Author: Harsh Verma, Galgotias University
Edited By: Gyanu Patel, Amity University Lucknow (UP)
- INTRODUCTION
The process of filing patent applications is central to establishing intellectual property rights. Through patents, an inventor gains exclusive rights over his/her invention, thereby excluding any unauthorized use, production, or sale of the same. Such procedural framework has been laid down for the filing of patent applications through the Patents Act, 1970, and Patent Rules, 2003, in India; these are periodically updated to keep up with changes in the technical and legal environment. The steps and requirements of this process must be understood if one is going to succeed in this field of complex patent law by inventors, businesses, and attorneys.
The present article would, therefore, delve into the details of the process of submitting patent applications under the Act and the Rules right from the very commencement at the pre-filing considerations stage to post-grant processes. We shall also, from time to time, compare the procedures with other jurisdictions and analyze key legal provisions along with significant case laws that shaped the interpretation and application of patent laws in India.
Keywords (Minimum 5): Patent Application, Intellectual Property, Patent Act, Patent Rules, Patent Prosecution
- SUB-HEADINGS
- Meaning, Definition & Explanation
Patent Application: It is a formal document in front of the patent office to protect something that he had invented. It is an initiation of the law process—this process resulting in granting a patent and allowing him to enjoy protection through exclusive rights over the invention.
Definition: According to Section 2(1)(j) of the Patents Act, 1970, an “invention” means any new product or process involving an inventive step capable of industrial application. This, in essence, is what the patent application has tried to prove.
Examinations: The application is then subjected to detailed examinations, which include checking satisfaction of the application on the requirements of novelty, inventive step, and industrial applicability. Searching for prior arts and reviewing claims that are made in the application is included in the process of a search[1].
- Historical Background / Evolution (if any)
Early Patent Systems:
Ancient Practices: under ancient Greece and Rome, some patent-like protections did exist. Athens, in offering some form of protection by privileges, took into consideration the limitations of time that could be placed on protecting their creation by the inventors[2].
Medieval Europe: The Statute of Monopolies 1624 in England is considered as the development after the prime milestone of patent law. It provided that a patent is to be granted only for any manner of new manufactures, and also for the benefit and good of such as shall exercise the same, or for the term of fourteen years or less laying the foundation for modern patent systems[3].
Development in India:
Colonial Era: It was the British who introduced the Patents and Designs Act of 1911 in India. This outlined the fundamental framework by which the patents would be protected and an effect of the British Act could be seen in the law established. Subsequently, it was designed to be implemented in the colonial era to safeguard the inventions and designs[4].
Post-Independence: The Patents Act, of 1970, substituted the colonial act with the freedom of India. The significant amendments took place as follows:
Product Patents: The Act had originally provided for process patents for pharmaceuticals and agrochemicals. The Patents Amendment Act, of 2002 extended it to the covering of product patents to meet international requirements[5].
Term of Patent: The term of the patent was originally 14 years from the date of grant. Subsequently, it was increased to a period of 20 years by the Patents Amendment Act, of 2005, to bring it at par with international practices[6].
Recent Developments:
TRIPS Compliance: The obligation under the TRIPS Agreement was met further by another major reform, the Patents Amendment Act, 2002, which provided for the introduction of product patents in pharmaceuticals and agrochemicals and the enhancement of the term of the patent to 20 years[7].
Recent Reforms: The recent amendments in the Act, thereby including the amendment rules, the Patents Amendment Rules of 2016, 2019, and 2021 are carried out for primarily improving procedural efficiency, enabling start-ups, and digitalization in the patent process[8].
- Comparison with other Countries (if needed)
United States
The United States has always been “first to invent,” but has adopted a “first to file” system with the passage of the America Invents Act of 2013. Now, the U.S. is a lot closer to lining up with the rest of the world. The United States Patent and Trademark Office requires an applicant to describe his invention by providing specifications, claims, and drawings. USPTO also has special procedures for provisional and non-provisional applications where provisional applications act as a placeholder for a party who wants to file discovery on an invention and establish an early filing date without having begun the examination process[9].
European Union
European Patent Office has a centralized system where one can file a patent that can be validated in multiple European countries.
The EPO works under the European Patent Convention, whereby inventions must be new, involve an inventive step, and must be susceptible to industrial application. The EPO makes a provision: that in respect of a plurality of member states, one may have one application. Thus it is relatively easy to have patent protection across Europe. It is equipped with a search and examination phase that makes the examination phase complete and comprehensive, and the EPO provides detailed guidelines on drafting and filing applications[10].
