Patent: Procedure for Filing an Application

Patent gives exclusive rights over the use of such creations for a specific period of time. In India, patents
are governed by the Patents Act, 1970, which enumerates provisions regarding everything about
patents, including the procedures for filing applications for patent.

Who may apply for a Patent?

Section 6 of the Act provides for the persons entitled to make an application for a patent. Any person
who is the first and true inventor of an invention can apply for a patent in regards to that invention in
the patent office. However, such a right to make an application can be transferred in favour of an
assignee of the first and true inventor of the invention. In such case, the application has to be
accompanied by a proof of right to make an application[1] along with a declaration that the person so
claiming is the first and true inventor of the invention[2]. An application for a patent may also be filed
by a legal representative of a deceased person who was entitled to such patent before his death.

Different types of Applications under The Patents Act, 1970

Convention Application: According to Section 135 of the Act, a convention application is an application
made under the Act within 12 months from the date on which the application for a patent in respect of
an invention in a convention country[3] (also called ‘basic application’). The application is filed in terms
of an international treaty such as the Patent Cooperation Treaty (PCT) designating India.

International Application: International application is an application that is filed in accordance with the
Patent Cooperation Treaty. Such applications provide patent protection in a large number of countries
through a single application instead of filing a number of regional applications.

Divisional Application: Section 16 of the Act deals with the division of an application. Such application
may be made either at the desire of the applicant before the grant of the patent or on the demand of
the Controller to remedy the objection raised by him on the grounds that the claims of the complete
specification relate to more than one invention.

Application for Patent of Addition: Section 54 of the Act states that when an applicant has made an
application for patent of an improvement or modification of an invention described in complete
specification filed and the applicant has either applied for the patent of that invention or is the patentee
of the invention, then he may be granted a patent for that improvement or modification as the patent of
addition.

Form of Application for a Patent

Ordinary Application: According to Section 7 of the Act, the application for a patent shall be filed in the
Patent Office in the prescribed form. Every application for a patent shall be accompanied by a
provisional or complete specification. Such provisional or complete specification need not be
accompanied in case of convention application or an application made under the Patent Cooperation
Treaty.

Convention Application: In case of a convention application, it shall be accompanied by the following

1.The complete specification. 2.The date and the convention country in which the application was made
or in case of two or more applications, the first application was made. 3. A statement purporting that no
application has been made before that date in any convention country by the applicant or by any person
from whom he derives the title.
Priority Date

According to Section 11 of the Act, the priority date of the claims which are based on the matter
disclosed in the complete specification is the date on which such complete specification is furnished.
Following are the ways in which priority dates are decided in different scenarios:

When a Complete Specification is filed in Pursuance of a Single Application:According to Section 11(2) of

the Act when a complete specification is filed in pursuance of a single application along with which
provisional specification and a specification as mentioned in Sub-section (3) of Section 9 is filed.

When a Complete Specification is furnished in Pursuance of Two or More Applications: Section 11(3) of
the Act provides for the priority date of the claim when a complete specification is furnished in
pursuance of two or more applications filed along with the provisional specifications.

Publication of Application

Section 11A of the Act provides for the publication of an application for a patent. The publication of the
application shall include the date of the application, the number of the application, name and address of
the applicant and an abstract. when secrecy direction is imposed under section 35; When the
application has been abandoned under sub-section (1) of section 9; or When the application has been
withdrawn three months prior to the period specified under sub-section (1).

Examination of Application

According to Section 11B of the Act, the applicant or any other person interested shall make a request
for examination of the application in the prescribed manner within the prescribed time period. If no
such request is made, then the application shall be treated as withdrawn by the applicant. After the
request is made, the Controller by virtue of Section 12 refers the application to an examiner to make a
report.

Grant of Patent

According to Section 43 of the Act, the patent may be granted to the applicant or in case of joint
application, to the joint applicants, as expeditiously as possible if the Controller is satisfied that the
application of patent is in order for the grant of the patent and is not in contravention of any provisions
of the Act.

What is a patent specification?

A patent specification is a legal document which describes how to make and use an
invention. Patent specifications are published by the national patent office and can
be accessed through the patent search portal on their website.
Patent specifications are intended to be read and understood by a person with a good
technical understanding of the field of the invention - a “person of skill in the art”.
This “person” has a good understanding of the technical background of the invention
and would understand key terminology and practices used in the field.

