of Patents, Designs and Trade Marks with the able assistance of Senior Joint, Joint, Deputy, Assistant Controllers of Patents and Designs along with Examiners.

Filing

A patent application may be filed by true and first inventor or an assignee or legal representative of a deceased person entitled to make the application. The applicant may or may not be a citizen of India and the application must be filed with the patent office branch within whose territorial jurisdiction the applicant resides or has a place of business or the place from where the invention actually originated or, in case of a foreign applicant who does not have a place of business or domicile in India, the patent office within whose territorial limits, the address of service in India given by the applicant is situated. Priority in respect of a patent application can be claimed from the earliest corresponding application in a convention country provided the same has been filed within twelve months in India.

Official fee

The fee payable by Natural persons or Small entities or Startups is the same.
Fee payable by Others (alone or with Natural persons or Startups or Small entities) is 5 times the fee payable by Natural persons or Startups or Small entities.

As per the Rules, it is mandatory to file Form-28 (previously used for establishing status of a Small entity) for an entity filing an application and/or other documents in the capacity of a Startup or a Small entity.

Time period for submission of Power of Attorney (Form-26)

The authorization of an agent shall be filed in Form-26 within a period of three months from the date of filing of an application or document, failing which no action shall be taken on such application or document till such deficiency is removed.

International Application

Every international application under the PCT designating India is deemed to be an application under the Act if a corresponding application has also been filed with the Patent Office in India. The date of filing of such application shall be the international filing date under the PCT. The international application as filed under PCT including any amendments made by the applicant under Article 19 or Article 34 of the PCT may be made in Form-1. Provided that the applicant, while filing such application in Form-1, may delete a claim in accordance with Rule 14 of the Rules.

Inventor’s Rights

Each application should be accompanied by declaration as to inventorship and where an inventor has not been mentioned in a patent application, the inventor’s name may be included upon a request or claim subject to satisfaction of the Controller. Furthermore, if a patent is obtained by another in fraud, the rightful person may apply for revocation and grant of patent. The Act is silent on the ownership of an invention by the inventor/s whilst in employment and remuneration therefor.

Refund of fees in the event of withdrawal of application

If an application for which request for examination (RFE) has been filed is withdrawn before issuance of the first examination report (FER), 90% of the fee paid for the RFE or request for expedited examination may be refunded, upon a request made by the applicant.

Time for putting an application in order for grant

In cases where the FER is issued on or after May 16, 2016, time for putting an application in order for grant shall remain six months from the date on which the FER is issued to the applicant to comply with the requirements. The said time period is further extendable for a period of three months upon a request with the prescribed fee before the expiry of the six months’ time period.

Expedited examination of applications

An applicant may file a request for expedited examination along with the prescribed fee on any of the following grounds: a) that India has been elected as the competent International Searching Authority or as an International Preliminary Examination Authority in the corresponding international application; or b) that the applicant is a Startup; or (c) that the applicant is a Small entity; or (d) that the applicant or at least one of the applicants is a female; or (e) that the applicant is a department of the Government; or (f) that the applicant is an institution which is owned or controlled by the Government; or (g) that the applicant is a Government company; or (h) that the applicant is an institution wholly or substantially financed by the Government; or (i) that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government; or (j) that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.

The Rules necessitate mandatory submission of documents specific to each category as evidence of eligibility for availing expedited examination.

Term

The Act envisages the term of a granted patent to be twenty (20) years from the date of filing of the application for the patent, irrespective of date of filing of provisional specification or complete specification.

Patents of Addition/Division of Application

Patents of Addition may be applied for and granted. Further, an application may be divided at the discretion of the applicant or to remedy an objection raised by the Controller. The order of reference of such further application (divisional application) is same as that of the parent application. Provided that in case the parent application has already been referred for examination, the divisional application must be accompanied by a RFE and the divisional application shall be published within one month from the date of filing of such RFE and is thereafter, referred to the examiner within one month from the date of such publication.

Inventions not patentable

The Act outlines inventions that are not patentable. Method of agriculture or horticulture; process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings and animals; the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant are not patentable. Further, mathematical or business methods or computer program per se or algorithms; literary, dramatic, musical or artistic work; presentation of information; method of playing games, inventions relating to atomic energy cannot be protected under the Act.

Examination of Computer Related Inventions (CRIs)

Revised guidelines for examination of Computer Related Inventions (CRIs) have been published on June 30, 2017 by the Patent Office. These guidelines will further foster the uniformity and consistency in the examination of computer related inventions. In particular, these guidelines will bring out clarity in terms of exclusions under Section 3(k) of the Act in order to expedite the examination procedure of the applications relating to such inventions. However, these guidelines do not constitute rule making and are subject to revision from time to time based on interpretations by Courts of law, statutory amendments and inputs from the stakeholders.

Information and undertaking regarding foreign applications

The Act requires all applicants to furnish to the Patent Office an undertaking that upto the date of grant of patent in India, the Controller would be informed in writing, from time to time, detailed particulars in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India. The Controller may also require the applicant to provide at any time before the grant of patent any information relating to the processing of the application in a country outside India. Failure to comply with the above requirement may jeopardize the patent and result in its revocation, eg. Indian Patent No. 213608 granted to Chemtura Corporation was revoked by the Intellectual Property Appellate Board for non-compliance of the prescribed reporting requirements.

Opposition

Two pronged opposition proceedings, namely, pre-grant and post-grant oppositions are available. Whilst pre-grant opposition is in the nature of aiding the examination of an application and any person may oppose upon publication up to the grant. Post-grant opposition is available to a person interested within one year of the publication of the grant. These proceedings take place before the Opposition Board constituted by the Controller.

Revocation

Revocation of a patent on a petition by a person interested on the grounds of inter alia lack of novelty, non-obviousness, wrongful obtainment, wrongful mention of source or geographical origin and so on is envisaged by the Act. Non-working of a patent may be a ground for revocation as well.

Compulsory licence

Patent right generally prevents others from use or working of patentable invention. However, compulsory licence can be requested by any interested person to avoid unreasonable exploitation of patent rights by a patentee so that the inventions are worked in India on a commercial scale. Compulsory licence may be sought after the expiry of three years from the date of the grant of a patent on the following three grounds:

the patented invention is not available to the public at a reasonably affordable price;
the reasonable requirements of the public have not been met; and
the patented invention is not worked in India.

A compulsory licence in relation to Bayer Corporation's patented anti-cancer drug (Nexavar) was issued to Natco Pharma Ltd. in March 2012 primarily as its pricing placed it out of reach of the general public.

Exclusive rights

A patentee has an exclusive right to prevent a third party, who does not have its consent, from the act of making, using, offering for sale, selling or importing the patented product or process. Thus, the patentee has a right to exploit its patent, to sue for infringement and to assign and license the patent rights. The privileges and rights of a patentee goes back to the date of publication, however, an action for infringement can be initiated post grant. Reliefs in any suit for infringement include an injunction, either damages or an account of profits, seizure, forfeiture or destruction of infringing  goods.

Working

A statement regarding working (approximate revenue/ value accrued in India) of the patented invention on a commercial scale in India is required to be filed by the patentee or a licensee in Form 27 once in respect of every financial year (commencing after the financial year in which the patent was granted) within six months from the expiry of such financial year. Details of multiple related patents may be included in one Form. The Form does not require any statement regarding whether any public requirement has been met or information regarding licenses and sublicenses. The Controller General has been issuing notifications to owners and licensees for complying with this requirement. Failure may result in a fine up to ten lac rupees (INR 1,000,000).