to monetizing it at his will and can thus amass a handsome amount of wealth. The patent can no doubt be a source of wealth if handled with due diligence and financial knowledge. The creator can generate wealth through the marketing of the new product, licensing it to any other corporation that provides a great monetary value, and even selling the patent for a massive amount.
In the patent registration procedure, it is provided that when a patent application is accepted and completes all its necessary requirements, the said invention is published in the patent journal to inform the world that this invention is being patented, and for the same reason, any opposition is invited. Upon the publication of the invention, the created technology is directly put out into the world with every minute detail along with its functions, and other innovators come to know of this invention. Therefore, through this, the inventor also encourages the spirit of innovation in society. Since ideas can be taken or can emerge in the minds of other innovators with the knowledge of existing inventions on the market, other aspiring inventors or creators can surely indulge in the practice of learning how to make this certain invention more advanced or how to make another invention complementary to this one that would benefit society on a greater level.
Office jurisdictions of filing patent applications
A patent application can be filed in Kolkata, Delhi, Mumbai, and Chennai either online or at the respective jurisdictional patent offices for the grant of patents.
The above-mentioned office covers the following jurisdictions:
|Patent office||State jurisdiction|
|Mumbai patent office||States of Maharashtra, Gujarat, Madhya Pradesh, Goa, Chhattisgarh and union territories of Daman & Diu & Dadra & Nagar Haveli|
|Chennai patent office||States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, and the Union Territories of Pondicherry and Lakshadweep.|
|New Delhi patent office||States of Delhi, Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal and the Union Territories of Chandigarh|
|Kolkata patent office||The rest of India.|
Online patent registration process in India
The following is the detailed step-by-step procedure to file a patent in India through the online system:
Account log in
Anyone who wants to file for a patent for his invention first has to visit the site, i.e., E-Filing of Patent Applications, and then has to create an account there. Through e-signing accounts can be created there.
Patent search (discretionary/optional)
One of the foremost and most important steps is to search the technology or invention that one has created to see whether whatever he has created does exist in the state of the art since, for the grant of a patent, one of the requirements is the novelty of the product, i.e., its newness. A patent search can benefit the inventor by allowing him to look for inventions already existing in the public domain; through this, he could find out what inventions are patented in India or around the world, whereby he can then make a decision regarding his further operations with the invention and whether to follow the patent procedure or not. Through this, he escapes from spending unnecessary fees on the patent application and other relative work. Moreover, the patent offices grant patents to those inventions that are new in the state of the art to such an extent that they did not exist in the world prior to the patent filing.
Section 7 of the Indian Patent Act of 1970, requires the true creator of the invention to file the application for only one invention in the patent office in the prescribed form. In accordance with the same, he is to draft a patent application in Form 1. Patent application drafting refers to the drafting of an invention in legal and technical language, wherein the patent agent mentions all about the invention with each and every specification. The motive for the drafting of the patent application is to state how the present invention is to be used by people skilled in the art, advocate how the invention created is different from others, and explain how it can be of industrial application. The most crucial step in patent filing is the drafting of patent applications.
The individual has to fill out Form 1 provided above to complete the first step of e-filing the patent.
In this step, only Form 2 is also to be attached, which is called the patent specification form. In this, the applicant needs to specify the provisional or complete specification of the invention, stating the description, claims, and abstract for the same. The description of the invention has already been discussed above, so let’s discuss the terms “claims” and “abstract act” of the invention.
Patent claims are the most important part of the patent specification since they act as a show book for the patent applicant. Through patent claims, the patentee states the subject matter of the patent, wherein he or she specifies the elements and boundaries of the said invention. After stating the subject matter of the same, the patentee then notifies the patent office of what he sought to protect in the invention through a patent so that no other individual can sell, manufacture, or distribute it without prior permission.
According to Section 10(4)(d) of the Act, an abstract must be submitted with the patent application. Rule 13(7) of the Patent Rules 2003 defines a patent abstract as a short version of the description of the application, where the applicant needs to provide a short title of the invention along with its features in not more than fifteen words. The present rule further provides that the abstract shall describe the technical field to which the invention belongs, the technical advancement of the invention as compared to existing knowledge, and the principal use of the invention, excluding any speculative use, in not more than one hundred and fifty words. In simple terms, it is said to consist of a few words about the patent subject matter as to what new technological advancements or technology the invention will introduce into the industry with the use of the same.
Drawing and figure of abstract
Rule 15(3) of the patent rules states that at least one copy of the invention’s drawing should be attached to the patent application. The patentee produces the drawing in a pdf format of the invention, followed by the production of the abstract figure in a jpg format.
Statement and undertaking
Section 8 of the Patent Act and Rule 12 of the Patent Rules govern the provisions regarding the statements and undertakings of a patent, where Section 8(1)(a) elucidates that the patentee must provide a statement regarding any other application that he has filed outside India, providing the particulars about the same or substantially similar invention. It is necessary for the patentee to notify the patent office about the same within six months of the patent application’s filing date.
Section 8(1)(b) further makes it mandatory for the patentee to produce an undertaking to the patent controller to give a timely update regarding the filing of any application outside India.
Power of attorney
In Form 26, the patentee is required to give a power of attorney in case a patent agent is assigned. The power of attorney plays a crucial role in the grant of the patent since the patentee acts through this legal document and only gives authority to his agent to act on his behalf.
Declaration of inventorship
Section 28 specifies that the person filing the patent application must be the true inventor or joint inventor of the said invention, and for the same, he is to file a declaration of inventorship in Form 5, wherein the true inventor makes a declaration that he is the original inventor or joint inventor of the invention.