Japan:
Japan maintains a “first to file” patent system which is handled by the Japan Patent Office. Japanese law demands very detailed and thorough descriptions of the invention with strict requirements of disclosure. Japan also offers something called a “Patent Prosecution Highway” for expedited examination procedures when a corresponding patent application has been allowed in another participating country. The process will be hassle-free and it will reduce the huge backlog of applications[11].
China
The Chinese patent regime is administered by the China National Intellectual Property Administration, also known as CNIPA.
Adopting a “first-to-file” system, China requires a specification with claims and drawings in detail. It may be noted that in the recent past, on its way to strengthening the regime for intellectual property, China has done remarkably good work by introducing more stringent examination procedures coupled with mechanisms for enforcement. Briefly, the Chinese patent system includes utility model patents with a shorter duration and requirements less strict than those for regular patents[12].
India
In this country, the principle followed and guided by the Patents Act, of 1970, and the Patent Rules, of 2003, is “first to file.” The requirements at the Indian Patent Office are also in tune with those of most countries, with the need for detailed descriptions, claims, and drawings. Provisions in India provide that provisional and complete specifications are to be filed. The provisions of the opposition in India include the following: both pre-grant and post-grant opposition. Any third party can file an opposition to invalidate a patent application or a patent granted. All these provisions are to ensure that only genuine and meritorious inventions get patent protection[13].
- Legal Provisions / Procedure / Specifications / Criteria (if any)
Filing of Patent Application
The complete process of filing a patent application in India is established through the Patents Act, 1970, read with the Patent Rules, 2003. Enshrined therein are some of the most important stages to be followed, so that the application could be considered as fully in compliance with all the legal requirements and technical formalities.
- Pre-filing Considerations
The proper and searching patent search shall be done beforehand of the application of the patent shall make an applicant sure that his invention is new and it was not patented or published in any public domain. Also, the applicant should finalize the types of applications that have to be filed, provisional or complete[14].
- Types of Patent Applications
Provisional Application: An application filed when an inventor does not have a full description of the invention but needs to obtain a filing date, a basic outline of the invention is required[15].
Full Specification: It means an application furnishing all full descriptions of the invention, comprising both technical information, the claims and the drawings. In other words, it is the final application and it’s subject to examination, and when accepted, leads to the granting of a patent[16].
- Content of Application
The following are among the most important things that any application for a patent shall include:
Invention Title: The title of the invention should be explicit, brief, and based on the nature of the invention.
The description of the invention should be detailed enough to give the construction, operation, and application. Much of the detail in this area is considered seminal to the point that it can contain quite a bit so that a person of skill in the relevant art is in a position to carry out and use the invention.
Claims: The claims form the part considered the gist of a patent application or an issued patent. The claims must clearly and distinctly point out the protection being reclaimed. Clarity and conciseness are of importance.
Drawings: There must be drawings accompanying the application to show the technological details of the invention[17].
- The Process of Filing
Registration: The Patent Office of India may issue the application form with the prescribed forms and fee. The Application may both be filed Online and sent physically to any of the branches of the Patent Office[18].
Fees: A filing fee, variable depending on the status of the applicant–individual, small entity or large entity, is to be paid at the time of filing a provisional or non-provisional application. Filing fee reductions for individual and small entity[19].
Examination and Publication
1 Publication
Thereafter, on filing, the patent application shall be published in the Official Journal of the Indian Patent Office, which usually occurs 18 months from the date of filing or the priority date. Publication opens up the application for scrutiny by public viewing for transparency and any potential opposition[20].
- Request of Examination
The reply to an RFE is to be filled within 48 months from filing or priority date; in the absence of the request, the application does not move forward into examination[21].
- Examination
Substantive Examination: The Indian Patent Office subjection the application to check whether it meets all the provisions of the law, such as novelty, inventive step and industrial applicability[22].
Examination Report: The examiner sends an examination report stating details of the objections or any requisitions of amendments to the applicant. Usually, the objections are lack of clarity in claims, insufficiency in disclosure, or not being novel[23].
Grant of Patent
- Reply to Examination Report
Applicant to whom the report is sent shall within six months from the date of the issue thereof, send a reply to the examination report on objections taken, if any, and necessary amendments. If no response, it may be declared abandoned[24].
