Isn’t it interesting to know that technological companies create monopoly over their inventions, for instance – Apple’s patent for the safety feature in its AirPods? Many tech companies, specifically technology manufacturing companies apply for patent protection for their products (or features contained therein).
In India, the provisions relating to registration and enforcement of patents are contained under the Patent Act, 1970 (“Patent Act”) and its corresponding rules namely Patent Rules, 2003 (“Patent Rules”). Intellectual property rights such as patent are applied for new technologies and innovations. In India, where there have been rapid developments in the tech industry in the recent past, there are numerous innovations which are eligible to be protected by the exclusive right of a patent. Any person (having locus standi under the Patents Act) is permitted to apply for a patent for an invention. A grant of patent is made for a period of 20 (twenty) years in India.
Interestingly, India is also a signatory to the Patent Cooperation Treaty, which permits an applicant to file an application for registration of an international patent. Upon filing such application, an inventor can obtain patent protection in multiple countries (member of the aforesaid treaty) simultaneously.
Furthermore, the Patent Act affords each inventor (whose patent has been registered) with certain rights such as the right to prevent third parties from using, selling, making, importing, etc. the product or process without prior consent from the inventor.
This article focuses on patent applications in India, specifically on the technical aspects of patent application including the process and the steps involved in filing an application for the grant of a patent; and the documents which are required for filing the application.
If you require legal assistance with Intellectual Property matters, A&A is the go-to destination to find some of the most accomplished Intellectual Property attorneys in India. Don’t hesitate to reach out to us for any IP-related concerns.
What is a Patent?
A ‘Patent’, in basic terms, is an exclusive right that is granted to any invention (whether a process or a product) under the Patents Act. An ‘invention’, as per the Patents Act is defined as ‘a new product or process involving an inventive step and capable of industrial application’. The definition highlights three important components, also referred to as the patentability requirements, namely:
- The invention should be a new invention i.e., the invention should not be disclosed in the public domain in any manner prior to the date of filing of patent application.
- The product or process that has to be patented should involve an inventive step i.e. the invention should in some manner involve technical advancement as opposed to the existing knowledge. In simpler words, the invention should not be obvious to another person possessing the same skill set.
- The invention should be capable of industrial application, i.e. the process or product intended to be patented should have the ability to be used or made in a particular industry or any industry.
It is only upon satisfying these requirements that an invention becomes eligible for protection under the Patents Act, 1970.
How to apply for a patent in India
A patent can be filed either physically, by submitting the necessary documents to a patent registry present in the jurisdiction or near such jurisdiction, or it can be filed electronically through the intellectual property e-filing portal.
Each invention is permitted to correspond with one application that is required to be filed under the prescribed form as provided under the Patent Act and the Patent Rules.
Documents Required for filing a Patent Application
Enumerated below are the documents required for filing and prosecuting a patent application in India.
1. Form 1 – Application for Grant of Patent
The application for grant of patent (under Form 1) includes preliminary and basic information as regards the inventor. To elaborate further, Form 1 contains information such as – personal details of the inventor(s); the title of the invention; whether the inventor is a natural person or an entity; in case an agent has been appointed by the applicant, then the details (including name, contact number and address of the agent); address for service of applicant in India. Additionally, certain declarations are collected as part of Form 1.
In the event a start-up or a small entity is desirous of filing a patent application, they can do so by filing Form 28.
2. Form 2 – Provisional/ Complete Specification
Form 2 specifically requires the detailed specifications with regards the invention of the product or the process. In the event an inventor does not have the complete specification for the invention at the time of filing or in case the invention is at a nascent stage, the inventor may provide provisional specification with regards the invention. However, it is pertinent to note that the complete specification of the invention has to be provided within 12 (twelve) months of filing the patent application pursuant to section 9(1) of the Patents Act. The ramification of not filing the complete specification within 12 months of filing the application is that the application would automatically be abandoned.
