Patent Registration in India

Importance of Patent Filing in India

The benefits of registering a patent are discussed below:

• Legal Protection: Infringement Safeguard: Patent Registration provides legal protection against infringement, ensuring that others cannot use, make, or sell the patented invention without the inventor’s consent. This protection is enforceable by law, allowing the patent holder to take legal action against infringers.
• Deterrence: The existence of a patent serves as a deterrent to potential infringers, reducing the likelihood of unauthorised use and helping maintain the inventor’s market position.
• Revenue Generation: By holding a patent, inventors can generate significant income through the sale or licensing of their invention. This financial reward is a direct incentive for inventors to innovate and invest in new ideas.
• Return on Investment: The costs associated with developing an invention, including research, development, and testing, can be substantial. Patent protection ensures that inventors have the opportunity to recoup these costs and profit from their innovation.
• Incentive to Innovate: Patent protection incentivises inventors and companies to invest time and resources into developing new technologies. Knowing that their inventions will be protected and that they can benefit financially encourages continuous innovation.
• Technological Advancement: Patents drive technological progress by encouraging the creation of new products, processes, and solutions. This advancement benefits society as a whole by providing new technologies that improve quality of life.
• Economic Development: Innovation is a key driver of economic growth. By protecting and promoting new inventions, patents contribute to the overall economic development of a country. New technologies can lead to the creation of new industries, jobs, and markets.
• Global Competitiveness: Patents help inventors and companies maintain a competitive edge in the global marketplace. Countries with strong patent systems are often leaders in technological innovation, contributing to their economic strength on a global scale.

Eligibility Criteria for Patent Registration in India

Inventors looking to secure a patent in India must ensure that their invention meets several stringent criteria, as outlined in the Indian Patents Act. These criteria help determine whether an invention is eligible for patent protection.

The eligibility criteria for patent registration in India are outlined below:

1. Novelty: Novelty is the cornerstone of patent eligibility. To qualify as novel, the invention must be entirely new. This means that it should not have been disclosed or made available to the public in any form before the patent application is filed. An invention loses its novelty if it has been published, demonstrated, or used publicly before the patent application. This includes any prior publication in journals, books, websites, or any other public forum. Therefore, the invention must be kept confidential until the patent application is submitted. The invention must be the latest development in its field, representing a new contribution to existing technology. If the invention is already known or anticipated by prior art (existing knowledge in the field), it cannot be considered novel.
2. Inventive Step (Non-Obviousness): Beyond novelty, the invention must include an inventive step, which means it should offer something more than what is already known. It should not be obvious to someone skilled in the relevant field of technology or industry. The inventive step should involve a significant technical advancement or an improvement of existing technologies. It should introduce a new way of solving a problem or improving upon existing solutions in a manner that is not straightforward or predictable. The inventive step ensures that patents are granted only for truly innovative ideas. If the invention is something that a person with average skills in the relevant field could easily deduce, it would not qualify for a patent.
3. Industrial Applicability: The invention must have practical use and be capable of being produced or used in an industrial setting. This means that the invention should solve a specific problem and have tangible applications in industry. The invention must be capable of being manufactured or used in some industrial process. It should not be merely theoretical or speculative, but rather something that can be made or applied in a real-world scenario. Products created solely for aesthetic purposes, such as artistic works or designs that do not serve a functional purpose, do not qualify for patent protection. The invention must offer a functional advantage or solve a practical problem to be eligible for a patent.

Not Prohibited under Sections 3 & 4 of the Patents Act:

1. Section 3 Exclusions (Non-Inventions): Certain categories of ideas or discoveries are not considered inventions under Indian law and therefore cannot be patented. These include:
2. Frivolous inventions: Inventions that are contrary to well-established natural laws.
3. Inventions against public order or morality: For example, inventions related to gambling, prostitution, or other activities deemed immoral.
4. Scientific discoveries: Mere discoveries of natural principles, abstract theories, or scientific methods are not patentable.
5. Agricultural methods: Methods of agriculture or horticulture are excluded from patentability.
6. Mathematical methods and business methods: These are considered non-technical and therefore ineligible for patents.
7. Mere arrangement or rearrangement: Simple reconfigurations of known devices or systems, without introducing new functionality or innovation, cannot be patented.

Section 4 Exclusions:

1. Atomic Energy-Related Inventions: Any invention that falls within the scope of atomic energy, as defined by the Atomic Energy Act, is excluded from patent protection in India. This is to maintain control over atomic energy and related technologies, which are considered sensitive and of national importance.