- Grant of Patent
A patent is granted where the application has complied with every requirement in the law and where, further, the objections raised, if any, are overcome. The grant, besides being formally published in the Official Journal, is recorded in an official letter or document issued to the applicant. The patent is good for 20 years from the filing date and maintainable by the payment of annual maintenance fees[25].
- Guidelines / Rules / Regulations / Notifications / Circulars (if any)
Guidelines
- Examination Guidelines
The detailed guidelines issued by the Controller General of Patents, Designs & Trade Marks, inter alia, cover the following for achieving uniformity and consistency in the examination of patent applications:
Patentability Criteria: Detailed guidelines concerning novelty, inventive steps, and industrial application of the invention[26].
Biotechnological Inventions: Subject matter for examination of biotechnological inventions laying down requirements on deposits of biological material and sequence listings[27].
Software and Business Method Patents: Guidelines to examine patents relating to software, algorithms and business methods. Such guidelines bring to the notice of the Examiner what is excluded under Section 3(k) of the Patents Act[28].
- Drafting Guidelines
These directions are thus aimed at ensuring that the drafting of the patent specification, claims, and drawings is done. In the same breath, it has further been impressed upon that clarity, conciseness, and completeness ensure that the invention is described well enough and the scope of protection clearly defined[29].
- PCT National Phase Pointers
For foreign applicants entering the national phase in India under the Patent Cooperation Treaty procedural requirements have been laid down to detail requirements submitted with and prosecute PCT national phase application, and also documents submission, fees payment, and procedural timelines instructions[30].
Rules and Regulations
The Patents Rules, 2003
As amended from time to time lay down the procedural provisions for filing and prosecuting applications for patents in India. Amongst other pretty significant things, these provisions inter alia include:
Form and Content of Applications: Detailed requirements regarding the form and content of applications for patents including specifications, claims, and drawings[31].
Fee Structure: Scale of fees to be payable in respect of application for patents, proceedings, oppositions, and other matters in connection with patents[32].
Time: Schedules relating to different stages of processing applications letters patents and other proceedings under this Act[33].
- The Patent Amendment Rules, 2021
The Patent Amendment Rules, 2021 changed the ease and effectiveness of grants of patents. Some of the major changes introduced were:
Expedited Examination: Request for Expedited Examination is now extended to a request from a start-up or small entity[34].
Electronic Filing: The patent applications and all documents are filed now only electronically to make the entire system of processing completely paperless[35].
Reduction in Fees: Reduction in fees for startups and small entities to facilitate innovation and filing of patents[36].
- Case Laws / Precedents / Overrulings / Judicial Development of the Concept (if any)
Notable Cases
Novartis AG v. Union of India:
The Supreme Court of India denied patent protection for Novartis’ cancer drug, setting a precedent for the interpretation of patentability criteria under the Patents Act[37].
Bilski v. Kappos:
A landmark decision by the U.S. Supreme Court that redefined the criteria for patent-eligible subject matter[38].
- Amendments / Additions / Repealing (if any)
- The Patents (Amendment) Act, 2002
Overview
The Patent (Amendment) Act, of 2002 had been a milestone amendment towards Indian Patent Law in compliance with the TRIPS Agreement. Some of the important features of said amendment are:
Product Patents in Pharmaceuticals and Agrochemicals: The area of patent protection has been widened to include pharmaceutical and agrochemical products, which were earlier excluded[39].
Term of Patent: The term of a patent was further increased from 14 years to 20 years from the filing date[40].
Patentability Criteria: The requirements of patentability have now been revised ionizing novelty, an inventive step and industrial applicability[41].
Impact
This critical amendment that opened up the Indian market to global pharmaceuticals and agrochemicals firms, invited foreign investment and technology transfer. It filled up the gaps and, in a way, extended the protection of intellectual property in India.
- The Patents (Amendment) Act, 2005
Overview
The Patents (Amendment) Act of 2005 went one step further in the process of fine-tuning so that the Indian patents regime could find itself again more in tandem with international standards, and explicitly addressed points of public health concern. Several changes were specifically brought in:
Section 3(d): The concerns of ‘evergreening’ were not accommodated as granting of patents to the new forms of known substances, which do not result in the improvement of the known efficacy, was disallowed[42].
Compulsory Licensing: More stringent compulsory licensing provisions were added that addressed the grant of licenses when the patented invention is not being made available to the public at a reasonably affordable price[43].
Opposition pre-grant and post-grant: It provided for a system where a third party could pre-grant and post-grant oppose the grant of designs patent and also challenge the validity of a granted patent[44].
