Patent Business Lawyer in Asia

Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law


In accordance with the Indian Patents Act, 1970, definition of invention and inventive step include:

Section 2(1) (j) “invention” means a new product or process involving an inventive step and capable of industrial application;

Section 2(1) (ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

In essence, the inventive step of the technology to be patented should illustrate technical advancement or economic significance in the subject matter of the patent application as compared to the existing knowledge which is already known to a person skilled in the similar domain. More details can be read here.

Patentability of an invention refers to patent eligibility of the invention, as defined in the patent laws. When a patent application is examined by the patent office, the primary goal of the patent examiner is to determine the patentability of the invention as defined by the patent claims, as described in detail by the patent description, and as illustrated by way of patent drawings. The intention is to ensure that the technology covered by the patent application is new and the subject matter of the patent description and patents claims was not disclosed in public domain before the date of filing of patent application, or before the first priority date of the patent application. More details can be read here.

A patent application filed with the Indian Patent Office is examined by the patent examiner only after the patent applicant files a request for examination via Form 18 / Form 18A, as per the provisions of the Indian Patents Act, 1970 (as amended) and the Patent Rules, 2016 (as amended). The patent applicant can file the patent examination request at the time of filing the patent application or anytime before the expiry of 48 months from the earliest priority date of the patent application. Once the patent examination request is filed, the patent application is examined in due course depending upon the backlog of pending applications at the patent office.

Generally, the patent examiner issues an office action setting forth the basis for rejecting one or more patent claims with respect to prior art / novelty patent search conducted by the patent examiner. The patent applicant responds with amendments in patent claims/ patent drawings and/or arguments, and the examiner issues a next office action, etc. This process continues until the patent application is allowed, abandoned, or appealed. More details can be read here.

Once a patent application is filed with the patent office, patent applicants are required to submit request for early publication of patent application in addition to request for patent examination. Once a patent examination request is filed, the patent office examines the patent application in accordance with patent procedure and provides a patent examination report (patent office action) to the patent applicants, which contains one or more objections relating to novelty, inventive step (non-obviousness), industrial application, sufficiency of disclosure and formal requirements.

Patent office action is also known as the patent examination report, or a FER (first examination report). In accordance with applicable laws and rules, patent applicants are required to submit a detailed response the patent examination report (FER or first examination report) within 6 months of issuance of the first examination report or the office action. A general strategy that can be followed to draft office action response includes preparing submissions for each of the objections raised by the patent examiner. For example, for objections relating to novelty and inventive step (non-obviousness), one of the strategies can be to amend the patent claims by limiting the scope of originally filed claims. This can be done in consultation with a patent attorney, whereby, certain features from the dependent claims (or detailed description) can be added to the independent claims to ensure that the amended claims are novel and inventive as compared to the prior arts (patent and non-patent literature) cited by the patent examiner. Therefore, chances of overcoming such objections get better when novel aspects of the invention are combined with the independent claims. More details can be read here.

Once the patent is filled, the patent applicant can file for examination with a period of 48 months from the date of filling the application by Form 18 (Request for Examination) by paying an examination fee mentioned in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003). In case no request for examination is filed within the aforesaid period, the application is considered to be abandoned.

Once the controller at the Patent Office receives the receipt of the request for examination, he/she examines the report on the basis of Section 12 & 13 of the Patent Act, 1970 and if there are any objections, a FER (First Examination Report) is issued to the applicant which states all the mistakes and errors that were made by the applicant in the patent application. The applicant is given a period of 6 months to rectify the mistakes and send the appropriate response to the controller.

An application for patent is required to be accompanied with four basic attachments which is filed under Form 2:

(a) Complete/provisional specification (Section 9 of Patents Act, 1970): A provisional application is a summary of the invention and is filed to protect the invention at its early stage. If an applicant has filed the patent application for grant of patent he/she has to file the complete specification within a period of 12 months from the date of filing of the provisional application or else the application will be considered to be abandoned.

(b) No. of Claim(s): Claims define the contours of legal rights when the patent is granted. Section 10 (4) (c) of the Patents Act, 1970 states that every complete specification must end with a patent claim or patent claims that defines the scope of the invention for which protection is claimed. Generally, a patent application contains a combination of independent and dependent claims, wherein the independent claims disclose the most important features of the invention, and the dependent claims disclose additional features that depend upon the independent claims.