Patent Registration Criteria Summary

Types of Patent Applications in India

Patent Types by Duration and Scope

The various types of patent applications based on their protection terms are as follows:

Provisional Application: A provisional application is designed to provide temporary protection for an invention that is still under development. This type of application is particularly beneficial for inventors who need additional time to finalize their invention or secure funding. It grants protection for 1 year from the filing date, during which the inventor can continue to refine their invention or seek financial support. Before the provisional application expires, the inventor must file a complete application to secure long-term protection. The complete application must include a comprehensive description of the invention, covering all aspects and details, to ensure full patent protection.

1. The invention must be novel and not publicly disclosed.
2. The application should describe the invention sufficiently to support a complete application.

Complete Application: A complete application is filed to obtain full-term patent protection for an invention. It can be filed directly or as a follow-up to a provisional application. This application provides protection for up to 20 years from the filing date, contingent upon the payment of annual maintenance fees. The complete application must contain a detailed description of the invention, including its unique features and technical details, to meet all legal requirements for patentability.

1. The invention must be novel, involve an inventive step, and have industrial applicability.
2. The application must include a full and detailed description of the invention.

Patent Categories by Purpose

The following are the different types of patent applications in India based on specific purpose:

• PCT International Patent Application: The PCT International Patent Application is used to seek patent protection in multiple countries through a single application filed under the Patent Cooperation Treaty (PCT). This application initiates the process for obtaining patents internationally and simplifies the procedure by allowing inventors to file one application for multiple PCT member countries. It helps streamline the process for global patent protection.
  • The invention must be novel and non-obvious.
  • The application must be filed with the PCT Receiving Office and meet all formal requirements.
• PCT National Phase Patent Application: After filing an international patent application under the PCT, the PCT National Phase Patent Application allows the inventor to enter the national phase in India. This step is crucial for pursuing patent protection in India based on the PCT international application. The inventor must file this application within 30 months from the priority date of the PCT application to secure patent rights in India.
  • The PCT application must be filed and processed according to PCT rules.
  • The national phase entry must be completed within the specified timeframe.
• Convention Patent Application: The Convention Patent Application allows inventors to claim priority based on an earlier patent application filed in a member country of a patent convention, such as the Paris Convention. This application leverages the filing date of the initial application to seek protection in other member countries, effectively extending the protection of the invention to those jurisdictions.
  • The earlier application must have been filed in a convention country.
  • The Convention Patent Application must be filed within 12 months of the original application to claim priority.
• Divisional Patent Application: A divisional patent application is used to divide an existing patent application into multiple separate applications, each covering different aspects of the original invention. This allows inventors to secure patent protection for various inventive elements disclosed in a single original application, ensuring comprehensive coverage.
  • The original application must disclose multiple inventions or inventive concepts.
  • Each divisional application must relate to a distinct inventive aspect of the original application.
• Patent of Addition Application: A patent of addition application is filed to protect improvements or modifications made to an already existing and patented invention. This type of application is linked to the main patent and provides protection for incremental changes or enhancements. It ensures that enhancements or modifications to the original invention are also protected.
  • The improvement or modification must be novel and non-obvious.
  • The application must be related to a previously granted patent.

How to File a Patent Application in India (Basic steps)

You can follow the steps descried below to file a patent application in India:

1. Choose the Type of Patent Application: Decide whether to file a Provisional Application, which provides 1 year of temporary protection, or a Complete Application, which offers full-term protection for up to 20 years.
2. Conduct a Patent Search: Perform a patent search to verify that your invention is new and has not been previously patented or disclosed to the public. This step ensures that your invention meets the novelty requirement.
3. File the Patent Application: Submit Form-1 along with the Patent Specification in Form-2. If you initially file a provisional application, ensure that you replace it with a complete application within 1 year.
4. Draft the Patent Specification: Prepare a detailed patent specification that thoroughly describes your invention. This document must be filed with your application to provide a comprehensive disclosure to the Registrar.
5. Publish the Patent Application: Your application will be published in the Patent Journal 18 months after the filing date. This publication marks the first time your invention is made public.
6. Request Patent Examination: Within 48 months of filing, request an examination of your patent application. An examiner will review your application and may raise objections. Address any objections within 12 months and attend hearings if necessary to resolve any disputes.
7. Obtain the Grant of Patent: After resolving all objections, the Registrar will grant the patent rights, providing you with protection for 20 years from the filing date.

