A patent is an exclusive right granted by the Government to an Applicant or a group of Applicants for a period of 20 years, in exchange for a complete disclosure of the invention.

Patents Act, 1970 and the Patents Rules, 2003, as amended from time to time.

Office of the Controller General of Patents, Designs and Trade Marks [CGPDTM], which comes under the Department for Promotion of Industry and Internal Trade [DPIIT], Ministry of Commerce & Industry.

There are four patent offices situated in the cities of Chennai, Mumbai, Delhi and Kolkata.

No. For Indian applicants, the appropriate office with which a patent application can be filed is based on the place of normal residence or place of business of the applicant or the first mentioned applicant in the case of joint applicants. For foreign applicants, the appropriate office is to be decided based on the address for service in India.

English or Hindi

Any product or process that is novel, has an inventive step, is industrially applicable and does not fall under the provisions of Sections 3 and 4 are patentable.

The invention has to be new at the time of filing i.e. not known earlier through publication [patent or non-patent], use, or knowledge either in India, or elsewhere in the world.

Inventive step refers to technical advancement over existing knowledge that makes the invention not obvious to a person skilled in the art.

There is no clear-cut definition of person skilled in the art. However, Justice Prabha Sridevan, in Sankalp vs Roche, has defined this person as one who is “not ignorant of its basics, nor is he ignorant of the activities in the particular field. He is also not ignorant of the demand on this art”.

The invention should be capable of being made or used in an industry.

• Inventions that are frivolous or contrary to well-established natural laws;

• Inventions that are contrary to public order or morality;

• Inventions that cause serious prejudice to human, animal, or plant life, or to the environment;

• Mere discovery of a scientific principle;

• Formulation of an abstract theory;

• Discovery of anything occurring in nature;

• Mere discovery of a new form of a known substance [unless there is an enhancement of the efficacy];

• Mere discovery of any new property or new use of a known substance;

• Mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

• Mere admixture [aggregation of properties];

• Mere arrangement, re-arrangement or duplication of known devices each functioning independently of one another in a known way;

• Agricultural or horticultural methods;

• Methods for the treatment of human beings or animals;

• Plants and animals [other than microbes], and essentially biological processes for their production or propagation;

• Mathematical methods;

• Business methods;

• Computer programs per se or algorithms;

• Literary, dramatic, musical or artistic works;

• Method of performing mental act or method of playing game;

• Topography of Integrated Circuits;

• Traditional Knowledge; and

• Inventions relating to atomic energy

The Supreme Court, in Novartis v. Union of India, interpreted efficacy to mean therapeutic efficacy.

Broadly speaking, the application process involves the following steps:

• Filing;

• Publication;

• Examination and issuance of First Examination Report [FER];

• Reply to the FER;

• Hearing before the Controller [if called for];

• Grant; and

• Renewal or maintenance

Individuals, start-ups, small entities/MSME’s [micro, medium and small enterprises], and Educational Institutions, and entities other than small entities.

• Application accompanied by a provisional specification [PS];

• Application accompanied by a complete specification [CS];

• Convention application;

• PCT [Patent Cooperation Treaty] national phase application;

• Divisional application; and

• Patent of addition.

An application can be filed electronically [Digital Signature Certificate required], handed over in person at the counter.

A PS is useful in securing an early filing date. When a PS is filed, an applicant gets a time period of 12 months to file a CS.

Yes.

The disclosure needs to be as broad as possible as one cannot go beyond the scope of the PS when filing the CS.

• Title of the invention in not more than 15 words;

• A description that fully and particularly describes the invention;

• Best method of performing the invention which is known to the applicant;

• One or more claims that define the scope of protection; the claims should relate to one invention or a group of inventions linked together to form one inventive concept; and

• An abstract in less than 150 words that states the technical advancement and principal use.

True and first inventor [s], their assignee [s], or their legal representative [s], either directly or through a Registered Patent Agent. However, it mandatory to furnish an address for service within India.

