India: patent prosecution

How do you get a patent in your jurisdiction?

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

India has a robust patent system that incentivises innovators and takes care of public and national interests. India grants patents for inventions relating to products and processes. For products protected by a patent, the patentee has the exclusive right to prevent third parties from making, using, offering for sale, selling or importing for those purposes that product in India. For a process protected by a patent, the patentee has the exclusive right to prevent third parties from using that process, and from using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. Apart from that, India has enacted different statutes for the protection of design, layout design and plant varieties, and therefore, these are not covered under the Patent Law. However, India does not have provisions for utility models (also known as petty patents).

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

Patents are granted for inventions across all areas of science and technology, except those relating to non-patentable subject matters in India. Under the Indian Patent Law, an ‘invention’ means a new product or process involving an inventive step and capable of industrial application. A new invention is any invention or technology that has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application.

The inventive step is a feature of an invention that requires having technical knowledge to complete as opposed to basic knowledge or having economic significance, or both, and that feature makes the invention not obvious to a person skilled in the art.

‘Capability for industrial application’ means that the invention is capable of being made or used in industry.

Q: Are there any specific exemptions to patent eligibility?

The following are not patentable under Indian Patent Law:

• inventions that go against natural laws;
• anything contrary to public order or morality or that is harmful;
• discoveries or theories;
• discoveries of new forms, properties or uses of a known substance;
• uses of a known process or machine;
• substances obtained by an admixture;
• arrangements of known devices;
• methods of agriculture or horticulture;
• methods of treatment;
• plants and animals;
• mathematical methods;
• business methods;
• computer programs;
• algorithms;
• aesthetic creations;
• schemes or rules;
• methods of performing a mental act;
• methods of playing a game;
• presentations of information;
• topographies of integrated circuits;
• traditional knowledge; and
• inventions relating to atomic energy.

Q: Are there technology-specific eligibility issues that applicants must navigate (e.g., in software, business methods, AI, medical diagnostics, pharmaceuticals or medical procedures)?

The Indian Patent Office (IPO) generally objects to the subject matter eligibility of computer-related inventions (CRIs) under Section 3(k) of the Patents Act 1970, which bars the patentability of inventions directed towards “a mathematical or business method or a computer program per se or algorithm”. The IPO has also issued separate guidelines for the examination of CRIs, which emphasise that while examining CRIs, examiners should focus on ascertaining the substance of the claims as a whole and not in the form of the claims. If, in substance, the invention is technical and the invention achieves a ‘technical effect’, then the invention does not fall under excluded subject matter. India’s stand on CRIs is like the European and UK position.

In the field of pharmaceutical drugs, to prevent patent evergreening, Section 3(d) of the Patents Act 1970 excludes, inter alia, inventions that relate to “mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance” from patentability. Here, “efficacy” means therapeutic efficacy according to the case law.

Further, any invention which relates to a process for medical treatment of human beings or animals is excluded from patentable subject matter under Section 3(i) of the Patents Act 1970. While methods of treatment are non-patentable subject matter, medical devices do not fall under this category.

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?

With continuous effort, the long backlog of patent applications pending examination has been largely cleared. Currently, it takes about three years for a patent to be granted in India provided the applicant completes all actions in a timely manner. Expedited examination is also available, but only to a select category of applicants upon payment of an additional fee. Under expedited examination, a patent can be granted within a year.

For official fee calculation purposes, applicants are either: (1) natural persons, start-ups, small entities or educational institutions; or (2) all others that do not fit into the first category (eg, large entities). The applicants that fall under the first category get an approximate 80% discount on the official fee. Foreign applicants can also avail themselves of the benefit of the discounted fee provided they belong in the first category of applicants. There is a surcharge of 10% on the official fee for all physical filings to promote the e-filing of documents.

The overall cost of obtaining a patent in India is less than in the United States and Europe. As English language filings are acceptable, there are no additional costs for translation at the time of filing or prosecution. The end-to-end cost of obtaining protection in India is generally between $3000 to $4000.

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

To get a patent in India, every complete specification must:

• fully and in detail describe the invention, and its operation or use and how to use it; and
• disclose the best way to use the invention that is known to the applicant and for which they are entitled to claim protection.

Further, the claim must relate to a single invention, or to a group of inventions linked by a single inventive concept; must be clear and succinct; and must be fairly based on the matter disclosed in the specification.

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

The following five types of patent applications can be filed in India:

• ordinary applications;
• conventional applications;
• Patent Cooperation Treaty national phase applications;
• divisional applications; and
• patent of additions.

Only an ordinary application can be filed with a provisional specification and all other types of applications can be filed with a complete specification only.