A provisional specification (filed under form 2) is required to include the description of the invention; the title indicating the subject-matter of the invention; drawings and/or model/ sample illustrating the invention. Further, section 10 (4) of the Patent Act provides the details that have to provided when filing a complete specification, which includes:
- the description of the invention;
- best method for performing the invention for which the inventor is entitled to claim protection;
- a claim or claims defining the scope of the invention for which protection shall be claimed; and
- an abstract providing a technical know- how of the invention.
3. Form 3 – Statement and Undertaking
An inventor filing an international patent application for his invention is required to provide a statement encompassing the details for such application as well as an undertaking that the inventor (from time to time) would inform the Controller General of Patents, Designs and Trademarks (“Controller General”) (in writing) of any applications filed with regards the same or similar inventions in any country outside India.
4. Form 5 – Declaration as to Inventorship
Pursuant to section 10(6) of the Patents Act, an inventor is required to provide a declaration stating that they are the true inventor(s) of the invention.
5. Form 26 – Power of Attorney
In the event a patent application is being filed by a Patent Agent or any other agent (as the case may be) on behalf of the inventor, then the inventor is required to assign the power of attorney under form 26 to such patent agent/agent for the purposes of correspondence and communication (on behalf of the inventor) with the relevant authorities.
Steps to register a Patent
The steps from the initiation of an invention to the grant of patent for the invention are elaborated below:
Considering an Invention
When an inventor decides on inventing a product or a process, it is imperative that the inventor take note of all details as regards the invention including the steps, the minute details and any diagrams, steps, mechanism that may be involved in creating the invention.
Importantly, the Patents Act (under section 3) provides certain category of processes and products that are excluded from being considered as inventions, such as literary, dramatic or artistic work; any process for the medicinal, surgical purpose for any treatment of human beings; any invention that is frivolous in nature; any invention that is contrary to public order and morality and its intended uses is for commercial exploitation, etc. An inventor has to make sure that their invention complies with the requirements of (as mentioned above in Part II) novelty, inclusion of an inventive step and being capable of industrial application and also to ensure that their particular invention does not fall under the ambit of section 3 of the Patents Act.
Before filing a patent application, it is imperative to conduct a patent search for existence of similar inventions. To reiterate, it is imperative that an invention be novel, non-obvious, include an inventive step and be capable of industrial practice. Therefore, in order to avoid any rejection from the relevant authorities with regards patent protection, it is imperative that a patent search be conducted prior to filing an application.
Drafting of Application
This is the most important step in the process of patent registration. As has been mentioned above, an application for grant of patent is accompanied by Form 2, which requires the inventor to provide specifications as regards their invention. It is advisable that the specification be as detailed as possible and include the various parts of the invention (if divided in stages); drawings and diagrams to showcase the mechanism of the inventions; background of the invention; a detailed description of what the invention entails, the purpose for which it is being created and how it would serve the particular industry it would potentially belong to; an abstract of the description as well as a summary of the invention.
Filing of the Application
An application for grant of patent can be filed either physically at the patent registry or it could be filed electronically. Form 1 (with the primary details of the inventor) or Form 28 (in case of start- ups and small entities); Form 2 (with the provision or complete specifications); Form 3 (in case the application is an international application); Form 5 (declaring all the inventors of the invention) and Form 26 (power of attorney, if the application is being filed by an attorney), have to be filed together on the portal or posted to the registry along with the payment of the applicable fee for patent registration.
Most importantly, in the event, a complete specification is filed within 12 (twelve) months of filing the application, the inventor shall secure a prior date of filing on the application that was initially filed (with the provisional specification).
An application for grant of patent is published 18 (eighteen) months after filing of the application or from the date of priority, whichever is earlier (Rule 24 of the Patent Rules).
Interestingly, the Patent Act provides for expediting of publication of an application in case the Applicant does not wish to wait for the entirety of the 18 (eighteen) month period. In such a case, the applicant can file Form 9 (request for an early publication) along with the prescribed fee. In furtherance of the request for an early publication, the Controller General will be required to publish the application within 1 (one) month of filing the request.
