28 Oct
2021

India

How do you get a patent in your jurisdiction?

Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?

In India, patent rights are available by way of invention patents and design patents. Section 48 of the Patents Act confers exclusive rights on patentees to prevent third parties from making, using, offering for sale, selling or importing the patented product or process in India without the consent of the patentee, for a duration of 20 years from the date of filing in India or the date of the Patent Cooperation Treaty (PCT) application (if applicable). A design registration protects that design for a 10-year period from the date of registration, extendable for a further five years.

Q: What inventions are eligible for patent protection in your jurisdiction?

In India, the basic criteria for patentability of an invention includes:

  • novelty – the invention should be new and not disclosed to the public anywhere in the world in any form or through any medium;
  • non-obviousness – the invention should not be obvious to a person skilled in the art in the relevant area of technology and should involve an inventive feature that is distinctive in nature from the previous inventions made in the same field; and
  • industrial application – the invention should be capable of being made or used in an industry and it should have economic significance.

Q: Are there any specific exemptions to patent eligibility?

Sections 3 and 4 provide the following exemptions to patentability:

  • inventions that are frivolous or contrary to natural laws;
  • inventions against public morality;
  • inventions that are a mere discovery of something that already exists in nature;
  • the mere discovery of a new form of a known substance that does not enhance the known efficiency of that substance;
  • the mere discovery of a new property or new use of a known substance;
  • the mere use of a known process, machine or apparatus unless the known process results in a new product or employs at least one new reactant;
  • substances obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or process for producing such substance;
  • the mere arrangement, rearrangement or duplication of known devices that function independently of one another in a known way;
  • methods of agriculture or horticulture;
  • processes for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings;
  • processes for the treatment of animals;
  • plants and animals in whole or any part thereof other than microorganisms;
  • mathematical or business methods, computer programs per se or algorithms;
  • literary, dramatic, musical or artistic works or any other aesthetic creations, including cinematographic works and television productions;
  • mere schemes, rules or methods of performing a mental act or playing a game;
  • presentation of information;
  • the topography of integrated circuits;
  • traditional knowledge;
  • aggregation or duplication of known properties of traditionally known components; and
  • inventions relating to atomic energy.

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)

Yes, there are technology-specific eligibility issues that the applicants must navigate through. For example, business methods claimed in any form are not patentable. This exclusion applies to all business methods; therefore, even if business methods are claimed along with some technical features such as the Internet, networks, satellites and telecoms, they may fall under the purview of Section 3(k). Computer programs per se are not patentable; however, computer-related inventions having a technical advancement over the existing prior arts, providing a technical solution to a technical problem by providing a practical application, and having an improved technical effect of the underlying software may be patentable. Pharmaceutical inventions are patentable provided they do not fall within the purview of Section 3(d) (ie, if the invention demonstrates enhanced therapeutic “efficacy” or “results in a new product or employs at least one new reactant”).

Claims that are directed to ‘method of diagnosis’ and ‘method of treatment’ are not patentable under Section 3(i). However, the interpretation of this section is evolving. As per current Indian patent practice, protection can be obtained for surgical, therapeutic or diagnostic instruments or apparatus. Further, some controllers may consider the allowability of in vitro methods.

Q: What are the time and costs involved in securing a granted patent? Is an expedited examination available? Are reduced fees available for certain applicants?

The time involved in securing a patent has been reduced significantly from approximately eight to 10 years to three to four years. In the best-case scenario, some cases have even been granted within six to 12 months of filing the request for examination. The total costs involved can be expected to be from $4,000 to $6,000, depending on the complexity of the matter (assuming the application claims one priority with up to 10 claims and up to 30 pages in the specification).

Expedited examinations can be availed by the following applicants:

  • if the Indian Patent Office has been selected as the international search authority or elected as the international preliminary examining authority in the corresponding PCT application;
  • start-ups;
  • applications pertaining to a sector that is notified by the central government;
  • an institution wholly or substantially financed by the government;
  • a small entity;
  • at least one of the applicants is female (if all applicants are natural persons);
  • eligible under an arrangement for processing a patent application pursuant to an agreement between the Indian Patent Office and a foreign patent office;
  • a government department;
  • institutions established by the Central, Provincial or State Act that is owned or controlled by the government; and
  • a government company as defined in Section 2(45) of the Companies Act 2013.