Impact
This amendment was the balancing of a very delicate need to protect strong patents and the imperative to ensure access to affordable medicines. Moreover, it made the grant process of patents more transparent and accountable.
- The Patents (Amendment) Rules, 2016
Overview
The Patents (Amendment) Rules, 2016 substantially brought in various procedural amendments to align the filing and prosecution of patents as close as possible to the situation of ‘walk in a park’.
Expedited Examination: The law is expected to provide for expedited examination for start-up applicants selecting the Indian Patent Office as the International Searching Authority or the International Preliminary Examining Authority under the PCT[45].
Fee Reduction: Reduction of such fees for startups, small entities and individual applicants shall encourage more innovation[46].
Electronic Filling: It encourages the electronic filing of Patent Applications and documents to bring in more efficiency and at the same time reduce processing time[47].
- The Patent Amendment Rules, 2019
Overview
The Amendment Rules to the Patents, 2019, contributed a lot towards the working of simplification of the procedure, part of the law of patents simply and efficiently. General changes:
Wider Expedited Examination Criteria: The expediting examination criteria are widened to include female applicants, government departments, and institutions set up under any Central, Provincial, or State Act[48].
Simplified procedure for filing of documents related to patent applications: The procedure for filing of patent applications and related documents has been adequately simplified making it user-friendly[49].
Impact
The above-mentioned amendments were made to make the system of patents more inclusive and user-friendly to the categories of applicants that hitherto were underrepresented, like the women and the public institutions etc.
The latest amendment, namely, the Patents (Amendment) Rules, 2021, went one step ahead of the earlier one and brought more procedural gains concerning the following:
Further Reduction in Fees: Provided more extended scale reduction in fees to educational institutions to aid institutions in prompting more academic research and innovation[50].
Better Electronic Processing: Provided that all the documents about the submission of a patent shall be filed electronically to maintain a green and paperless environment[51].
Analysis
The 2021 amendments found the zeal and commitment by India to ensure that an environment that is propitious and affordable is created for matters and issues touching on innovation and academic research.
Some provisions of the Patents Act, over the years, have been repealed to remove redundancy and to come in line with international practices. The major repeals are as follows:
Pre-2002 Amendment Old Provisions Relating to Product Patents in Pharmaceuticals: Before the 2002 amendment, India did not grant product patents in pharmaceuticals. The provisions were repealed to meet the TRIPS requirements[52].
Unwanted Administrative Procedures: To make the application and prosecution of a patent smooth many of the procedural requirements found to be unwanted or obsolete have been disposed of[53].
- CONCLUSION & COMMENTS
Conclusion
It is a structured process, and the Indian Patent System does indeed provide an extremely clear and structured path to the applicant for a patent. Each step, from filing to examination, grant, and enforcement, is well elaborated. The structure safeguards the rights of the inventors while seeing that a rigorous standard for patentability is maintained.
Dynamic Legal Framework: The amendments to the Patents Act and the rules from time to time reflect India’s effort to not only keep pace with global standards related to emerging technological and economic trends but also to protect intellectual property and ease international trade and investment. Substantial changes brought in by the Patents Amendment Acts of 2002 and 2005 strengthened intellectual property protection and eased international trade and investment.
Judicial oversight: It is such judicial decisions, as given in Novartis AG and Bayer Corporation, that has remarkably developed the law relating to patents by interpreting important provisions against the backdrop of public health concerns. It is through such judgments that the system of patents has been made to strike a balance between the rivalling interests of encouraging innovation and protecting the public interest, particularly in the sphere of pharmaceuticals.
Future Directions: The roadmap ahead for the Indian patent system is one of continuous evolution, meeting new challenges and opportunities. These include further harmonization with international agreements, enhanced support to startups and emerging technologies, and continued emphasis on public health and access to affordable medicines.
Comments
Balancing Innovation and Access: There has been a classic dilemma in balancing patent protection with public access to essential medicines. Although compulsory licensing and stringent examination criteria under Section 3(d) have been great steps in this regard, a lot of work is still to be done to make the patent regime promote innovation without jeopardizing public health.
Embracing advances in technology: The patent system must change with the quickening of the pace of technological change, particularly in areas like artificial intelligence and biotechnology. This involves continuing the development of the legal frameworks that deal with complex innovations so that the system remains effective and accessible while changing to keep pace with new patentability questions and for continuous streamlining of procedures.