The last step is to pay the payment fees through the payment gateway.
Rule 24 of the patent rules talk about the publication of a patent application in an official journal which provides that after the expiration of 18 months, the patent application will be made available to the public. After the submission of all the above-stated requisite documents and forms, and after an expiration of 18 months from the date of filing of the application, the application is officially published in the journal, where the title, abstract, application no., and names of the application and inventor are mentioned.
Rule 55 provides that after the publication of the patent application in the journal, the said application is open for any opposition by any person within 3 months from the date of publication or before the grant of a patent, along with the statement, evidence, and request for hearing of the opposition. Further, if there is opposition, the patent controller will forward the opposition to the applicant. Upon receiving the opposition from the controller, the applicant will file the statement along with supporting evidence in reply. And after having all the relevant evidence along with the statement, there will be a hearing if it is so requested. If not, then the controller will finally either reject the opposition or accept it and not grant the patent.
Section 25(2) provides that if the same opposition is filed after the grant of the patent, it is called post-grant opposition. Here, the interested party files an opposition against the granted patent in Form 7 within one year after the grant of the patent.
Request for examination
In order to protect the invention, as per Rule 24B, the applicant has to file a request for examination of the patent within 48 months from the date of filing the application. Section 11B of the Act states that no application for the grant of a patent will be examined unless the applicant requests the same. Where the application is not filed within the above-stated time period, the application is treated as withdrawn by the applicant. Therefore, it is absolutely mandatory for the applicant to apply for examination of the patent if he truly wants his invention protected.
First examination report
After the request for examination of the patent application, the examiner at the patent office will thereby examine the invention in order to ascertain whether the created invention fulfils the essentials for a patent, which are novelty, inventiveness, and industrial application.
After examining the invention, the office will issue a first examination report (FER) and send it along with specifications to the applicant, highlighting the objections and suggestions contained therein. Usually, an examiner sends the report within one month.
After receiving the first examination report (FER), the applicant gets an opportunity to submit a response to the objections raised to overcome all of them. And if the controller finds the responses submitted by the applicant satisfactory in light of the raised objections, the patent will be granted to the applicant.
Offline patent registration process in India
For the purpose of offline patent filings, there are jurisdictional patent offices in the Kolkata, Delhi, Mumbai, and Chennai regions.
The applicant can protect his invention through patent protection by filing the patent application in offline mode by visiting the office and submitting the requisite documents and doing the necessary formalities. An applicant has to submit the following documents at the counter of the jurisdictional patent office:
Covering indicating the list of documents
At the outset of the patent application in offline mode, the applicant first needs to attach a cover indicating the list of documents. This list of documents is simply an index that primarily showcases the required documents that are attached to the application.
Application for grant of patent
The second step is to attach the application for the grant of a patent to Form 1 in duplicate.
The application for grant of a patent is followed by the specification of the invention, either provisional or complete. The specification refers to the description of the invention that is sought to be protected through the grant of a patent. It is important to note that the provisional specification is only optional, while the complete specification is mandatory.
The specification also comprises a description, claims, drawings, and an abstract. which have already been discussed above under the “online patent filing” heading.
Statement and undertaking
It is mandatory for the applicant to provide a statement and undertaking for the grant of the patent for his invention.
Power of attorney
A power of attorney is to be attached with the application in Form 26 in case a patent agent is assigned.
Declaration of inventorship
In Form 5 in duplicate, the applicant has to provide a declaration of inventorship in relation to the invention.
At last, the applicant has to pay the required statutory fee for the processing of his application for further procedures.
Statutory fees are:
|Particulars||Natural person||Small entity||Large entity|
|For patent filing application||Rs. 1,750||Rs. 4,400||Rs. 8,800|
|For each sheet of specification||Rs. 180||440||880|
|For each claim||Rs. 350||Rs. 880||Rs. 1,760|
After the above-mentioned first step, the application would then go through the same steps that were followed in the online patent filing process, i.e., the publication of the application, opposition to the application, including post-grant opposition, followed by a request for the examination, and receiving the first examination report where, after satisfying the controller through the filed statements, the applicant acquires the patent for his created invention.
The concept of patent protection in Indian patent law is to limit individuals other than the inventor’s ability to use, sell, and manufacture the product or technology for their own private gain or interest. This protection enables the creator to keep the inventions created only for themselves. Whereas, it also gives the inventor the right to monetise it for further economic purposes. But, all these opportunities and protections come into play when the inventor registers the technology and invention with the patent office, either online or in person. Through registering his creations, the inventor lets his knowledge and innovative spirit shine; along with this, the innovative spirit keeps prevailing in the minds of other innovators who think, work, and innovate whatever it is to make the world better.
Frequently asked questions (FAQs)
Who can apply for a patent in India?
Section 6 of the Indian Patent Act, 1970, provides that any person claiming to be the true and first applicant, or being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application, or being the legal representative of any deceased person who, immediately before his death, was entitled to make such an application, can apply for a patent in India.
What is the need to file a patent in India?
The paramount purpose of filing a patent is to protect the creation or invention from authoritative sale and manufacture in the market because it is the true creator who has invested his time, money, skill, and knowledge in its creation.
Through whom can a person file a patent application?
Although Section 6 of the Act provides that any person can file a patent application in India, in most cases, the inventor does not have the required knowledge about the filing process and system. Therefore, many organisations and companies in the innovative world hire patent agents and attorneys to assist the inventor in filing a patent efficiently.
What is the term of patent protection in India?
According to Section 53 of the Act, the term of patent protection in India is 20 years from the date of filing of the application for the patent.
- Law relating to Intellectual Property Rights by V.K Ahuja, Third Edition.
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