The fee schedule provides approximately 80% reduced fees for natural persons, start-ups and small entities.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

Section 10 read with Rule 13 relates to the requirements for specifications. Briefly, the requirements are:

  • drawings (if any) to be prepared as per Rule 15;
  • proof of right of the inventor to be submitted within six months of filing;
  • the abstract must be under 150 words and the title must be under 15 words; and
  • divisional applications and any additional patents must comprise a reference to the parent application.

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?

Provisional applications are governed by Section 9 read with Rule 13. If a complete specification is not filed within 12 months, the application is considered abandoned.

Divisional applications, governed by Section 16 read with Rule 13(2):

  • can be filed at any time after the filing of the parent application and before grant of the patent;
  • may be filed to meet an objection to the unity of invention in the office action or of the applicant’s own accord (only in case of a plurality of distinct inventions contained in the parent invention);
  • the term of the patent is 20 years from the date of filing the parent application;
  • the priority date is the same as that claimed by the parent application; and
  • the only subject matter that is claimable is that which was disclosed and claimed in the parent application.

Patents of addition (similar to continuations-in-part in the United States) are governed by Sections 54 to 56 and Rule 13(3):

  • the applicant must be the same as the parent patent;
  • patents of addition can be granted only after the grant of the main patent;
  • the subject matter must disclose over and above the parent application and not merely claim over the same specification as the parent application;
  • patents of addition run concurrently and terminate with the main invention; and
  • the date of filing of a patent of addition will be considered as the priority date, subject to other provisions.

Q: What do applicants need to know about office actions and patent examiner interviews?

Office actions include substantive and formal objections. Substantive objections may include novelty, inventive step, industrial applicability of the application and non-patentable subject matter. Formal objections may relate to insufficient disclosure of the claimed subject matter in the application, missing or inadequate formals, and disclosure requirements (eg, Section 8).

The timeframe for filing a response to an office action is six months (extendable by three months by filing a request along with the requisite fee). Objections (if any) relating to filing the priority documents must be met within three months and, when they relate to Section 8(2), must be met within six months from the date of an office action (non-extendible). If an applicant fails to respond to the office action, the application is deemed abandoned.

The act does not particularly provide for patent examiner interviews; however, most examiners are approachable to resolve queries. If the controller is convinced by the reply to the office action, they may proceed to grant the patent. However, if any objections remain outstanding, one or more oral hearings are issued.

Q: Are there any recent examination trends that patent applicants need to be aware of?

The Patent Office is conducting examinations at a much faster rate than ever before. The examination rate of applications went up by 223% in 2020-2021 compared to 2014-2015. In a recent newsletter issued by the controller general, in cases of expedited examination, controllers are required to dispose of the application within three months of the receipt of a response from the applicant.

With landmark decisions and streamlined guidelines in respect of computer-related inventions (CRIs), there is a paradigm shift in the patentability of CRIs in India, which were previously difficult subject matter on which to secure patents.

Filings under the India-Japan Patent Prosecution Highway programme have been well received and have extended expedited examination for a second year.

Q: Is there anything else about the patent filing process that applicants should know?

Section 8 mandates that every applicant:

  • submit a statement (under Form 3) setting out detailed particulars of the same or substantially similar applications filed in other jurisdictions within six months of the date of filing the Indian application and keep the controller informed of the detailed particulars within six months of such filings; and
  • furnish details (documents) relating to the processing of the corresponding foreign applications, if required by the controller.

Section 8 deals with non-compliance for both pre-grant and post-grant oppositions.

Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?

Not applicable.

Q: Under what circumstances would you advise a national prosecution to secure protection in your jurisdiction rather than going down the EPO route?

Not applicable.

Q: What are the major administrative procedures in your jurisdiction?

Every applicant must submit proof of the right to apply for an invention within six months of the date of application.

