This article is written by Vivek Maurya from ICFAI Law University, Dehradun. This article describes the stages of time taken by different countries to grant a patent license.
The time taken by the patent offices to grant a patent is generally the time for the inspection, modification, and for any objections to determine that the patent is new and first. In most countries, the patent procedure starts with filling an application for the invention with the prescribed fees and ends with granting patent rights, which exclude others from making or selling that invention for a limited time.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20 April 1972, replacing the Indian Patents and Designs Act, 1911. The Patent Act was largely based on the recommendations of the Iyengar Committee Report headed by Justice N Rajagopal Iyengar. One of the recommendations was to allow the processing of patents only in respect of inventions relating to drugs, food, and chemicals.
Later, India became a signatory to several international arrangements aimed at strengthening its patent law and coming into the league with the modern world. An important step towards achieving this objective was to become a member of the Trade-Related Intellectual Property Rights (TRIPS). Significantly, India also became a signatory to the Paris Convention and the Patent Cooperation Treaty on 7 December 1998, and then on 17 December 2001 the Budapest Treaty.
Meaning of a patent
A patent is an exclusive right to a product or process that typically provides a new way of doing something or a new technical solution to a problem. To obtain a patent, technical information about the invention must be disclosed to the public in the patent application.
The patent owner may permit or license other parties to use the invention on mutually agreed terms. The owner can also sell the rights to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection expires, and an invention enters the public domain, that is anyone can commercially use the invention without infringing the patent.
What inventions are patentable
To determine whether the invention relates to something that can be patented, it should not fall within the ambit of Section 3 and Section 4 of the Patent Act. Section 3 and 4 of the Patent Act lists non-patentable materials. If the invention does not fall within the scope of any of the provisions of Section 3 or 4, it means that it is subject to patentability. Legal criteria for the patent of an invention:
Innovation is an important criterion in determining the patent potential of an invention. Section 2(1)(l) of the Patent Act defines innovation or innovation as “any invention or technology that is not intended to be published in any document or publication in the country or elsewhere in the world before the filing of the patent application with full specification, that is the subject matter has not fallen into the public domain or is not a part of state of art”.
Simply putting the need for innovation is fundamental for patents and it should never be published in any public domain.
- Inventive step or non-obviousness
According to Section 2(1)(j) of the Patents Act, the innovation phase is defined as “a feature of an invention that is technologically advanced compared to current knowledge or financial significance or both and makes the invention clear to the skilled person”. This means that innovation should not be obvious to a person who specializes in the same field of innovation. It should be invented and not obvious to a person who specializes in the same field.
- Capable of industrial application
An industrial application is defined under Section 2(1)(ac) of the Patents Act as an “invention capable of being manufactured or used in any industry”. This means that the invention will not be abstract. It must be applied in any industry, i.e. there must be a practical purpose to the invention to obtain a patent.
What inventions are non-patentable
Despite the satisfaction of testing for any innovation, novelty, use, and lack of clarity, it cannot be patented if it falls within any of the criteria under Sections 3 and 4. Section 3 of the Indian Patent Act specifically mentions sixteen exemptions from which a patent cannot be obtained in India.
- A patent must not be a petty invention or contrary to established natural laws.
- The invention of the scientific principle or the formulation of the abstract principle or the invention of any living thing or creature that occurs in nature is not patented.
- Discovering a new form of a known substance that increases the efficiency of that substance or the discovery of a new property or a new use or known process for a known substance, machine, or equipment will not be patented if such a process leads to new production or at least hires a new reactant.
- The alignment or reorganization or duplication of known devices, each operating independently of the other in a known way is excluded from the patent.
- The farming or horticultural method, for example, the actual process of cultivating a new type of soil or wheat cannot be patented.
- Medicine, surgery, immunotherapy, human therapy, or other treatment or any procedure to rid animals of disease or increase their economic value or their products. E.g. Surgery or blood transfusion cannot be patented.
- Non-biological processes other than microorganisms in the form of plants and animals, including seeds, varieties, and species, and especially plants and animals are excluded from patenting for production or promotion.
- Mathematical methods or business methods or algorithms or computer programs cannot be patented.
- Any other aesthetic work, including literary, dramatic, musical, or artistic writing or cinematographic works and television productions is subject to the protection of copyright law and is therefore excluded from the scope of patent law.
- In the opinion of the Central Government, inventions that are useful or related to the production, control, use or disposal, or promotion of mining, extraction, manufacturing, physical and chemical treatment, manufacturing, or nuclear energy are not patented.
