2021

PATENT PROSECUTION
PROCEDURE IN INDIA
JHANVI TAYAL
AMITY LAW SCHOOL, NOIDA
BBA LLB(H)
BATCH- 2020- 2025
PATENT PROSECUTION PROCEDURE IN
INDIA
INTRODUCTION

Intellectual Property Rights in India has grown from a seed to extending its roots
multilaterally across the globe. The practice of intellectual property rights began its journey
in Renaissance Northern Italy.  A Venetian Law of 1474 was the first historical attempt
aimed at protecting the inventions in the form of a patent. Johannes Gutenberg’s invention of
the printing press and movable type marked the origin of the copyright system in the world
around the year 1450. However, the establishment of a legal procedure for the protection and
enforcement of intellectual property rights multilaterally was a long journey. The key
promoter for this was the successful conclusion of agreement of Trades Related Aspects of
Intellectual Property Rights (TRIPS) in World Trade Organization(WTO).
In India, the Indian Patent Act was introduced in the year 1856 and continued to operate
unmodified for more than 50 years. The Act was later revised and modified into The Indian
Patents and Designs Act, 1911. After India’s independence, a complete bill was enacted by
the Indian Legislature in 1970 known as the Indian Patents Act, 1970. After signing the
TRIPS Agreement to reduce distortions and impairments to international trade, India
continuously amended its Patent Act in 1995, 1999, 2002 and 2005 in order to ensure its
consistency with the obligations under the TRIPS agreement.
IPR has now acquired a central position in the global economy over the past years. The
strength of regulations for the protection of IPR in various countries are seen as determining
the incentives for innovations, as a result, raising returns to international transfer of
technology. The country’s economic supremacy is now measured not only in terms of its
agricultural produce but in terms of its innovation index, IT development etc.

WHAT IS A PATENT?

A patent is defined as a set of exclusive rights granted by a state (national government) to an

inventor or their assignee for a limited period of time in exchange for the public disclosure of
an invention.
The invention must be new and innovative and must not be previously sold. It also must not
be obvious to a person skilled in the concerned field. It can be a product, process for making
the product and should be feasible for industrial application. However, all new ideas aren’t
patentable. The inventor is required to describe the process by which it can be implemented
in practice.

The Importance of filing for a patent

Once a patent is granted, it gives the owner a monopoly over the invention and entitles him to
prevent others from exploiting it. In most countries, Patents can last up to 20 years and they
are available for all technological fields, ranging from engineering to software and
biotechnology.
It is essential for the inventor to secure his rights in return for the time and money put in by
him for the invention.

PROCEDURE OF PATENT PROSECUTION

Patents are registered rights. It is essential to file an application with a detailed description of
the invention and explain its working details in order to obtain patent protection. Drafting a
patent application entails considerable care and skill. Prior to granting the patent, the
application is searched by the Patent Office to see for any similarities in the same field
followed by a process of examination.
In India, the procedure for granting a patent in divided into four phases:
I. Filing of the patent applications
Categories of patent applications
In India, patent applications can be classified under three categories based on their priority
claim:
a) Ordinary Patent Application:

Ordinary patent filing in India can be done along with the provisional or complete
specification. It is further distinguishable from other patents it does not claim any priority
from any other application. Specification is a technical disclosure statement that enables a
person generally skilled in the field to perform the invention. It begins with the title of the
invention and also highlights the field of invention, prior art, objective of the innovation,
summary, detailed description, drawings as well as claims and abstract covering summary
of the invention.
Provisional application has to be followed by a complete specification within a fixed time
period of 12 months.
The basic mandatory requirements for this type of patent application in India are
mentioned as follows:
 Name, address, particulars and nationality of applicants for patent
 Name, address and nationality of inventor of patent
 Provisional or Complete specification with claims, description, drawings and
abstract.
 Some of the other requirements are provided as follows:
 Declaration as to inventorship within a month of filing the patent or along with
complete specification where complete specification is filed after provisional
specification.
 Proof of right in favour of applicant from inventor in writing preferably notarised
within a period of six months from the date of filing.
  Details of all the corresponding foreign applications within a time frame of 6
months and/or within 6 months of filing the patent application in any country
outside India.
b) Conventional Patent Application:

In India, convention patent application claims priority from a convention application and
has to be duly filled in India within a year starting from the date of priority and
accompanied by a complete specification.
The basic essential requirements are similar to those of ordinary patent applications in
India except that in this case, complete specifications are mandatory to be filled.

c) PCT National Phase Applications :