List of Documents Submitted During the Patent Application Procedure

You will need to submit the following documents when you file a patent in India:

• Application Form (Form-1)
  • This is the formal application for patent registration.
• Provisional/Complete Specification
  • A detailed description of the invention, including its features and functional aspects. The provisional specification is used for temporary protection, while the complete specification is required for full-term protection.
• Abstract of the Invention
  • A brief summary of the invention, outlining its key aspects.
• Power of Attorney
  • Authorisation for the person or entity filing the application to act on behalf of the inventor or applicant.
• Statement and Undertaking (Form 3)
  • A declaration confirming the accuracy of the information provided and the inventor's rights.
• Priority Document (if applicable)
  • Evidence of priority claims if the application is based on an earlier application filed in a convention country.
• Proof of Right to File
  • Required if the applicant is not the inventor, demonstrating the right to file the application.
• Acknowledgment of Fee Payment
  • Proof that the requisite fees for patent registration have been paid.
• Form 28
  • Required if the applicant claims a rebate in fees as a recognised MSME or startup.

How to Draft a Patent Application (Complete Process)

By following the steps given below, you can draft a patent application in India:

• Complete Application Form (Form 1)
  • Gather Information: Collect all necessary details about the applicant (individual or company) and the invention.
  • Fill Out Form 1: Accurately provide information such as the inventor’s name, address, title of the invention, and applicant’s details.
  • Submit Form 1: Ensure that all sections are completed and sign where required before submission.
• Prepare Patent Specification (Form 2)
  • Determine Specification Type: Decide whether to file a complete or provisional specification.
    • Complete Specification: If the invention is fully developed, draft a complete specification detailing every aspect of the invention.
    • Provisional Specification: If the invention is still under development, file a provisional specification to establish an early filing date. This gives you up to 12 months to refine and file a complete specification.
• Drafting the Specification:
  • Abstract: Write a concise summary of the invention, including its purpose and key features. This should be a brief overview, usually not exceeding 150 words.
  • Description: Provide a detailed explanation of the invention, which should include:
    • Background: Describe the problem or need that the invention addresses. Include relevant prior art or existing solutions.
    • Detailed Description: Offer a comprehensive account of the invention. Explain how it works, its components, and the preferred embodiments. This section should be detailed enough to allow someone skilled in the field to replicate the invention.
    • Applications: Discuss potential uses or industries where the invention could be applied. Highlight the advantages and improvements over existing solutions.
  • Claims: Draft specific claims that define the scope of the invention’s protection. Claims should be clear, concise, and focused on the novel aspects of the invention. Each claim should be a standalone statement outlining what is new and inventive.
  • Drawings: Include diagrams or illustrations if applicable. These should help in understanding the invention’s structure or operation. Ensure they are labelled, referenced in the description, and drawn to standard patent office requirements.
• Review and Finalise
  • Initial Review: Carefully check the draft for accuracy, completeness, and consistency. Ensure that all sections are properly filled out and that the claims are well-defined.
  • Consult a Patent Attorney: Consider seeking professional advice from a patent attorney or agent. They can provide valuable insights, ensure the application meets legal requirements, and help refine the claims and description.
  • Revise and Finalise: Make necessary revisions based on feedback. Ensure all documents are correctly formatted and signed. Finalise the application for submission.
• Submit the Application
  • Prepare for Submission: Compile all required documents, including Form 1, Form 2, the patent draft, and any necessary fees.
  • Submit to Patent Office: Submit the completed application to the relevant patent office. Ensure that you follow the submission guidelines and keep a copy of the application and receipt for your records.

Filing the Patent Application in India

• Application for Grant of Patent (Form 1):
  • Purpose: This is the primary form used to initiate the patent application process. It provides essential details about the applicant, the invention, and the type of patent being sought.
  • Details Required: Information includes the title of the invention, names and addresses of the inventor(s) and applicant(s), and any priority claims if applicable.
• Provisional/Complete Specification (Form 2):
  • Purpose: This form is used to submit the technical details of the invention.
    • Provisional Specification: Filed when the invention is still under development. It secures an early filing date and allows up to 12 months to file a complete specification.
    • Complete Specification: Filed when the invention is fully developed and ready for disclosure. It provides a detailed description and claims for the patent.
• Statement and Undertaking under Section 8 (Form 3):
  • Purpose: Required only if a patent application has been filed in a country other than India.
  • Details Required: This form requires a statement about the status of corresponding applications or patents in other countries and an undertaking to update the Indian Patent Office with any relevant information.
• Declaration as to Inventorship (Form 5):
  • Purpose: Confirms the identity of the inventor(s) and their contribution to the invention.
  • Details Required: The form must include the names of the inventors and their declarations that they have contributed to the invention described in the application.
• Forms Submitted Only by Start-ups and Small Entities (Form 28):
  • Purpose: This form is used by start-ups and small entities to avail themselves of benefits such as reduced fees.
  • Details Required: Information to verify the applicant's status as a start-up or small entity, which can affect the fees and other benefits during the patent process.