Benefits of getting a patent
Patent law makes the inventor the sole owner of their invention and increases their confidence to create more ideas. The owner can get many benefits after getting the patent, some of which are as follows:
- Unique access to each claim from the time of initial filing
Patent registration begins to provide benefits to inventors from the first stage, i.e. the time it takes to file for a patent. As soon as the provisional patent application is filed, the applicant is assured of security and assurance that no other person or organization can get ideas similar to his invention. If another person applies for the same patent, their request will be denied at the time of filing, which is 12 months in India.
- Freedom to change
Patent law gives the owner the right to use his ideas in any way for as long as allowed. This means that the owner has complete freedom to use, sell or modify the original invention and to prevent others from profiting from the same idea without his permission. Once a patent is granted, the inventor can sue the consumer who is found to have infringed his or her patent rights. Note that patent infringement is a criminal offense.
- ROI (Return on Investment)
Sometimes, the owner realizes that his invention is not giving him good results and therefore, he wants to hand it over to a qualified or successful person. Once acquired, the patent right allows him to earn a good amount of ROI, i.e., return on his investment by commercializing the invention.
- Chances of getting a good name in the market
Patent rights allow the inventor to gain a recognizable market position and improve his portfolio by publicly disclosing the invention. This will help him to develop better relationships with customers and competitors, which will ultimately contribute to his income.
- Public exposure
Patent rights allow for public disclosure, which helps the inventor build his portfolio, while at the same time increasing funding, market value, and business partners. Publicly sharing information related to innovation demonstrates a good grasp of the skill and technicality of the inventors. All of these facts benefit the employer by attracting major and top-level investors, shareholders, business partners, and customers.
How much time does it take to get patent rights
Patents in India are valid for 20 years from the date of filing. No official grant fee is indicated. The annual maintenance of an Indian patent valid for the first 3 years must be paid before the expiration of the second year from the date of filing or priority after the completion of the patent registration process. If the patent is granted two years after the date of filing, it is possible to pay the annuity in an accrued manner within three months of being granted. It is also mandatory to file a work declaration with the Indian Patent Office for all patents granted by March 31 of each year, providing information on the commercial performance of the patent during the previous calendar year. Granting a patent can take more than 2 or 3 years by the normal way and less than 1 or 1.5 years by the fast way.
- The period for filing a patent application stating the traditional priority in India is 12 months from the date of priority. This period cannot be restored.
- The official language of patent registration in India is English or Hindi. It is possible to submit the application in a foreign language and submit the translation within three months as invited by the Indian Intellectual Property Office. However, it is highly recommended that the translation be submitted at the time of filing.
- If the priority document is not in English, the last date to submit an English translation of the priority document is 12 months from the date of initial priority claimed. If the Priority Document (and its English translation, if applicable) is not submitted within 12 months, it will be submitted within three months from the date of the invitation from the Indian Patent Office.
- A scanned copy of the Power of Attorney may be submitted within 3 months from the date of filing, however, if requested, must be submitted within 15 days from the date of receipt of the notification from the original office. No certification or notarization of power of attorney is required.
- Patent applications in India are subject to formal and preliminary examinations. The request for the original examination of the patent application in India must be made within 48 months from the date of priority. It is possible to request a speedy investigation under the Patent Prosecution Highway (PPH).
The term of the European patent is 20 years from the filing date. The official grant fee must be paid within four months of the European Patent Office (EPO) communication. Annuities apply to pending applications and are paid from the third year of filing. The annual fee must be paid on the last day of the month following the anniversary of the date the European patent application was filed and will not be paid until three months before it is due. Late payment is possible within six months after the due date subject to payment of a surcharge. It takes an average of 3 to 5 years to obtain a European patent certificate.
- The deadline for filing a patent application prior to the previous application with the EPO is 12 months from the date of priority. Priority renewal is possible within two months from the missed deadline.
- The official languages of the European Patent Office are English, French, and German. An application for a European patent may be filed in any language, but a translation into one of the official languages of the application must be submitted within two months from the date of filing. Following the issuance of a patent decision, patent claims must be translated into two other official languages.
- A certified copy of the priority document must be submitted within 16 months from the date of priority.
- The EPO will review applications under official requirements after the application filing date. A patent search is a mandatory step in the European patent granting process. This must be requested at the time of filing.
- A request to conduct an actual investigation of a European patent application must be filed within six months of the publication of the Discovery Report. In some cases, it may be possible to request a rapid test via the PPH route.
