Question 1

What is a patent?

Accepted Answer

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.

Question 2

Which legislation governs patents?

Accepted Answer

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

Question 3

Which Government agency deals with patents?

Accepted Answer

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.

Question 4

Where are the patent offices situated?

Accepted Answer

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

Question 5

Can I file a patent application in any of the patent offices?

Accepted Answer

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.

Question 6

In which languages can a patent application be filed?

Accepted Answer

English or Hindi

Question 7

What is patentable?

Accepted Answer

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.

Question 8

What is novelty?

Accepted Answer

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.

Question 9

What is inventive step?

Accepted Answer

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

Question 10

Who is a person skilled in the art?

Accepted Answer

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”.

Question 11

What is industrial applicability?

Accepted Answer

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

Question 12

What are not patentable?

Accepted Answer

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

Question 13

I have discovered a new form of a known substance. How do I prove enhanced efficacy?

Accepted Answer

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

Question 14

What are the general steps in the application process?

Accepted Answer

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

Question 15

What are the different types of applicants according to Indian Patent Law?

Accepted Answer

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

Question 16

What types of applications can be filed?

Accepted Answer

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.

Question 17

How can an application be filed?

Accepted Answer

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

Question 18

What is a PS?

Accepted Answer

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.

Question 19

Can a CS be submitted on the next working day if the last day of the deadline is a holiday?

Accepted Answer

Yes.

Question 20

What should I keep in mind when filing a PS?

Accepted Answer

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

Question 21

What should a CS essentially contain?

Accepted Answer

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.

Question 22

Who can file an application?

Accepted Answer

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.

Question 23

Are there any special requirements for life sciences applicants?

Accepted Answer

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.

Question 24

Where should I deposit biological material?

Accepted Answer

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.

Question 25

When and where is an application published?

Accepted Answer

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].

Question 26

What system of examination is followed?

Accepted Answer

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].

Question 27

What is a patent application examined for?

Accepted Answer

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.

Question 28

What is the time limit to put my application in order for grant?

Accepted Answer

6 months from the date of issue of FER.

Question 29

What is the term of a patent for an application that has been first filed in India?

Accepted Answer

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

Question 30

Are maintenance fees required for a pending patent application?

Accepted Answer

No.

Question 31

When are maintenance fees due?

Accepted Answer

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.

Question 32

What are the post-grant requirements?

Accepted Answer

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.

Question 33

Is there a definition of working in Indian Patent Law?

Accepted Answer

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”.

Question 34

Is patent term extension allowed for pharmaceutical patents?

Accepted Answer

No.

Question 35

What types of opposition are allowed?

Accepted Answer

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.

Question 36

What are the grounds for opposition?

Accepted Answer

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.

Question 37

Under what circumstances can a divisional application be filed?

Accepted Answer

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”.

Question 38

When can a divisional application be filed?

Accepted Answer

Any time before the grant of the parent application.

Question 39

Is a separate RFE required for a divisional application?

Accepted Answer

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

Question 40

How is a divisional application examined?

Accepted Answer

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

Question 41

Are renewal fees required for a divisional application?

Accepted Answer

Yes.

Question 42

What is a patent of addition?

Accepted Answer

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.

Question 43

How is an application for a patent of addition examined?

Accepted Answer

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.

Question 44

Are renewal fees required for a patent of addition?

Accepted Answer

No.

Question 45

Is India a member of the Paris Convention?

Accepted Answer

Yes.

Question 46

What is the time limit for submitting a Convention application?

Accepted Answer

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

Question 47

What is the term of a Convention application?

Accepted Answer

20 years from the date of filing in India.

Question 48

Is India a member of the PCT?

Accepted Answer

Yes.

Question 49

What is the time limit for entering the PCT National Phase [NP]?

Accepted Answer

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

Question 50

Is it possible to amend the specification at the time of filing a PCT NP application?

Accepted Answer

Claims can be deleted at the time of filing.

Question 51

What is the term of a PCT NP application?

Accepted Answer

20 years from the international filing date [date on which the PCT application was filed].

Question 52

Is the Indian Patent Office an International Searching Authority under the PCT?

Accepted Answer

Yes.

Question 53

Is the Indian Patent Office an International Preliminary Examining Authority under the PCT?

Accepted Answer

Yes.

Question 54

Is it possible to file a first application outside India without filing in India?

Accepted Answer

Indian residents can file a first application outside India only after obtaining permission from the Controller.

Question 55

What types of amendments of allowed?

Accepted Answer

Pre-grant amendments;
Post-grant amendments; and
Change in name/address/nationality/address for service
Amendments are allowed only by way of correction, explanation or disclaimer.

Question 56

What options exist for an applicant whose application has been refused after hearing?

Accepted Answer

Either apply to the Controller to review his/her decision within one month from the date of order or file an appeal with the relevant/respective High Court.

Question 57

Where can I search Indian patent application data?

Accepted Answer

InPASS [Indian Patent Advanced Search System]

Any questions? We are here to help.

Frequently asked questions

What is a patent?

Which legislation governs patents?

Which Government agency deals with patents?

Where are the patent offices situated?

Can I file a patent application in any of the patent offices?

In which languages can a patent application be filed?

What is patentable?

What is novelty?

What is inventive step?

Who is a person skilled in the art?

What is industrial applicability?

What are not patentable?

I have discovered a new form of a known substance. How do I prove enhanced efficacy?

What are the general steps in the application process?

What are the different types of applicants according to Indian Patent Law?

What types of applications can be filed?

How can an application be filed?

What is a PS?

Can a CS be submitted on the next working day if the last day of the deadline is a holiday?

What should I keep in mind when filing a PS?

What should a CS essentially contain?

Who can file an application?

Are there any special requirements for life sciences applicants?

Where should I deposit biological material?

When and where is an application published?

What system of examination is followed?

What is a patent application examined for?

What is the time limit to put my application in order for grant?

What is the term of a patent for an application that has been first filed in India?

Are maintenance fees required for a pending patent application?

When are maintenance fees due?

What are the post-grant requirements?

Is there a definition of working in Indian Patent Law?

Is patent term extension allowed for pharmaceutical patents?

What types of opposition are allowed?

What are the grounds for opposition?

Under what circumstances can a divisional application be filed?

When can a divisional application be filed?

Is a separate RFE required for a divisional application?

How is a divisional application examined?

Are renewal fees required for a divisional application?

What is a patent of addition?

How is an application for a patent of addition examined?

Are renewal fees required for a patent of addition?

Is India a member of the Paris Convention?

What is the time limit for submitting a Convention application?

What is the term of a Convention application?

Is India a member of the PCT?

What is the time limit for entering the PCT National Phase [NP]?

Is it possible to amend the specification at the time of filing a PCT NP application?

What is the term of a PCT NP application?

Is the Indian Patent Office an International Searching Authority under the PCT?

Is the Indian Patent Office an International Preliminary Examining Authority under the PCT?

Is it possible to file a first application outside India without filing in India?

What types of amendments of allowed?

What options exist for an applicant whose application has been refused after hearing?

Where can I search Indian patent application data?