Publication of Patent Application

• Automatic Publication:
  • Timing: A patent application is typically published in the official patent journal 18 months after the filing date or the earliest priority date. This is a standard procedure unless an earlier publication request is made.
  • Purpose: Publication allows the public to be aware of the patent application and its details. It provides an opportunity for anyone to review the application and raise any potential objections or oppositions.
• Early Publication:
  • Request: To accelerate the publication of a patent application, you must file Form 9, requesting early publication.
  • Process: Upon receiving Form 9, the Patent Office will expedite the process and publish the application in the patent journal before the 18-month period.
  • Advantages: Early publication can speed up the overall patent process and allows the applicant to establish patent rights sooner.
• Restrictions on Publication:
  • Legal Restrictions: Certain conditions under the Indian Patent Act may restrict the publication of a patent application. For example, if there are national security concerns or if the invention is subject to confidentiality orders, the publication may be delayed or restricted.
  • Resolution: Once the restrictions are resolved or lifted, the application will proceed to publication in the journal.

Examination of Patent Application

• Request for Examination (Form 18):
  • Submission: After filing the patent application, you must request its examination by submitting Form 18. This step is crucial as it initiates the formal examination process.
  • Timing: The timing of Form 18 submission affects when the application will be examined. Prompt submission can lead to quicker examination.
• Examination Process:
  • Assignment: Once Form 18 is filed, the application is assigned to a patent examiner or officer at the Patent Office.
  • Detailed Analysis: The examiner conducts a thorough review of the application. This includes:
    • Search: A comprehensive search of existing patents and prior art to determine the novelty and inventive step of the invention.
    • Compliance Check: Ensuring the application complies with all legal and procedural requirements of the Patent Act and Rules.
  • Objections: If the examiner finds issues with the application, such as lack of novelty, non-obviousness, or clarity, these objections are communicated to the applicant.
• First Examination Report (FER):
  • Content: The FER is a detailed document issued by the examiner that includes:
    • Objections: Specific issues or objections related to the patent application.
    • Requirements: Any additional information or amendments required from the applicant.
  • Response: The applicant must address the objections and provide any necessary amendments or explanations. The revised application is then re-evaluated.
• Follow-Up:
  • Re-Examination: If necessary, the application may undergo further examination based on the applicant’s responses to the FER.
  • Grant or Refusal: If the application meets all requirements and objections are resolved, the patent may be granted. Otherwise, the application may be refused or require additional modifications.

Grant of Patent

• Resolution of Objections:
  • Addressing Issues: The patent application undergoes a detailed examination process where the examiner may raise objections or request amendments. The applicant must resolve these objections by providing the necessary responses, amendments, or clarifications.
  • Re-Examination: After addressing the objections, the application may be re-examined to ensure that all issues have been satisfactorily resolved.
• Final Review:
  • Approval: Once all objections are resolved and the application complies with the requirements of the Patent Act and Rules, the examiner approves the application.
  • Granting of Patent: The patent office then proceeds with granting the patent, which involves issuing a formal patent certificate to the applicant.
• Publication of Grant:
  • Official Gazette: The grant of the patent is published in the Official Gazette of the Indian Patent Office. This publication includes details of the granted patent and officially marks the patent's protection status.
• Patent Rights:
  • Effective Date: The patent rights are effective from the date of grant, which gives the patent holder exclusive rights to the invention as described in the patent application.
  • Enforcement: The patent holder can enforce their rights against unauthorized use, manufacture, sale, or distribution of the patented invention.

Patent Filing Costs in India

Filing a patent application in India involves various costs that can be divided into Government fees and Professional fees. Here’s an elaborate breakdown of each:

Government Fees

These fees are mandated by the Indian Patent Office and are required to be paid at different stages of the patent application process. The cost depends on the type of applicant, the mode of filing, and additional factors such as extra pages and claims. Below is a detailed breakdown:

