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Patent Procedure In India

Author: Nishant Kewalramani1 INTRODUCTION Patent Procedure generally refers to rules related to the process of filing and prosecuting patent applications in a particular jurisdiction. A detailed understanding of the patent process is as important as understanding the nuances of the patent law itself.

PATENT PROCEDURE The patent procedure in India can be broadly divided into the following stages: Filing Request for Examination Publication Examination Opposition- Pre Grant and Post Grant Registration and Renewal fee payment

a) b) c) d) e) f)

a) Filing The first question that arises with respect to filing of a patent application is who can file a patent application? A patent application can be filed either by a person who claims to be the true and first inventor of the invention or it may be filed by the assignee of the true and first inventor2. The application may also be filed by the legal representative of any deceased person who was entitled to file such an application immediately before the death of the true and first inventor3.

Email: Section 6 (1) (a) & (b), The Patent Act, 1970 (as amended). 3 Section 6 (1) (c), The Patent Act, 1970 (as amended)

Another essential inquiry before filing the patent application is where to file the patent application. The patent office has four branch offices in India viz. Delhi, Mumbai, Kolkata and Chennai. Patent application originating out of a particular geographical area can be filed only in a specific branch office. For example, a patent application emerging from Karnataka can be filed only in the Chennai branch office. India recognizes two types of patent filings(a) Provisional application- A provisional application may be filed when an applicant feels that the invention has been conceptualized but at the same time it may not be possible to define the boundaries of the claims to be mentioned in the application. In such a scenario, the provisional application not only helps the applicant to secure a priority date but also gives the applicant 12 months to file the complete application. It is important to describe the invention completely in the provisional application as the law does not permit the applicant to add new matter, outside the scope of the provisional application, at the time of filing the complete application. (b) Complete Application- As the name itself suggests, a complete application is an application that is complete in all respects i.e. detailed description enabling a person to practice the invention, claims, all embodiments, best mode etc. A complete application may be filed within 12 months from the date of filing of the provisional application. One major difference between the provisional and the complete application is that the provisional application may be filed without claims while the complete application compulsorily needs to have claims.

b) Request for Examination (RFE) RFE is a mandatory requirement at the Indian Patent office. An RFE is filed at the option of the applicant when the applicant wants his application to be examined by the Indian Patent office. Unless a RFE is filed the Indian patent office does not take up the application for examination. The applicant has the option of filing the RFE at any time within a non-extendable period of 48 months from the priority date of the application. In case RFE is not filed with this time limit the application is considered as deemed withdrawn. From a practical perspective it is advisable to file the RFE as early as possible because the earlier the RFE is filed the earlier the application will be queued for examination.

c) Publication A patent application gets published upon expiry of 18 months from the priority date of the application. If it is an application for which secrecy directions are issued, publication takes place after cessation of the secrecy directions or after eighteen months whichever is later. If it is a divisional application, it is done after eighteen months from priority of parent application or immediately after filing divisional application whichever is later. In case of national phase of PCT application, it will be published immediately after filing. In case the

application is not published at the end of 18 months it is considered deemed to be published and will have the same effect as publication. The two major reasons that make the publication date a really vital one are(a) Rights of the patent applicant commence from the date of publication i.e. once the patent is granted and the patent owner sues someone for infringement then he will receive damages/account of profits from the date of the publication. (b) Pre grant opposition opportunity opens up for third parties to oppose the grant of the patent from the date of publication. In case an applicant does not wish to wait for 18 months for the publication to occur, there is an option filing a request for early publication. This request once filed ensures that the application will be published within one month from the date of filing of such request. Given the significance of the publication date, it becomes really important for an applicant to decide whether to opt for early publication or not. At one end early publication will ensure that the rights of the applicant will commence early while on the other hand the application will be open for opposition sooner than the normal publication procedure. d) Examination As seen above a Request for Examination can be filed at any time after the patent application is filed. The examination of the patent application will be done by the Controller in co-ordination with the patent examiner. After receiving a request for examination, the Controller will refer the application to an examiner generally within one (1) month from the date of publication or request for examination, whichever is earlier4. The examiner on receiving the application will review the application and make a report in respect of the following: a. whether the form of application and specification are in accordance with the requirements of the Patent Act and the Rules; b. whether the invention that forms part of the patent application satisfies the patentability requirements such as subject matter, industrial applicability, novelty, inventive step and specification; and c. whether the application confirms to any other requirements such as unity of invention and so on prescribed under the Act and Rules.5 The First Examination Report (FER) will be sent to the applicant or his authorized agent. In case the request for examination is filed by any other interested person (third party), only intimation of such examination will be sent to such person and FER will be sent to applicant or his authorized agent.