A divisional application can be filed by the applicant voluntarily or to remedy the objection on the unity of the invention at any time before the patent is granted. Divisional applications cannot contain claims that were not claimed in the parent application. This means that the claims of the divisional application must be derived from the claims of the parent application only.

The patent of addition, which is akin to a continuation-in-part application, can be filed regarding any improvement or modification of an invention described or disclosed in the complete specification filed for the main invention. A patent of addition cannot be granted for the main invention before a patent is.

There is no provision under Indian Patent Law for a continuation application to claim any unclaimed subject matter. In fact, what is not claimed is considered disclaimed under the doctrine of disclaimer.

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

The application is examined by the IPO after a request for examination or expedited examination is filed. Once the application is examined, a first examination report (FER) is issued by the IPO listing various objections. The applicant is required to file a response to the FER within six months, which can be further extended once by a maximum of three months provided that a request for extension is filed before the expiry of the initial six-month period. Thereafter, the IPO examines the response and proceeds to grant a patent if all the objections have been addressed and there are no new objections based on the response.

Alternatively, if some objections have not been addressed or the IPO raises new objections based on the response, a hearing notice is issued providing the applicant at least 10 days' notice in advance of the hearing. During the hearing, objections raised in the hearing notice are discussed, and the applicant or applicant’s agent presents their case before the Controller in charge of the application. After the hearing, the applicant is required to file written submissions within 15 days of the date of the hearing. Thereafter, the IPO examines the submissions filed by the applicant and proceeds to grant a patent if all the objections raised in the hearing notice have been addressed by the applicant. If the IPO does not agree with the submissions, the application is refused.

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

Reduced backlog

The completion time of a patent application in India now is substantially less than in recent years. Thanks to extensive recruitment at the IPO and other procedural reforms, the average time to complete an application has been reduced from seven to eight years (the average prosecution time a decade ago) to two to three years.

Divisional applications

India does not have provisions for continuation applications, and a divisional application filed for merely prolonging the patent prosecution is not maintainable. Divisional application claims need to be directed towards a distinct invention, which is different to the process for parent application claims. As per a recent judicial precedent, Boehringer v Controller of Patents, divisional application claims need to be divided from parent application claims. Therefore, a divisional application claiming any unclaimed subject matter from the parent application is likely not maintainable.

Amendments

Provisions relating to claim amendments require that amended claims not go beyond the scope of the original claims and be supported by the specification. That is why replacement or addition of claims is generally not permissible. According to another recent judicial precedent, Nippon v Controller of Patents, amendments to patent specifications or claims before the patent is granted must be construed more liberally than narrowly. Nothing new can be inserted, but if an amendment restricts claims to disclosures already made, the amendment ought not to be rejected, especially before the grant of a patent.

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

India allows for the deletion of claims while filing national applications in India. Accordingly, applicants can delete claims to delete non-patentable claims and save on excess claim fees. Further, the applicants can also file certified copies of priority documents and verified English translations thereof (wherever applicable) at the time of filing the application. This allows the applicants to avoid any late fees that they might have to pay at a later stage during the prosecution of the application.

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?

India does not have any provisions for utility models or petty patents.

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

Not applicable.

What are the major administrative procedures in your jurisdiction?

Q: How can applicants appeal patent office decision?

Once an application is refused by the IPO, an applicant has two options: review the refusal order or appeal against the refusal order. A review petition can be filed at the IPO within one month of the date of the refusal order. The review petition is placed before the same Controller of the IPO who refused the application. Accordingly, the review petition should be filed only in cases where there is an apparent error in the refusal order or the Controller is willing to consider the review petition on merits, or both. On the other hand, an appeal can be filed before the high court within three months of the date of the refusal order. If the appeal is allowed by the relevant high court, the refusal order is set aside and the matter is sent back to the IPO for re-examination. The appeal may be costly, but it is a more effective option to obtain a favourable decision on substantial grounds.

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

Pre-grant opposition can be filed by any person after the publication of an application and before the patent is granted on any of the grounds provided under the of the Patents Act 1970. Given recent court orders, anonymous oppositions ought to be discouraged by the IPO. In practice, pre-grant opposition can be used to delay the granting of a pending patent. Sometimes, straw men have been used to file a series of pre-grant oppositions to delay the grant. A pre-grant opposition is considered only when a request for examination has been filed. After consideration of the maintainability of pre-grant opposition, the IPO issues a notice of opposition to the applicant. The applicant is required to file a reply statement within three months of the date of such notice. Thereafter, after hearing both parties, the Controller issues an order either granting a patent or refusing the application.

