Indian Patent Law is defined by various provisions of The Patents Act, 1970, which has been amended since introduction. Under this law, patent rights are granted for inventions covering a new and inventive process, product or an article of manufacture that are able to satisfy the patent eligibility requirements of having novelty, inventive step, and are capable of industrial application.
The patent law in India has gone through multiple rounds of amendments and has developed into a strong regime as per present version. The Patents (Amendment) Act, 2005 and the Patent (Amendment) Rules 2005 came into force on 1st Jan 2005. The period for grant of patent has shortened considerably allowing the publication of the application. The new procedure for filing is as under:
(a) Application made under FORM 1 (for Indian as well as PCT patent)
(b) If the process starts with filing a ‘Provisional Specification’ then Complete Specification has to be filed within 12 months. No extension of time is allowed under any circumstances.
(c) Request for early publication vide FORM 9 can be made to the controller (Optional)
(d) After publication, pre-grant opposition is invited from the public.
(e) Simultaneously, request for examination can be made within 48 months of the priority date.
(f) A First Examination Report (FER) is furnished wherein any objections are communicated to the patentee or his authorized patent agent or patent lawyer. These have to be responded within 6 months from the date of the communication.
(g) Once objections are removed and the application found to be in order, the patent is granted under Section 43.
(h) Then with the seal of the patent office, the date on which it is granted is entered in the register of patents.
If any changes or amendments are substantive in the patent that has been granted, then that shall be advertised by the controller.
Pharmaceutical and Biotech patents are registered in India after undergoing stringent examination process. In Section 3, which specifies inventions that are not patentable, under clause (d) where new use of the existing substance, process, the machine results in a new product or at best one new outcome, can be patented. Also, the provisions of the patent law allow patenting of product in chemicals, biotechnology, food processing, drugs and pharmaceuticals, not just the process.
The Patent (Amendment) Rules, 2016 came into force on 16th May 2016. The category of Startups as patent applicant has been introduced, wherein Startup has been defined in the Rules as an entity (private limited company/partnership/LLP) where: (a) More than five years have not been completed from the date of its incorporation/registration, and, (b) The turnover (any financial year of the past five years) is not above 25 crores.
For the purposes of leaving and serving of documents, a patent agent has to file, leave, make or give all documents through electronic transmission including scanned copies of documents that are required to be submitted in original. There is also a provision of return of fee, and when an application filed is partially or completely transferred to any person other than a natural person or startup, the difference in the scale of fees is paid by the new applicant along with the request for transfer. In such a scenario, where the fee was paid more than once during the online filing process, then such amount will be refunded, and an applicant can claim a refund of the 90% of fees paid for a request for examination or expedited examination, by filing a request for withdrawal of a patent application before the issuance of the First Examination Report.
The patent law provides mechanism for expedited patent examination of a patent application, wherein when the applicant wishes to advance the process of application, such request can be filed vide FORM 18A by electronic transmission within 48 months from the date of priority on one of the following grounds:
(a) India is the competent International Searching Authority or International Preliminary Examining Authority in the International Application;
(b) The applicant is a startup.
As a practice guideline, the patent examiner shall make a report within one month but not exceeding two months. Following which, the Controller shall dispose of the same within one month and issue First Examination Report to the applicant or his agent within 15 days.
By way of this patent amendment, the time to insert application in order for the grant has been reduced from twelve months to six months starting from the date of issuance of the First Examination Report. Also, the deadline to file power of attorney is three months from the date of filing of patent application.
The Patents (Amendment) Rules, 2018 were published on 4th of December, 2018. As per these rules, for International applications, documents will be allowed to be submitted only via electronic submission. The transmittal fee has been removed while filing international patent applications through e-PCT. In addition, the preparation of the certified copies of the priority documents and re-transmission through WIPO DAS has been made free. The patent applicants are eligible for filing a request for expedited examination extended to contain female applicants, applicants eligible for PPH program participation, small entities and government undertakings substituting as applicants. In addition, the pre-grant opposition has to be decided by a bench comprising of two members, and a third member will be assigned to the bench to arrive at a final decision, where there are different opinions on the issue.
The Patent (Amendment) Rules, 2019 were published on 17th September 2019. As per rule 6(1A), the mandatory filing requirement of the original documents has been waived off and filing the scanned copies of any original documents would be sufficient. Also, as per rule 7, which is applicable for startups also, every time a document requiring a fee is to be filed, both the ‘small entity’ and ‘startup’ applicants are required to submit Form 28.
In addition to the above, the rule 24C allows expanding of the expedited examination to more applicants, wherein the expedited examination can be made in 8 more categories, and corresponding changes in Form 18A have been made to include all-new categories, with the evidence required to be submitted for each category. Moreover, the waiver of the fee for filing a PCT Application has been introduced, wherein the waiver shall include the transmittal fee for the e-PCT filing and the fee for certified priority document if e-transmission through WIPO DAS is used.
India is starting to be perceived as an expert pioneer jurisdiction with courts having a more prominent comprehension of patent laws. Besides, with an appropriate legal system set up and no discrimination on the nationality of the individuals affirming their patent rights, India has seen a complex increment in the declaration of patent rights by inventors.
This is one side to the patterns of prosecution in India, particularly for IPR matters. From the opposite side, the pattern has been that once an ex parte order approved, it takes a lot of effort to remove such directive and for the trial to finish up. Besides, when a directive is approved, the party in whose favour such order is conceded will in general defer the procedures and prolong the trials.
To check this misuse of the legal right conceded to the defendants, the Three Judges Bench of the Hon’ble Supreme Court in the milestone instance of Asian Resurfacing of Road Agency Pvt. Ltd. also, Ors. v Central Bureau of Investigation ((2018) 16 SCC 299) coordinated that in every single pending situation were to remain against procedures of civil or criminal trials is operating, the similar will conclude expiry of 6 months, except if in an uncommon case by a speaking order such stay is extended.
Courts in India, particularly in patent and IP matters, have perceived the significance of reducing wilful infringement of IP rights and have been generously approving punitive damages to the pioneers. Even though the measure of punitive damages approved by the courts isn’t exceptionally huge, such damages are allowed notwithstanding the real damages and go about as a warning.
The Indian prosecution patterns have a reasonable methodology for courts in IP issues including patent infringement matters. On one side, courts don’t avoid allowing ex parte directives against infringers and delayed ex parte orders are likewise disliked. Besides, with new laws set up, the time taken to finish a preliminary has been abbreviated fundamentally.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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