If an objection is to be raised in the office action regarding the submission of an English translation of the priority document, it must be submitted within three months.

Every patentee and licensee should furnish statements regarding the extent to which the patented invention has been worked on a commercial scale in India by 30 September of every year for the preceding financial year.

Section 8 mandates that every applicant:

  • submit a statement (under Form 3) setting out detailed particulars of the same or substantially similar applications filed in other jurisdictions within six months of filing the Indian application and should keep the controller informed of the detailed particulars within six months of such filings; and
  • furnish details (documents) relating to the processing of the corresponding foreign applications, if required by the controller.

The agent’s authorisation should be filed within three months of the application’s filing date.

Any evidence submitted by a party is required to be in the form of an affidavit.

Q: How can applicants appeal patent office decisions?

Applicants can file an appeal under Section 117A before the respective high court within three months of the date of the adverse order. Since the dissolution of the Intellectual Property Appellate Board (ex-forum for appeals) in 2021, the jurisdiction of appeals in IP matters has been transferred to the respective high courts that will enact their respective rules, designating the procedures and formalities to be followed.

Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?

The act provides both pre-grant and post-grant oppositions. Section 25(1) read with Rule 55(1) defines the grounds and rules for a pre-grant opposition, while Section 25(2) read with Rules 55A to 62 defines the grounds and rules for a post-grant opposition.

Q: What are the processes for re-examination of a patent?

Re-examination of patents is possible by way of invalidation proceedings (post-grant opposition, revocation proceedings and counterclaim for revocation).

Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?

As per the act, a granted patent can be invalidated by way of:

  • post-grant opposition (Section 25(2)):
    • filed before the Indian Patent Office; or
    • filed within one year of the date of the publication of grant;
  • revocation petition (Section 64):
    • filed before the High Court (prior to 2021 – filed before the Intellectual Property Appellate Board); or
    • filed at any time during the life of the patent; and
  • counterclaim for revocation (Section 64):
    • filed in an ongoing infringement proceeding by the defendant (alleged infringer).

Invalidation proceedings (under Sections 25(2) and 64) can only be initiated by the central government or a “person interested” (ie, “a person engaged in, or in promoting, research in the same field as that to which the invention relates”, Section 2(1)(t)).

Inter partes invalidation cases usually take approximately three to five years to complete, although the duration before the high courts is yet to be seen.

Q: How can opposition, re-examination or invalidation decisions be appealed?

As per Section 117A, an adverse order arising from a post-grant opposition may be appealed before the respective high court within three months of the date of the order. A writ petition can be filed under Articles 226 and 227 of the Constitution against an adverse order arising from revocation proceedings. In the case of pre-grant oppositions, an order adverse to the applicant can be appealed before the respective high court and an order adverse to the opponent can be challenged by way of a writ petition.

Since the dissolution of the Intellectual Property Appellate Board (ex-forum for appeals) in 2021, the jurisdiction of appeals in IP matters has been transferred to the respective high courts, which will enact their respective rules designating the procedures and formalities to be followed.

Review petition

The applicant may file a review application before the controller within one month of the date of the order.

Q: Is administrative enforcement of patents possible?

In India, patent enforcement is a judicial process carried out by the district and high courts. 

Q: Does your jurisdiction grant patent-term extensions?

No.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

Filing of documents

All filings before the Patent Office are done via the e-filing module. The requirement for submission of original documents (within 15 days) has been amended to be submitted only if specifically requested by the Patent Office.

Post-grant oppositions

An opposition board is constituted under Rule 56 (comprising three examiners/controllers) who submit their recommendations to the controller regarding the validity of the patent in view of the filed opposition. If the patentee does not file a reply to a post-grant opposition, the patent is deemed to be revoked.

Adjournment of hearings

Rule 129A allows each party to a proceeding before the Patent Office to request an adjournment no more than twice, each for a period of 30 days.

Annual working statement (Section 146(2))

Every patentee and every licensee should furnish statements regarding the extent to which the patented invention has been worked on a commercial scale in India by 30 September of every year for the preceding financial year.