4 Section 12(1), The Patents Act, 1970 (as amended) 5 Dr. Kalyan C. Kankanala, Arun Narasani and Vinita Radhakrishnan, Indian Patent Law and Practice, pg. 70, OUP Publications, ISBN: 0-19-806774-7 978-0-19-806774-0

Putting application in order for grant Once the FER is issued by the patent office the applicant has to comply with all the requirements mentioned in the FER and subsequent examination reports within 12 months from the date of issue of the FER. This is known as putting the application in order for grant. If all the requirements are not met within these 12 months the application shall be deemed to have been abandoned. Another vital point to be learnt from this is that the response to examination report should be filed as soon as possible in order to communicate effectively with the patent office and meet all requirements of the subsequent examination reports. From a practice perspective it is always advisable to request hearing in case of adverse decision on the application. This practice ensures that the patent is not rejected without giving a hearing to the applicant. e) Opposition- Pre Grant and Post Grant Pre Grant Representation Once the patent application is published it is open for the public to oppose the patent application. The pre grant representation can be filed at any time up till the grant of patent. As per the Indian patent rules a patent cannot be granted for at least 6 months from the date of publication of the application. This means that minimum period available for pre grant representation is 6 months and it is advisable to file the pre grant representation as early as possible. Various grounds for pre grant representation can bePatentability of the invention including Novelty, inventive step and industrial application Non-disclosure or wrongful mentioning of the source and geographical origin of biological material used in the invention Anticipation of invention by knowledge, oral or otherwise available within any local or indigenous community in India or elsewhere Wrongful obtaining Prior publication Prior claiming Prior public knowledge and use in India Insufficiency of description Failure to disclose the information regarding corresponding foreign application or furnishing false information Failure to file convention application within twelve months from the date of first application made in the convention country Post Grant opposition

A Post-Grant Opposition may be filed by any interested person after the publication of patent grant and within one (1) year from the date of such publication. Person interested includes a person engaged in, or in promoting research in the field of the invention. Such person must have bonafide interest in the invention and the onus of proving lies on him. For example, if X gets a patent grant on a gene sequence responsible for diabetes, a scientist at National Institute of Nutrition, who is researching on diabetes will be considered to be an interested person6. The grounds of filing post grant opposition are the same as the grounds of pre grant representation. The procedure for opposition involves constitution of the Opposition Board by the Controller. The Opposition Board consists of three members including the Chairman. The Board conducts the examination and submits the report to the Controller. The Controller thereafter fixes a date for the hearing and gives parties at least ten days notice. He hears the parties and then makes the decision. Post grant opposition procedure may be summarized with the help of the following flow diagram 7

6 7

Supra F.N. 6 at pg. 80 Ibid

Post Grant Publication

Notice of Oppositions within 12 months of publication- By Interested Person (opponent)Grounds Under Section 25(2)

Written Statement and Evidence

Patent Holder is notified

Controller constitutes Opposition Board

Patent Holder can contest Reply statement and evidence within 2 months from date of receipt of notice from controller

Refers the Opposition to the Opposition Board.

Opponent can file evidence in response to the Patent Holder evidence within one month from receipt of such evidence

Report within three months from reference every ground of Opposition - with joint recommendations.

Hearing Notice sent by Controller

Hearing (If parties want)

Revoke the Patent

Requires amendment in Patent

Reject Opposition

Registration and Renewal fee payment Once the application is published and all the objections raised in the examination report are met the application proceeds towards registration given there is no pre grant representation pending. In case there is a pre grant representation against the application the patent is granted once the opposition is dismissed. Upon grant of the patent renewal fee has to be paid for maintaining the patent for 20 years. At the time of grant one of the following two situations may arise with respect to the payment of renewal fee: a) The patent is granted within two years from the date of filing of the patent- In this case the renewal fee should be paid before the expiry of two years from the date of filing. b) The patent is granted later than two years from the date of filing of the patent- In this case the renewal fee should be paid within 3 months from the date of recordation of the patent. A detailed flow diagram of the patent procedure in India has been provided in the Draft Manual of Patent Practice and Procedure issued by the Indian Patent office. The flow chart has been reproduced below-

Summary The Indian Patent procedure essentially comprises of six stages viz. Filing, Request for Examination, Publication, Examination, Opposition and Registration. At each stage in the procedure there are certain deadlines prescribed in the Patent Act 1970 and the corresponding rules. Some of these deadlines may be extended if a timely request is made to the Controller of Patents. However, there are certain deadlines such as 12 months from provisional to file the complete, 12 months to put the application in order for grant and 48 months from priority date for filing Request for Examination, which are non extendable deadlines.