In India, these applications must be filled after filing a PCT application in WIPO and
within a time period of 31 months beginning from the date of priority. It must be
accompanied by a complete specification in English. The English translation of the
priority documents must be filled within 31 months from the date of earliest priority or
within 3 months of requisition made by the controller where PCT/IB/304 is not issued by
WIPO, certified copy of the priority documents should be filed in 31 months starting from
the date of earliest priority.
The basic mandatory requirements for filing a PCT National phase application in India are
mentioned as follows:
  Name, address and Nationality of Applicants and inventors.
  PCT Application number & filing date.
  Priority application number, date of filing and country
  Original Patent specification, claims and drawings in English.
  A copy of International Preliminary Search Report and International Preliminary
Examination Report (if requested).
Requirements which may be filled after 31 months are described as follows:
 Amended claims, if any, filed under Art. 19 of PCT.
 Assignment deed in favour of the Applicant (by mail).
 Power of Attorney (By mail)
 Form PCT/IB/304 (from for notice of transmittal of priority documents)
 Following information regarding the application filed in other countries, if any (as far
as available):
 Name of the Country
 Date of Application
 Application Number.
 Status of the application
 Date of publication
 Date of grant

Patents in India are classified into two categories based on their contents/ amount of
disclosure:
 a) Provisional Specification:
In India, while filing ordinary applications, it is advised that provisional applications must
be filed in order to claim priority as to the content/ disclosure. It should be done to fill the
time gap required from drafting to complete specification in a particular format along
with claims. There is no determined or laid down format for provisional specification and
it can be filed without claims. However, complete specification must be filed within 12
months or within such extended time as allowed or specified by the Controller.

b) Complete Specification:
It must be filed in a specific format along with claims as opposed to provisional
specification. The conventional and PCT national phase applications have to be filed with
complete specification.

According to unity of inventions, patents are classified as:

a) Divisional Patent:
Sometimes, a patent disclosure involves more than one invention, in such cases it is possible
to file a divisional application in respect of distinct invention lacking unity. It can be filed
voluntarily or at the behest of the controller of patent.

b) Patent of Addition:
If the patent disclosure is associated with any developmental modification of the same
invention which was filed by the applicant earlier, the filing of a patent of addition becomes
possible. No annuity fee is payable once a patent is declared as patent of addition and if its
term coincides with the term of the original patent.

II. Publication of Patent Application in India

After the patent application is filed, the patent is published in 18 months after the date of
filing or the date of priority depending which one is earlier, but to earn the right to initiate
infringement proceedings. The Indian Patent Act, 1970 provides similar rights to the
applicant on and from the date of publication of application as those provided to the patentee.

III. Patent Examination Procedure

In India, a deferred examination procedure is followed for patent examination. A patent is not
examined unless and until a request for the same has been filed with the Indian Patent Office.
In order to initiate these examination proceedings, the applicant is obligated to file a request
with the patent office. If the examination report is contrary to the grant of patent, the same is
communicated to the applicant. According to the provisions of the Patent Act, 1970 the
applicant is required to comply with the requirements imposed on him within a year from the
date on which objections are forwarded to him, or else the application is deemed to be
abandoned by the patent office.

Expedited or Early Examination of Patents under the Indian Patent Law

The amendment of Indian Patent Act, 1970 in the year 2016 led to the introduction of the
provision of Expedited examinations for patents.
An expedited examination is a faster process of patent application examination in comparison
to the ordinary examination. As per the rule 24C of the Patents rule amended in 2016, a
request for such expedited examination can be filed only by electronic transmission which is
duly authenticated with the prescribed fee in Form 18A within 48 months of the date of
priority of application or its application date whichever is earliest. A request for such
examination may be filed by Patent Co-operation Treaty (PCT) applicant nominating the IPO
as its International Searching Authority (ISA) or as an International Preliminary Examination
Authority (IPEA) in the corresponding international application or a start-up.

IV. Grant of Patent Application

When the application for patent is found in order of grant, the patent is granted as
expeditiously as possible with the seal of the Indian Patent Office. This grant of patent is
published in the Patents Journal and Letters Patent is issued.

FORMS

In India, the procedure of patent filing is done by filling out the following forms:
FORM DESCRIPTION
FORM 1 Application for grant of patent

FORM 2 Provisional Complete Specification

FORM 3 Statement and undertaking u/s 8

FORM 5 Declaration as to inventorship

FORM 26 Form for authorization of a patent agent for any person in a matter
or proceeding under the act

FORM 18 Request for Examination

FORM 9 Request for publication ( if express publication is desired)

FORM 28 To be submitted by a small entity

TERM OF PATENT IN INDIA

In India, a patent is granted for 20 years starting from the date of application or priority
date, whichever is earlier.

PATENT ANNUITY PAYMENT

In India, patent annuity is supposed to be paid by the patentee every year to keep the
patent in force for the patent term.
REFERENCES

1. The Patent Act, 1970

2. https://iprindia.org/patent-requirements.html
3. https://patentfile.org/patent-process-and-invention-timeline/
4. https://ssrana.in/ip-laws/patents/patent-applications-in-india/
5. https://blog.ipleaders.in/need-know-ipr-laws-india/