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This article is written by Vedant Saxena from Rajiv Gandhi National University of Law, Punjab. In this article, the author studies the various forms of patent applications in India, and analyzes the grounds upon which they are accepted or rejected.

Introduction 

In India, patents are governed by the Patents Act, 1970. A patent is an exclusive right granted to the inventor over his invention, which enables him to exclude others from making, using or selling his invention. In order to encourage creativity, patents fulfil 2 purposes. Firstly, they promote the economic well-being of the inventors. Second, by publishing the contents of the invention, it is made clear amongst the people of the country that a similar patent application shall not be entertained, thereby encouraging greater innovation. However, for the grant of a patent, 3 major conditions need to be fulfilled: novelty, non-obviousness and utility.

Novelty

After around a period of 18 months from the earliest priority date of the application, the contents of the invention are published by the patent office. This is done to make sure that a similar invention shall not be entertained from now on. Thus, in order to acquire a patent, the invention must be novel.

Non-obviousness

Non-obviousness essentially implies that the invention must not come up in a manner which is fairly obvious to the trade. 

Utility

No matter how novel or non-obvious an invention maybe, if it cannot serve a practical purpose, the patent shall not be granted. Although there exist various types of patents, such as utility patents, design patents, plant patents, etc., speaking in the context of a usual patent application, one mostly refers to utility patents. If the invention serves no practical purpose but is uniquely decorative, one may apply for a design patent. 

Types of patent applications

Provisional application

A provisional application is usually filed when the invention has not yet been completed in totality or has not yet been tested. A provisional application helps in establishing the priority date. Priority date refers to the first date of filing a patent application. If the final application were to be filed within 12 months of the priority date, the priority date itself would be considered as the date of submission of the patent application. There are several advantages of filing a provisional patent application:

  1. The applicant gets sufficient time to finalize his invention and ascertain its market potential.
  2. It is less expensive to file a provisional application.
  3. The priority date helps establish priority over upcoming similar inventions.
  4. A provisional application also enables the applicant sufficient time to file international applications in various countries, and claim the priority date.

Ordinary application

An ordinary patent application refers to an application filed without claiming any priority date and is made without any reference to any other application under process. Therefore, in an ordinary patent application, the priority date and the date of filing coincide. An ordinary application must be accompanied by a complete specification and claims.

Convention application

A convention application is similar to a provisional application, in the context of establishing the priority date. In a convention application, the applicant claims priority based on a fairly similar application filed in one or more of the convention countries. Each country enables a specific time within which the convention application may be filed claiming priority. For instance, the Indian patent office enables a period of 12 months after the date of filing in one or more of the convention countries, within which the convention application may be filed. 

Minimum documents required (maybe filed before 12 months)

  1. Name, address and Nationality of Applicants and inventors.
  2. Priority application number, date of filing, country, title of invention and applicant in convention country.
  3. Patent specification, claims and drawings in English. (Preferably send by email)

Complete filing requirements (may be filed after 12 months)

  1. Certified copy of Priority documents (within 6 months).
  2. A true translated copy of complete specification filed in a convention country, if the original application was not in English (within 6 months).
  3. Proof of Right to file Patent (like Assignment Deed or Employment contract or Form-1 signed by inventors): within 6 months.
  4. Power of Attorney (may be filed later; no late fee).
  5. Following information (as far as available) regarding the application filed in other countries, if any:
  • Name of the Country
  • Date of Application
  • Application No.
  • Status of the application
  • Date of publication
  • Date of grant
  • Certified Copy of Priority Documents

6. For convention applications, a certified copy of priority documents with English translation has to be filed within 3 months from the date of communication by the Controller.

PCT application

A PCT application, governed by the Patent Cooperation Treaty, is an international application that helps to patent one’s invention in up to 142 countries. For a person seeking widespread recognition and protection of his invention, the PCT application is arguably the best choice. There are several ways in which a PCT application may be filed:

There are several advantages of pursuing international protection through a PCT application:

  • By filing a single international application, one may be able to help protect his invention in up to 142 countries.
  • From the date of filing of the international application, a hefty time period of 30-31 months is provided to the applicant, in order to file national phase applications in his selected countries and test the feasibility of his invention.
  • Also provides for an international prior art search. A prior art search is quintessential in order to determine the novelness of the invention, for a patent may only be obtained if the invention is novel and non-obvious. 
  • It provides an option for requesting an International Preliminary Examination Report, the report containing an opinion on the patentability of the invention.
  • The international prior art search and preliminary examination report help inform the applicant about the status of his invention, and thus help him save out on costs and time before the national phase filing commences.
  • It also gives the applicant a reasonable idea of the patentability of the invention before incurring charges for filing and prosecuting the application in each country.

PCT National phase application

The phase of national filing commences after the filing of the international application. An applicant can file a national phase application in India, within 31 months of the date of filing of the international application. 