(c) Abstract: Abstract is a concise summary of the invention which the applicant wants to get patented. According to Section 10 (4) (d) of The Patents Act, 1970, every complete specification shall include an abstract section to provide technical information on the invention. According to Rule 13 (7) of The Patent Rules, the abstract section shall begin with the title of the invention.

(d) No. of Drawing(s): The patent applicant shall furnish at least one drawing of the invention he/she seeks to get patented which can also be called a patent illustration, showing every feature of the invention for a better understanding of the invention. The drawings must show every feature of the invention specified in the claims, and it is required by Patent Office rules to be in a particular form.

An approximate basic fee for filling of patent in India under Form 1, 2, 3, 5 & 26 for:

(a) A natural person(s) and/or a startup:

  • E-filing – 1600/-
  • Physical filing – 1750/-

(b) A small entity, alone or with a natural person(s) and/or a startup:

  • E-filing – 4000/-
  • Physical filling – 4400/-

(c) Others alone or with natural person(s) and/or a startup and/or small entity:

  • E-filing – 8000/-
  • Physical filling – 8800/-

Before filing a patent in India, patent applicants are required to understand the complete process of patent filing. In essence, a patent is acquired in India by filling an application for the grant of patent through following documents:

• Form 1 (Application for Grant of Patent);
• Form 2 (Provisional/Complete Specification);
• Form 3 (Statement and undertaking u/s 8 of Patent Act, 1970);
• Form 5 (Declaration as to Inventorship);
• Form 26 (Authorization of a Patent Agent/or any person in a matter or proceeding under the Patent Act).

A patent can be filled either through e-filing or through physical filing. A requisite fee is payable for filling of the patent which is provided in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003).

The patent application is automatically published after a period of 18 months from the date of filling the application for making it a prior art. Prior art acts as evidence that your invention is already known. In case the applicant is desirous of an early publication, he/she can file under Form 9 requesting for an early publication and by paying the requisite fee provided in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003).

Thereafter, the patent applicant can file a request for examination of patent via Form 18 / Form 18A, wherein such request is to be filed within 48 months of the earliest priority date.

Patent applications are divided into one or more types by the patent office, and as per Indian Patent Office, a patent applicant can types multiple kinds of patent applications. The documentary requirements and other formalities for each patent application type are different, and hence it is crucial to identify the exact type of patent application before initiating the patent filing process. While filing for a patent, few things are to be considered. The first is which type of application you are filling.

In India, there are following types of applications:
(a) Ordinary Application is the application which is made at the Patent Office for grant of patent and does not contain any priory claims of application made in any convention country or countries. An ordinary application may be filled through two phases or through just one. Initially as a provisional application, which is followed by a complete application or directly as a complete application only. (Refer to section 9 of the Patents Act, 1970).

(b) Convention Application is a subsequent application made under Section 135 of the Patent Act, 1970, claiming the priority date on the application which was filed earlier, wherein applicant has already filed an application for grant of patent in a convention country or countries. A convention application has to be filed within a period of 12 months from the date of filing of the application in the convention country .
(c) PCT Application stands for Patent Cooperation Treaty. The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states/countries. The applicant gets 30-31 months’ time to enter into these countries for getting protection on its invention, wherein such an application is called PCT National Phase Application. In addition, patent applicants can file a PCT International Application, either with the Indian Patent Office as Receiving Office, or directly with International Bureau (IB) of the World Intellectual Property Organization (WIPO).

(d) Divisional Application is filed under two circumstances:
• When the applicant believes that his/her application contains more than one invention and the other inventions can be differentiated from the original application and filed as a separate application.
• When the controller of patent is of the opinion that the application contains of claims for more than one invention.
(e) Additional Application (for a patent of addition) can be filled by an applicant when he/she is desirous of making changes or making improvements to the earlier invention. No additional fee is charged for filing of an additional application. The patent for addition will be granted along with the original application.

The patent law in India defines various categories of patent applicants. Depending upon the category and type of the patent applicant, the documentary requirements and the official filing fee varies. In essence, a patent in India can be filed by:
1. A natural person(s) and/or a startup;
2. A small entity, alone or with a natural person(s) and/or a startup;
3. Others alone or with natural person(s) and/or a startup and/or small entity.

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