United States of America
The official issue fee for a patent in the United States must be paid within three months of the mail of the allowance notice. The annual fee is payable within 3.5, 7.5, and 11.5 years from the date the patent is issued and can be paid within 5 months from the due date without any surcharge. Late payment with surcharge is possible within 6 months from the expiry of the above period. Advance payment is not available. Valid for twenty years from the date the patent was filed in the United States. In the United States, it takes an average of 32 months to file a patent.
- The official language of U.S. patent applications is English. When filing a non-provisional patent application, it must be submitted in English or, in addition to the English translation, a statement stating that the translation is accurate and a related fee must be paid. If translation, explanation, and fee are not submitted at the time of filing, notice and time limit will be given for submission of missing items.
- A certified copy of the priority document must be filed within four months from the date of applying or within sixteen months from the date of filing the preliminary foreign application. If not in English, translation may be required to establish the right of preference.
- The applicant is responsible for disclosing through the Information Disclosure Statement (IDS) any information deemed important to determine the patent potential of the claimed invention. This duty applies to the legal representative of the applicant and any person involved in the registration of the application. Information can be of any kind and is not limited to advanced art.
- The duty continues until the patent is issued or the application is abandoned. Deliberate failure to submit the IDS may result in the patent being declared invalid. If the IDS is filed within three months from the date of applying or before the first office action, there is no need to pay the government fee for filing the IDS. Any information contained in the IDS is already known from the Foreign Patent Office prior to the filing of 3 IDs in the equivalent foreign application, or if it is more than 3 months before the applicant or the applicant’s representative. For IDS filing, an additional official fee must be paid.
Patents in China are in force for twenty years from the filing date. The first annual fee must be paid at the time of registration. All subsequent annual fees must be paid in advance before the anniversary of the date of filing. Late payment within a grace period of six months is possible by paying the relevant surcharge. The average processing time for a patent registration process in China is 3 years.
- The period for filing patent applications with the National Intellectual Property Administration of China is 12 months from the date of priority. This term cannot be extended.
- The official language is Chinese. The Chinese translation of the application must be submitted at the time of filing; Late filing does not apply. To obtain a filing date, the applicant and inventor are required to provide China’s National Intellectual Property Administration with details and application materials.
- A generally signed copy of the Power of Attorney must be provided within three months from the date of filing.
- A certified copy of the priority document must be provided within sixteen months from the date of priority. The title of the priority document should be translated into Chinese.
- Patent applications in China go through formal and factual examinations. The request to conduct the actual examination must be made within three years from the date of filing or, if priority is claimed, from the date of priority.
- Disclosure of information about an invention within six months of entering China does not preclude its innovation if it is exhibited for the first time at an international exhibition sponsored or recognized by the Government of China;
Patents in Japan are in force for twenty years from the date of filling. The official grant fee for a patent in Japan must be paid within 30 days from the date of receipt of the allowance notice. The first three years of the annuity must be paid together with the grant fee. The management fee for the fourth and subsequent years must be paid annually before the actual grant date anniversary. Late payment within 6 months is possible with a 100% surcharge. The annual maintenance fee depends on the number of claims. It is possible to pay the annuity on an accrual basis. The estimated time from filing a request to grant a patent application is nearly about 22 months.
- The period for filing a traditional patent application in Japan is 12 months from the date of priority. This period cannot be restored.
- A Japanese patent application under the Paris Convention can be filed in any foreign language. Its Japanese translation must be submitted within 16 months from the date of filing or the initial priority date. However, if the patent application is based on a divisional, modified, or utility model application, the applicant must submit a translation within two months from the date of filing such application. If the translation is not submitted within the above period, a notice of failure to file the translation will be issued by the Japanese Patent Office. The applicant must provide the translation within two months from the date of giving the notice.
- To confirm the right of priority, an applicant must submit a certified copy of the priority document within 16 months from the date of priority. The first page needs to be translated into Japanese. The preference of some countries is accepted without a certified copy of the Digital Access Service (DAS) code provided or by mutual agreement.
- In Japan, patent applications are considered according to official and actual requirements. The request for an original investigation must be filed within three years from the date the patent application was filed in Japan. It is possible to request a speedy investigation under the PPH.
- A protest against patent registration in Japan may be filed by an interested party subject to payment of the relevant fee within 6 months from the date of publication.
- Any disclosure of the inventor (including the sale) within twelve months from the date of filing the patent application in Japan denies the novelty of the invention.
The wise use of patent information, which is a unique source of technical, business, and legal information, contributes to the success of any organization, large or small. Today’s rapid development has opened up new avenues for smart businesses to use patented information to improve their business strategies in the domestic and export markets. The low cost of accessing patent information makes it a particularly attractive option for small and medium-sized companies.
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