A patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purpose without his consent.
Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.
It is possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices at as Receiving Office (RO) for International application. The addresses of these offices are available on the website of CGPDTM, i.e. www.ipindia.nic.in .
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non-patentable under section 3 and 4 of the Act.
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representatives of any deceased person can also make an application for patent.
A patent application can be filed with Indian Patent office either with complete specification or with provisional specification along with fee as prescribed in schedule. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application. There is no extension of time to file complete specification after expiry of said period.
From 20 th July, 2007 the Indian Patent Office has put in place an online filing application is available on the website of Patent Office, i.e. www.ipindia.nic.in . This facility is also available for filing trademarks application.
An invention to become patentable subject matter must meet the following Criteria-
(a) It should be novel.
(b) It should have inventive step or it must be non-obvious
(c) It should be capable of Industrial application.
(d) It should not fall within the provisions of sections 3 and 4 of the Patents Act, 1970.
The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However, under certain conditions, there is grace period of 12 months for filing application even after publication.
Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However, the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in a exhibition organized by the Government or disclosure before any learned society or published by applicant. The details conditions are provided under Chapter VI of the Act (Section29-34).
All the patent applications are kept secret up to 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the official Journal of the patent office which is published every week and also available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent Office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the patent office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited under the Patent law. However, use of such words by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated.
Marking of a product with the words “patent pending “ or “patent applied for” after filing of the application for patent serve as a notice to the public that an application for patent is pending with the Patent Office but there is no legal significance of these words. The infringement action can be initiated only after the patent is granted.
The patent office has no role in the commercialization of patent. However, the information relating to patent is published in the Patent Office Journal and also published on the Patent Office website is accessible to the public worldwide. This certainly helps the applicant to attract potential user or licensee. The patent office also compiles a list of patents which are not commercially worked in India.
The person concerned can perform a preliminary search on Patent Office website in the Indian patent data base of granted patent or Patent Office journal published every week or by making search in the documents kept in the patent office search and reference room, which contains Indian patents arranged according to international patent classification system as well in serial number. It is open to general public from Monday to Friday, except Gazetted holidays. The Public can also conduct search free of charge on the website of Patent Office. The person concerned can also make a request for such information under section 153 of the Act.
Term of every patent in India in 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.
After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the Schedule I. For first two years, there is no renewal fee. The renewal fee is payable from 3 rd year onwards. In case the renewal is not paid the patent will be ceased.
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
A request for restoration of patent can be filed within 18 months from the date of cessation of patent along with the prescribed fee. After receipt of the request the matter is notified in the official journal for further processing of the request.
No, it is not necessary under the patent law to engage a registered patent agent for filing an application for patent. The applicant is free to file an application by himself or through the patent agent. However, an applicant who is not a resident of India is required to file either through the registered patent agent or must give an address for service in India.
Generally speaking, it is not necessary to obtain prior permission from the Patent
Office to file patent application abroad under following circumstances.
(a) Applicant is not Indian resident and invention is originated abroad about.
(b) If the applicant is Indian resident, a patent application has been filed in India and Six weeks period is over from that date.
(c) The invention does not belong to Atomic energy or defence purpose.
In other circumstances, the prior permission is required. For further details kindly refer to section 39 of the Patents Act, 1970.
The person is required to take prior permission from the Patent office under following circumstances.
(a) The applicant is Indian resident and invention is originated in India.
(b) Applicant does not wish to file patent application is India prior to filing abroad.
Patent laws differ from country to country and there is no “World Patent” or “International Patent”. However, there is an international filing system that is accessible in accordance with patent co-operation treaty (PCT). When a PCT application is filed in one of the member-states of the PCT, this is legally in effect equivalent to filing in all PCT member states, which have been designated in the application. Patent right is granted only by the particular member country after entering the national phase in that country on receipt of applicant (Corresponding to the International applicant).