• If the specification describes a biological material that is not available to the public, the same has to be submitted with an International Depository Authority [IDA] at a late not later than the date of filing and a reference to the deposit has to be made within three months from the date of filing.

• Sequence listing in computer readable format is to be submitted where applicable.

• Approval from the National Biodiversity Authority is required if a patent specification involves biological resources obtained from India.

There are two IDA’s located within India- Microbial Culture Collection, National Centre for Cell Sciences, Pune, and Microbial Type Culture Collection and Gene Bank, IMT, Chandigarh.

An application is published after 18 months from the date of filing or priority date [whichever is earlier] in the electronic Patents Journal [published every Friday].

India follows a deferred system of examination i.e. an application will not be taken up for examination unless a Request for Examination [RFE] and the associated fee are paid within 31 months from the date of filing or date of priority [whichever is earlier].

• Formal examination to ensure the documentation is proper;

• Novelty;

• Inventive step;

• Industrial applicability;

• Sections 3 and 4 [non-patentability criteria];

• Unity of invention;

• Sufficiency of disclosure [enablement of claims] that enables a person skilled in the art to make and use the invention; and

• Clarity and conciseness of the Claims.

6 months from the date of issue of FER.

20 years from the date of filing of the PS or CS [whichever is earlier].

No.

Renewal fees that have accumulated from the third year onwards are to be paid within three months from the date of recording of the patent in the register. Subsequent renewal fees are to be paid in advance [counted from the date of filing of the application].

For instance, if the date of recording is September 14, 2015, for an application filed on September 9, 2011, then the accumulated renewal fees for the third, fourth, and fifth years have to be paid on or before December 14, 2015. The next renewal fee is to be paid on or before September 9, 2016.

Indian Patent legislation explicitly mentions that “patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay” and that they “are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article”.

Failure to work the invention within the territory of India, even after the expiration of three years from the date of grant is a ground for compulsory licensing.

No. However, Justice Prabha Sridevan, in Natco vs Bayer held that “working could mean local manufacture entirely and ‘working’ in some cases could mean only importation. It would depend on the facts and evidence of each case”.

No.

In India, both pre-grant and post-grant oppositions are allowed. While the former can be filed anytime between publication and grant, the latter can be filed within one year from the date of publication of grant.

The grounds for opposition are as follows:

• Wrongful obtainment of the patent;

• Invention has been published before the priority date of one or more of the applicant’s claims;

• Invention has been claimed in pursuance of an application for a patent in India that has been published after the priority date of one or more of the applicant’s claims, but has an earlier priority date.

• Public knowledge or public use in India before the priority date;

• Invention is obvious and does not involve an inventive step;

• Invention is not patentable;

• The CS does not sufficiently and clearly describe the invention or the method by which it is to be performed;

• Foreign filing information has not been furnished or has been falsely furnished;

• Convention application not made within 12 months from the date of priority;

• Non-disclosure or false disclosure of the geographical origin of biological material; and

• Invention is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Divisional application can be filed either voluntarily by the applicant or at the behest of the Controller, if the claims relate to more than one invention. However, no new subject matter can be added in the divisional application.

The Intellectual Property Appellate Board, in LG Electronics vs The Controller of Patents and Designs, had held that the clause “if he so desires” in Section 16 does not empower an applicant with “the unconditional freedom to file a divisional application even when there is no plurality of invention”.

Any time before the grant of the parent application.

Yes. The RFE has to be filed at the time of filing if the parent application has already been referred to an examiner.

Examination of a divisional application is done vis-à-vis the main application, to avoid double patenting.

Yes.

A patent of addition is an application for a patent filed by the same applicant in respect of “any improvement in or modification of an invention described or disclosed” in an earlier CS. A patent of addition shall not be granted before grant of the patent for the main invention.

An application for a patent of addition will not be examined for inventive step with respect to the disclosure in the parent application. However, it will be examined for novelty with respect to the disclosure in the parent application.

No.

Yes.

12 months from the date of first filing [priority date].

20 years from the date of filing in India.

Yes.

31 months from the date of first filing [priority date].

Claims can be deleted at the time of filing.