Furthermore, from the date of publication to the date of grant of patent, an application is afforded the same privileges and rights as if a patent for the invention had been granted (from the date of publication of application).
Request for Examination
It is pertinent to note that subsequent to publication of the application, a request for examination has to be filed under Form 18. Unfortunately, the process for examination as regards patent application is not an automatic process. The request for examination has to be filed within 48 (forty-eight) months from the date of filing or date of priority of the application. Similar to publication, a request for an early examination can be filed under Form 18A. The Controller General, subsequent to the filing of request for examination, would refer the application, specifications, and other related documents to an examiner. The examiner would formulate the first examination report within 1 (one) month (but not exceeding 3 (three) months from the date of reference by the Controller General).
In case any objections are raised under the first examination report, the applicant (inventor) or the assigned agent (on behalf of the applicant) is required to file a response to the raised objections (reply to first examination report) and to comply with any requirements (as raised), within a period of 6 (six) months (from the date on which the first examination report was issued).
Grant of Patent
Subject to all objections being cleared, in the event the examiner and the Controller comes to the conclusion that the application and the ancillary documents are statutorily compliant, an order for grant of patent is notified to the applicant (or the agent) and subsequently published in the patents journal.
In case there are any opposition to the grant of patent, any person is permitted to file a notice of opposition addressed to the Controller General, within 1 (one) year from date of publication from grant of patent.
A patented invention affords exclusive rights to an inventor for a period of 20 (twenty) years. These exclusive rights protect an invention from being commercially used, made, marketed, imported, distributed or sold by any person other than the inventor. While the process of filing for a grant of patent may be lengthy and comprehensive, it protects the invention and provides the inventor the sole right to use the invention. Additionally, any identical or similar invention (if applied for) would be rejected, owing to a prior existing invention.
On a general note, the key thing to remember is that when inventing or creating a product or a process, it is pertinent that all attributes, aspects, mechanisms, details, drawing, diagrams, models, etc. be noted down to ensure proper drafting of the specifications (as part of the application). More importantly, it is imperative that the invention not be published, leaked or disclosed in the public domain prior to the grant of patent as this would make the invention ineligible to be granted a patent for the product/process.
Furthermore, a grant of patent would only be afforded to a person if their application and invention satisfy the patentability requirements i.e. the invention is novel; includes an inventive step and is capable of industrial application.
With the increased awareness about intellectual property rights and specifically patent protection, it is important that such protection be sought with regards an invention to protect the exclusive rights in respect thereof (including the right to commercially exploit such invention).
Frequently asked questions
1.What is a patent?
A patent is an exclusive right granted in respect of an invention (which can either be a product or a process). A grant of patent protects an invention from being commercially used, distributed, marketed, imported or re-created.
2. How long is a patent right granted for?
A Patent is granted for a period of 20 (twenty) years.
3. What are the documents required for filing an application for grant of patent?
The following documents are required for filing a patent application: Form 1 (application) or Form 28 (application for start-ups or small entities); Form 2 (specifications); Form 3 (statement and undertaking in case of an international application); Form 5 (declaration of inventorship) and Form 26 (power of attorney, in case the applicant is desirous of appointing an agent for filing and prosecuting the patent application).
4. I don’t wish to wait for the entire period of 18 (eighteen) months for my application to be published? Is there any way I can request for an expedited publication?
Yes. In the event, you don’t wish to wait for the entire period for publication, a request for an early publication can be filed under Form 9. Upon successful filing of the application for early publication, the Controller shall publish the original application within one month from filing the request.
5. What are the patentability requirements considered by the examiner while examining an application?
The patentability requirements considered by an examiner include that the invention should be novel i.e. it should not be existing in the public domain; it should include an inventive step i.e. it should be an advancement vis-à-vis the existing knowledge; and lastly it should be capable of industrial applicability.
6. What are the steps to file a Patent?
The steps to file a patent includes prior art search; filing of the application; publication of application; request for examination; response to objections and subsequently grant of patent.