Patent specifications are split into the following parts:

Background
Outlines the field of technology into which the invention falls and describes the

state of the art before the patent filing date. This body of knowledge and literature
is referred to as the “prior art”. Typically the background also notes the limitations
or problems with current technologies. This sets the scene for the invention to solve
the problem.
Summary of the invention

Includes statements which set out the key features of the invention which the inventor
believes are novel and inventive over the prior art. Each different embodiment
(example) of the invention should be identified in this section. If the invention is a
combination of steps of a method, or features in a particular configuration, these
should be specifically defined.
The statements in this section typically mirror the wording of the claims. The language
must be clear and any ambiguous terms should be clearly defined.

Rights and obligation of the Patentee:

In India, patentees are given specific rights and obligations upon the issuance of the patent. The Patent
Act grants the patentee specific rights, so that he can make profit out of his patent.

What are the rights of patentees?

1. Exclusive right:
The exclusive right to patent is provided by Section 48 of the Patent Act of 1970.
a. If a product is the subject of the patent manufactured by the patentee, the exclusive right to patent
prohibits third parties from manufacturing, putting up for sale, selling, importing, or using the product
developed by the patentee without his approval.
b. If the patentee has obtained a patent for a method, the patentee’s exclusive right prohibits third
parties from using, selling, or importing the product made using that method without the patentee’s
permission.
2. Right to Exploit the Patent:
In India, the right to produce, use, market, and distribute the patented goods is granted to the patent
holder. If the innovation involves a manufacturing method, the patentee has the right to assign the
process to another individual who has been given their permission. The agent of the patent holder may
exercise this authority.
3. Right to Assign and License:
The power to assign or give license to third parties for the purpose of producing and distributing the
patented goods is provided to the patent holder under Section 69(5) of the Patent Act of 1970. For a
patented product with multiple patent owners, all patent owners must concur to grant the license to a
third party collectively.
4. Rights to surrender:
The patent holder has the right to give up his patent after requesting approval from the controller. After
that, in compliance with the Indian Patents Act, the controller advertises this surrender. The controller
can then be contacted by those who are eager to own a patent. The controller looks into the parties’
claims and gives up ownership if necessary.
5. Right before selling:
A patent is sealed from the date of notification for acceptance until the date of acceptance of the
notification, as per Section 24 of the Indian Patents Act. After the notification of acceptance is
presented, the patentee’s rights are in effect.
6. Right to Sue For Infringement:
Any violation of the rights of a patent holder is referred to as a patent infringement. In the event that
their rights have been violated, patent holders have the option of going before either a district court or a
high court. If the defendant is found guilty of infringement, the courts may award both damages and a
permanent injunction.

What are the obligations of patentees?

1. Duty to Disclose the Patent:

It is the patentee’s responsibility to provide the controller with all information that is required. The
applicant must reveal the innovation to the public, according to Section 8 of the Patent Act of 1970. At
the time of filing a patent application or within six months of applying, the patentee is categorically
required to disclose all necessary information regarding the remote application of an identical or nearly
identical invention that has been documented, according to Section 8(1) of the Patent Act of 1970.
2. Duty to request for examination:
The patent registration process does not provide for any type of scheduled examination for the grant of
a patent application, in contrast to other intellectual property rights. According to section 11(B) of the
Patents Act of 1970, it is the patentee’s responsibility to ask the Controller to look at how the patent has
developed or grown.
3. Duty to respond to objections:
The Patent Controller sends the inspection request to an analyst, who evaluates the growth before
sending the First Examination Report (FER) back to the Patent Controller. In some cases, the First
Examination Report will mention some objections. Responding to such reports of objection is required
of patentees. They must also communicate within a year after the FER’s issuance.
4. Duty to clear all objections:
It is the applicant’s responsibility to address any and all complaints and oppositions made against his
invention, as well as to respond to such objections. If the controller is still unsatisfied, he could also
request a meeting. Additionally, it is the applicant’s responsibility to attend the consultation and address
all objections and oppositions (if any have been lodged) made against the invention.
5. Duty to pay statutory fees:
To be eligible for a patent, patentees must also pay any statutory fees connected to the registration
process. If the payment is not made, the patent will not be considered for the grant. Section 142 of the
Patent Act addresses the payment of appropriate fees and the penalties of failing to pay certain costs.