1. For Natural Person(s) and/or Startup:
   1. E-Filing: Rs.1,600
      1. This fee covers the initial cost of filing an application that is up to 30 pages long and includes up to 10 claims. E-filing refers to submitting the application electronically through the patent office’s online system.
   2. Physical Filing: Rs.1,750
      1. This fee is for filing a paper application that is up to 30 pages long and includes up to 10 claims. Physical filing involves submitting the application in hard copy at the patent office.
2. For Small Entities:
   1. E-Filing: Rs.4,000
      1. This fee applies to small entities, either alone or in conjunction with natural persons and/or startups, for applications up to 30 pages and 10 claims. Small entities include businesses with specific criteria related to their turnover and investment.
   2. Physical Filing: Rs.4,400
      1. The fee for physical filing by small entities is slightly higher and covers the same scope as e-filing (30 pages and 10 claims).
3. For Other Entities:
   1. E-Filing: Rs.8,000
      1. This fee is applicable to all other entities, including those who do not qualify as natural persons, startups, or small entities, for applications up to 30 pages and 10 claims.
   2. Physical Filing: Rs.8,800
      1. Similar to e-filing, this fee covers physical filing and is applicable to the same scope of 30 pages and 10 claims.
4. Additional Fees:
   1. E-Filing:
      1. Rs.160 per extra page beyond the initial 30 pages.
      2. Rs.320 per extra claim beyond the initial 10 claims.
   2. Physical Filing:
      1. Rs.180 per extra page.
      2. Rs.350 per extra claim.

Professional Fees

Professional fees are charges for the services provided by patent attorneys or agents who assist with the patent application process. These fees are separate from government fees and vary based on several factors:

1. Preparation of Patent Specification:
   1. Drafting a detailed patent specification requires expertise and can vary in cost depending on the complexity of the invention.
2. Filing and Correspondence:
   1. Fees for filing the application, responding to office actions, and handling correspondence with the patent office.
3. Patent Search and Analysis:
   1. Costs associated with conducting a patent search to ensure novelty and freedom to operate.
4. Legal and Advisory Services:
   1. Fees for legal advice, strategy planning, and managing the overall patent process.
5. Additional Costs:
   1. Any additional costs incurred for handling objections, amendments, and hearings during the examination process.

Rules to Consider While Filing a Patent Application

• Fees Structure
  • Specified Fees: All fees related to patent applications, grants, and other related matters are outlined in the First Schedule. This document provides a comprehensive list of the fees required at various stages of the patent process, including filing, examination, renewal, and any other proceedings.
  • Additional Fees for Physical Filing: If you choose to submit your patent application or any related documents physically (as opposed to electronically), an additional 10% fee is required. This additional fee incentivises the use of electronic filing systems, which are often more efficient.
• Payment Methods: All payments should be made payable to the Controller of Patents. This ensures that the funds are correctly allocated to your patent application or related proceedings. The following are the accepted forms of payment for Patent Registration:
  • Cash: Fees can be paid directly in cash at the appropriate patent office.
  • Electronic Means: Payments can be made through electronic transfers or online payment systems, which is often the fastest and most convenient method.
  • Bank Draft/Banker’s Cheque: These payments must be drawn on a scheduled bank at the location of the appropriate patent office. If sent by post, the payment is considered to be made when the draft or cheque is received by the Controller of Patents.
• Document Submission
  • Accompanying Fees: Whenever a document requires a fee, the full fee must be submitted alongside the document. This ensures that the application or document is processed without delay.  
• Transfer of Application
  • Natural Person to Non-Natural Person Transfer: If a patent application is transferred from a natural person (an individual) to a non-natural person (such as a company or organisation), the new applicant must pay any difference in the fee structure. This is because non-natural persons typically face higher fees.
  • Small Entity Transfers: If an application initially filed by a small entity is transferred to a non-natural person, the new applicant must pay the fee difference.
  • Start-up Transfers: If a start-up transfers its application to a non-natural person or another start-up, any fee difference must be paid by the new applicant.
  • Exceptions for Start-ups: If the start-up ceases to qualify as a start-up (either because more than five years have passed since its incorporation or registration, or because its turnover exceeds the financial threshold), no additional fees are required.
• Refunds
  • Non-Refundable Fees: Generally, fees paid for any proceeding are non-refundable, even if the proceeding does not take place. This is to discourage frivolous or incomplete applications.
  • Exception for Duplicate Payments: If during the online filing process, a fee is accidentally paid more than once for the same service, the excess amount may be refunded. The Controller must be satisfied that a duplicate payment was made.
  • Refunds for Withdrawn Examination Requests: If an applicant withdraws their request for examination before the first statement of objection is issued, they may receive a refund. However, this refund is limited to the extent prescribed in the First Schedule.
• Advance Deposit
  • Depositing Money in Advance: Applicants have the option to deposit money with the patent office in advance. This allows the Controller to deduct fees from this deposit as required for various proceedings.
  • Discontinuation of Advance Deposit: If an applicant wishes to discontinue using the advance deposit system, they may do so with the approval of the Controller. Any remaining balance in the advance deposit will be refunded to the applicant upon discontinuation.