Patent Business Lawyer in Asia
Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law
Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law
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. Back to top
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. Back to top
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. Back to top
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/-
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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.
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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. Back to top
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. Back to top
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. Back to top
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. Back to top
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. Back to top
Indian Courts have provided certain insights regarding how to determine inventive step of an invention claimed in patent claims of a patent application. In Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd, it was held by the Indian Supreme court that “The expression” does not involve any “inventive step” and its equivalent word “obvious”, have acquired special significance in the terminology of Patent Law. The ‘obviousness’ has to be strictly and objectively judged. For this determination, several forms of the question have been suggested. Was it for Practical Purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?
To determine Invention Step, the following points should be taken into consideration:
(a) Identify the “person skilled in the art”, i.e. a competent craftsman in same domain or engineer as distinguished from a mere artisan
(b) Identify the relevant common general knowledge of that person at the priority date of filing the patent application;
(c) Identify the inventive concept of the patent claim in question;
(d) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” of the technology and the inventive concept of the patent claims;
The invention as claimed in patent specification should meet the criteria that the invention can be made or used in some kind of industry. The word “Industry” broadly refers to having any useful and practical activity while excluding intellectual or aesthetic activity.
Under section 2(1)(ac) of Indian Patents Act, “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.
However, patent claims relating to “Method of playing games” and “computer programming languages” are not considered to be industrially applicable. The detailed description of the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge.
Therefore, while drafting patent application, writing the advantages of the invention in the last few paragraphs will be helpful to illustrate the industrial applicability of the invention. More details can be read here. Back to top
While drafting a patent application, writing the detailed description of the patent application includes explaining each and every element of the patent claims. One should note that the patent examiner takes into consideration the whole patent document which is read with patent claims and drawings (if any) to determine patentability of the invention.
‘What’ is the invention and ‘How to perform it’ requirement should be taken care off before submitting the Patent Application before the Indian Patent Office. The complete specification should therefore disclose the invention completely to meet the requirement of the Patents Act and should also enable a person skilled in the art to work the invention without any assistance of the patentee or any further experimentation. More details can be read here. Back to top
Law Office of Rahul Dev, Patent Attorneys and Technology Corporate Lawyers, represents a law firm headquartered in Gurgaon, Haryana, with associate offices in New Delhi, in the proximity of the Indian Patent and Trademark Office. We are primarily focused on intellectual property law and provide patent services and patent consultation for large, multi-national corporations, universities, middle-market and emerging market companies, and startups and entrepreneurs.
We handle patent prosecution in India by facilitating the interaction between inventors, patent applicants and Indian patent office, which usually includes highly complex technical and legal issues. Our team has significant experience in handling the entire patent process in India and we possess strong understanding of the relevant procedures and the potential pitfalls.
We have successfully advised our clients to obtain patent protection in India and across international jurisdictions (US, Europe, UK, Singapore, Malaysia) for a wide scale of technologies, and our patent attorneys possess years of experience in patent research, patent prior art searches, patentability analysis, patent analytics, patent application drafting, patent claim drafting, patent prosecution, , licensing, and other intellectual property-related issues.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyerpracticing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyeron Twitter
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Practice areas include drafting and filing patent applications, patent prior art searches, patent prosecution, patent filing in India, PCT national phase entry in India, PCT international applications with WIPO, freedom to operate searches, patentability analysis and patent strategy to create a valuable patent portfolio.
Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).
Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office action responses, patent infringement litigation, patent claim mapping and patent licensing. For international patent filings, we have an established network of global patent attorneys to provide reliable and cost effective services to our clients.
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Originally published here.
Software patents are granted in India if the computer related inventions pass the patent eligibility test. Software patents are granted by the Indian patent office for inventions that are novel, inventive, and are capable of industrial application. Software patents comprising innovative processes combined with hardware aspects can be registered under Indian patent laws.
For the purposes of patent registration in India, the process / method claims of software patents should be drafted in combination with apparatus / system claims including hardware features, which should not be a general hardware, such as a computer, or a mobile device. In addition, the system / apparatus claims should be limited by novel aspects of the corresponding methods or processes. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
Yes, software / computer related innovations can be protected under patent rights as provided by the Indian patent laws. However, according to section 3(k) of the Indian Patents Act, mathematical formulae, business methods, and computer programs per se, are treated as non-patentable inventions.
Accordingly, computer related inventions, or CRIs, including mobile applications and software patents, can be protected in India by way of novel and inventive combination of innovative processes / method claims embodied via hardware, wherein the combination or hardware and software should be capable of industrial application, as defined in the patent law. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
The first step to apply for software patents in India is to determine whether the software based innovation is eligible for patent protection or not. The patent eligibility, or patentability, is determined by conducting a patent prior art search, which covers patent and non-patent literature to determine the novelty and inventive step (non-obviousness) of the proposed invention.
Another important step is to determine if the proposed invention falls under the category of the non-patentable inventions, which is specified under Section 3(k) of the Indian patents act. As per Indian patent laws, software / mobile apps fall under the category of computer related inventions (CRIs), which have to drafted in a particular manner to pass the patent eligibility test.
Therefore, once a software patent is drafted, the same can be applied to Indian patent office by following the patent e-filing process, or the physical filing, under the guidance of an Indian patent attorney or a patent law firm with expertise in patents. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
Indian patent laws don’t specifically provide patent protection for computer programs per se, but computer related inventions (CRIs) can be protected under the Patents Act, including software and mobile applications. Software owners and publishers can protect intellectual property rights by combined protection of software patents and software copyright. Copyright protection is aimed at protecting software source code, while patent protection is aimed at protecting technical aspects of the software and mobile applications, which should satisfy the patent eligibility criteria as specified under the provisions of the Indian patent laws. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
Mobile applications can be patented by filing one or more patent applications with the Indian patent office corresponding to one or more innovative features of the mobile application. The Indian Patents Act state that one patent application should relate to a single invention only.
Accordingly, innovative aspects of the mobile app can be patented by drafting patent claims covering the corresponding hardware and software features, by way of system / apparatus claims and method / process claims. While drafting patent claims for mobile app based innovations, utmost care must be given to highlight novel aspects to connect the hardware elements with each other, wherein each element shall be limited in accordance with its functionality as described in method claims. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
Technology companies like Microsoft have been filing patents in India regularly and most of such patent pertain to the category of software patents. While patents cannot be obtained in India for computer program per se, software and mobile applications can be protected in India by claiming combination of novel aspects of hardware and software, by way of system and method claims.
As may be concluded from above, the Indian patent office grants patent for software and mobile apps, which fall under the category of computer related inventions (CRIs), as method claims describing hardware features, which are further limited by their respective functionality as specified in the method claims. More details on software patents in India can be found here. Other FAQs on software patents can be seen here.
Partner and Patent Attorney, Tech Corp Legal LLP (Tech Corp Group), an international law firm specialised in business and technology laws providing patent drafting (software patent drafting, mobile app patent drafting, patent drafting for computer related inventions), searching, filing and PCT national phase services along with trademark and other aspects of Intellectual Property Rights in addition to corporate law practice governing cross-border M&A transactions, technology licensing, agreements and contracts.