A post-grant opposition can only be filed by an interested person within one year of the date of publication of the grant of a patent. An interested person includes a person engaged in, or promoting, research in the same field as that to which the invention relates. The patentee is required to file a statement of reply within two months of the date of receipt of the opponent’s written statement in support of the opposition. The opponent can file a reply to the statement of reply of the patentee within one month of the date of receipt of the patentee’s statement of reply. The Controller then appoints an opposition board that examines the notice of opposition, along with documents filed by both parties, and submits a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months of the date on which the documents were forwarded to them. Thereafter, the Controller, after hearing both parties, either rejects the opposition or revokes the patent.

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

India does not have any provision for the re-examination of a patent. However, provisions for pre-grant opposition proceedings any time before the grant, post-grant opposition proceedings up to one year after the grant and revocation proceedings any time after the grant have been provided under the of the Patents Act 1970 for accommodating third-party representations at various stages of patent life cycle and in different forums.

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?

A petition for revocation of a patent can be filed by an interested person or by the central government before a high court with jurisdiction. The petition for revocation of a patent also lies with the high court if a counterclaim regarding the validity of a patent is made by the defendant in a suit for infringement of that patent. The procedure to be followed for disposal of such cases is provided under the Commercial Courts Act 2015 as intellectual property-related cases are considered commercial matters, and therefore, speedy disposal of such matters happens as mandated by the Commercial Courts Act 2015.

A patent can also be revoked under the following conditions:

• revocation of a patent owing to the non-workability under section 85 of the of the Patents Act 1970;
• revocation of a patent in public interest by the Central Government under section 66 of the Patents Act 1970; and
• in cases relating to atomic energy on the directions of the Central Government under section 65 of the Patents Act 1970.

The erstwhile Intellectual Property Appellate Board (IPAB) was recently abolished, which used to take care of the revocation matters, and the jurisdiction of these cases has been transferred to the high courts. Accordingly, it is difficult to anticipate how long it will take the high courts to dispose of revocation matters without the availability of sufficient data to date.

The Delhi High Court created the IP Division for handling all intellectual property rights (IPR) matters, including those that are to be transferred from the IPAB. To date, three single-judge benches of the Delhi High Court are acting as the IP Division to exclusively hear all IPR-related matters, including the appeals arising out of the decisions of the Controller of Patents, Registrar of Trademarks, Controller of Designs, Registrar of Copyright, Registrar of Geographical Indications and the Plant Variety Authority.

Other high courts may also follow the initiative of the Delhi High Court and may soon set up IP divisions in those courts. The High Court of Delhi notified the Intellectual Property Division Rules and the Rules Governing Patent Suits early in 2022.

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

The Patents Act 1970 provides that an order from the Controller in respect of a post-grant opposition can be appealed before the High Court within three months of the date of the order. The Act does not expressly provide that a pre-grant opposition order is appealable. However, in practice, the pre-grant opposition order can be appealed considering this as an order under Section 15 of the Patents Act 1970, which is a usual order of the Controller either allowing or refusing an application, and the Act expressly provides that such orders can be appealed. Further, the writ jurisdiction of the high courts can also be availed against such orders rejecting the application. The Patents Act 1970 also does not expressly provide that a revocation order can be appealed. However, in practice, an order of the high court in a revocation petition can be appealed by the aggrieved party under the letters patent appeal before a division bench of the same high court.

Q: Is administrative enforcement of patents possible?

India notified the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 to bring the country more in line with the border measures available under the Agreement on Trade-Related Aspects of Intellectual Property Rights. These Rules allowed customs officers of the customs department to enforce IPRs over imported products. These Rules were also applicable to patents when they were notified. However, in 2018 revised rules were notified, and enforcement of patents was excluded from the rules. Accordingly, presently, patents can only be enforced in the court orders in a suit for infringement before a high court.

Q: Does your jurisdiction grant patent-term extensions?

India does not have any provisions for the extension of the term of a patent beyond 20 years from the date of filing or priority, whichever is earlier. 

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

Under Section 8(1) of the Act, an applicant is required to furnish the status or details of corresponding foreign applications within six months of the date of filing the application in India or the date of filing the corresponding foreign application, whichever is later. The applicants should diligently file the status of the applications at regular intervals because non-filing of the information is also a ground for opposition or revocation. Under Section 8(2) of the Act, Applicants are required to submit, only when asked by the IPO, allowed claims and office actions from other jurisdictions with English translations if required. Copies of prior art references cited in other jurisdictions are not required.

Further, patentees and licensees are required to submit annual working statements indicating whether the patented invention has been worked or not. If the patent has been worked, the patentee or licensee is required to provide an approximate value accrued by them as a result of sales of the patented product or the product implementing the patented technology in India. Non-submission of the working statement attracts penalties. The format of the working statement has been simplified and is still under discussion for further improvements.