Strengthening enforcement: Effective enforcement is at the heart of keeping the integrity of the patent system. Improved mechanisms for the resolution of disputes, plus more effective tools for enforcement, will help take on infringement and protect the rights of patent holders.
Global Integration: How much India integrates into the global patent systems and conformance to international standards will be of importance. In this regard, contributing towards global patent debates and adhering to the Treaties on World Intellectual Property Organization, such as the TRIPS Agreement, will help India move effectively about international trade and intellectual property challenges.
- REFERENCES
- Books / Commentaries / Journals Referred
- Khurana, S. (2020). Intellectual Property Law in India: A Comprehensive Guide. LexisNexis.
- Bhat, V. N. (2018). Indian Patent Law: A Comprehensive Guide. Eastern Book Company.
- Ghosh, S. (2019).Patent Law and Practice in India. Sweet & Maxwell.
- Online Articles / Sources Referred
- Controller General of Patents, Designs & Trade Marks (CGPDTM). (2023). Examination Guidelines for Patent Applications. Retrieved from https://www.ipindia.gov.in/
- (n.d.). PCT National Phase Guidelines. Retrieved from https://www.wipo.int/pct/en/
- (n.d.). Artificial Intelligence and Patents. Retrieved from https://www.wipo.int/patents/en/
- Indian Patent Office. (2023). Drafting Guidelines for Patent Applications. Retrieved from https://www.ipindia.gov.in/
- (n.d.). Patent Pools and Access to Medicines. Retrieved from https://www.wipo.int/patents/en/
- Cases Referred
- Novartis AG v. Union of India, 2013 (6) SCC 1
- Bilski v. Kappos, 561 U.S. 593 (2010)
- Statutes Referred
- The Patents Act, 1970 (India).
- The Patents (Amendment) Act, 2002 (India).
- The Patents (Amendment) Act, 2005 (India).
- The Patents (Amendment) Rules, 2016 (India).
- The Patents (Amendment) Rules, 2019 (India).
- The Patents (Amendment) Rules, 2021 (India).
TRIPS Agreement, 1994
[1] Indian Patent Office. (2023)
[2] Khurana, S. (2020). Intellectual Property Law in India: A Comprehensive Guide. LexisNexis, pp. 12-15
[3] Statute of Monopolies 1624
[4] Patents and Designs Act, 1911 (India)
[5] The Patents (Amendment) Act, 2002
[6] The Patents (Amendment) Act, 2005
[7] TRIPS Agreement, 1994
[8] The Patents (Amendment) Rules, 2016
[9] United States Patent and Trademark Office. (2023). General Information Concerning Patents.
[10] European Patent Office. (2023). Guide for Applicants.
[11] Japan Patent Office. (2023). Guide to Filing a Patent Application.
[12] China National Intellectual Property Administration. (2023). Patent Examination Guidelines.
[13] The Patents Act, 1970 (India).
[14] Ibid
[15] Ibid
[16] Ibid
[17] WIPO. (n.d.). Understanding Patents
[18] Indian Patent Office. (2023)
[19] Ibid
[20] Ibid
[21] The Patents Act, 1970 (India)
[22] Ibid
[23] Ibid
[24] Ibid
[25] Ibid
[26] Controller General of Patents, Designs & Trade Marks (CGPDTM). (2023). Examination Guidelines for Patent Applications
[27] Ibid
[28] Ibid
[29] Indian Patent Office. (2023)
[30] WIPO. (n.d.). PCT National Phase Guidelines
[31] The Patents Rules, 2003 (India)
[32] Ibid
[33] Ibid
[34] The Patent (Amendment) Rules, 2021 (India)
[35] Ibid
[36] Ibid
[37] Novartis AG v. Union of India, 2013 (6) SCC 1
[38] Bilski v. Kappos, 561 U.S. 593 (2010)
[39] The Patents (Amendment) Act, 2002 (India)
[40] Ibid
[41] Ibid
[42] The Patents (Amendment) Act, 2005 (India)
[43] Ibid
[44] Ibid
[45] The Patents (Amendment) Rules, 2016 (India)
[46] Ibid
[47] Ibid
[48] The Patents (Amendment) Rules, 2019 (India)
[49] Ibid
[50] The Patents (Amendment) Rules, 2021 (India)
[51] Ibid
[52] The Patents (Amendment) Act, 2002 (India)
[53] The Patents (Amendment) Rules, 2016 (India)