Language requirement

The Indian national phase application could be filed either in English or in Hindi. While Hindi is an option, even Indian applicants mostly consider filing patent applications in English. Hence, for all practical purposes, one shall consider filing the national phase application in English.

Apart from filing the patent application in English, in case a priority document of the PCT application is not in English, then an English translated priority document should be filed within 31 months from the priority date of the PCT application.

Examination

A national phase application is considered by the IPO only after the applicant files an examination request. The applicant gets 48 months from the date of filing of the international application, to file for an examination request. Failure to do so would lead to the abandonment of the patent application. On the other hand, even if an applicant files a national phase application well before 31 months and also requests for examination, the IPO will queue the national phase application for examination only after 31 months. 

In the event of the applicant wanting the IPO to queue the national phase application for examination before 31 months, then he shall have to make an express request by paying an appropriate fee. Once the examination request is made, the IPO has to ascertain the novelness of the invention by generating a First Examination Report (FER), within a period of 6 months. After the generation of the FER, the applicant has to make the necessary changes within a period of 6 months. However, the time limit of 6 months could be increased by 3 months, if required. 

The statutory fee depends on who the applicant of the patent is. The IPO has categorized the applicants into the following categories:

  1. Natural person/ Startups
  2. Other than natural person – Small Entity
  3. Other than natural person – Others entities except for small entities

Any individual applying for a patent is considered as a natural person. On the other hand, all other entities that do not fall under the first category, fall under the remaining categories of :

  1. Other than natural person – Small Entity
  2. Other than natural person – Others except for small entities

The patent office charges a minimum fee for applicants who are natural persons and Startups. For entities other than natural persons, which are small, the patent office charges a fee greater than that required by natural persons, but less than that required by non-natural persons other than small entities. 

Patent of Addition

More often than not, one comes across certain improvements or modifications with regards to his patent. The improvements or modifications may take place as an ordinary process of improving an invention, or as a result of feedback received from the market or from the industry. In such circumstances, when one has already filed for a patent application or received a patent, and the subsequent improvement/modification lacks novelness or non-obviousness, the option of ‘patent of addition’ is available. As per the Patents Act, 1970, Sections 54, 55, 56 deals with the Patent of Addition, filing and prosecution related thereto. 

Criteria for filing patent of addition application:

  1. Unless and until the applicant requests the patent office for the examination of the parent application, the patent of addition application would not be considered. If the parent application is rejected, so is the patent of addition one. 
  2. A patent of addition application may not necessarily be filed by the same person. 
  3. If the patent of addition is regarding a patent application, the application must essentially be pending before the Controller. While if it is regarding a patent, the patent must be in force.
  4. The original patent and the patent of addition are co-extensive with each other. If at the time of filing for a patent of addition application, the original patent has ceased to exist, the patent of addition shall not be granted. If any time after the grant of a patent of addition, if the original applicant fails to renew the patent, the patent of addition shall cease to exist.
  5. In case of the patent of addition, Section 13(3) of the Patents Rules, 2003 states that each such patent of addition shall include a reference to the main patent or the application for the main patent. Additionally, it must include a definitive statement that the invention is an improvement or modification of the invention claimed in the complete specification of the main application.
  6. According to sections 54 and 55 of the Patents Act, a patent of addition is a standalone patent. Therefore, a patent of application is rendered a new application number, requires a separate request for examination to be filed, is separately published after a period of 18 months, etc. 

Divisional application

If in a single patent application, the applicant has considered more than one invention, he may file for separate patent applications. Such applications are termed as divisional applications. Since all divisional applications arise out of the same patent application, the priority date is the same for all. 

  • The applicant could file for a divisional application with regards to any matter contained in the original application. The date of filing of the original application would be considered as the date of filing of the divisional application. However, the divisional application must not contain matter that has not been mentioned in the original application.
  • The divisional application can be filed at any time after the filing date of the original application but before the original application satisfies all the grant conditions mentioned in the Act, or before the patent application has been refused, withdrawn or treated as having been abandoned.

Conclusion

Patents are considered to be one of the most important forms of intellectual property. Patents have played a decisive role in scientific and technological advancements. There are countless examples of exciting inventions existing as simple, clever ideas, and offering advanced, technical solutions. For instance, on account of Christer Fåhraeus’s C-pen, one can transfer text directly from paper to the computer. Håkan Lans’s invention helped in shortening flight times by enabling pilots to view the exact positions of other aircrafts. Thanks to Mia Seipel, breastfeeding shirts are now available to women across several countries. Had Per-Ingvar Brånemark not discovered a growth attachment instrument and taken the decision to carry out further research, we may not have had any titanium screws within medicine today. Therefore, one must strive towards making his invention as novel and effective as possible. Creativity is the epitome of prosperity. In the 6,000 years of human civilization, creativity has gotten us this far. Imagine where it could lead us across the next few centuries?

References


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