PROCEDURE FOR REGISTRATION OF PATENT IN INDIA
APPROPRIATE OFFICE FOR FILING AN APPLICATION & FOR OTHER PROCEEDINGS
Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding . The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta, Mumbai, Delhi & Chennai.
PUBLICATION & EXAMINATION OF PATENT APPLICATIONS
All the applications for patent, except the applications prejudicial to the defence of India or abandoned due to non-filing of complete specification within12 months after filing the provisional or withdrawn within 15 months of filing the application, are published in the Patent Office Journal just after 18 months from the date of filing of the application or the date of priority whichever is earlier. The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract. The applications for patent are not open for public inspection before publication. After the date of publication of the application, as stated above, the complete specification along with provisional and drawing, if any, abstract , application on any form or on plain paper and any correspondence between the office and applicant may be inspected at the appropriate office by making a written request to the Controller in the prescribed manner and on the payment of prescribed fee..
Early Request for Publication :
The applicant may also file a request for early publication in Form-9 with a prescribed fee of Rs 2500/- or Rs 10,000/- for natural person and other than natural person respectively.The above application is published ordinarily within one month from the date of the request on Form-9. The applicant shall have provisional Rights from the date of publication.
ii) Request for examination
No application for patent will be examined if no request is made by the applicant or by any other interested person in Form-18 with prescribed fee of Rs.2,500/- or Rs.10,000/- for natural person and other than natural person respectively, within a period of 48 months from the date of priority of the application or from the date of filing of the application ,whichever is earlier. Where no request for examination of the application for patent has been filed within the prescribed period, the aforesaid application will be treated as withdrawn and, thereafter, application cannot be revived.
Application for patent, where request has been made by the applicant or by any other interested person, will be taken up for examination, according to the serial number of the requests received on Form 18. A First Examination Report (FER) stating the objections/requirements is communicated to the applicant or his agent according to the address for service ordinarily within six (06) months from the date of request for examination or date of publication whichever is later. Application or complete specification should be amended in order to meet the objections/requirements within a period of 12 months from the date of First Examination Report (FER). No further extension of time
is available in this regard. If all the objections are not complied with within the period of 12 months, the application shall be deemed to have been abandoned. When all the requirements are met the patent is granted, after 6 months from the date of publication, the letter patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal ..
WITHDRAWAL OF PATENT APPLICATION
The application for patent can be withdrawn at least 3(Three) months before the first publication which will be 18(Eighteen) months from the date of filing or date of priority whichever is earlier.
The application can also be withdrawn at any time before the grant of the patent.
The application withdrawn after the date of publication, cannot be refiled as it is already laid open for public inspection. However, application withdrawn before the publication can be refiled provided it is not opened to public otherwise.
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
Where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent. The representation shall be filed at the appropriate office and shall include a statement and evidence, if any, in support of the representation and a request for hearing if so desired.
The above representation may be made on the following grounds -
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in India on or after the
1st day of January, 1912; or (ii) in India or elsewhere, in any other document: Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;
(d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
Explanation —For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;
(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;
(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;
(i) that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground.
The Controller shall, if requested by such person for being heard, hear him and dispose of such representation. If the opposition is decided in favour of the applicant, the patent is granted and the grant of Patent is published in the Patent Office Journal thereby opening the application, specification and other related documents for public inspection on payment of prescribed fee.
GRANT OF PATENT
When all the requirements of the FER are met or in case of opposition under section 25(1),if the opposition is decided in favour of the applicant ,the patent is granted, after 6 months from the date of publication under section 11 A, the letter patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal, thereafter opening the application ,specification and other related documents for public inspection on payment of prescribed fee.
TERM AND DATE OF PATENT
Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed.
Any interested person can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of one year from the date of publication of grant of a Patent in the Patent Office Journal .The above notice under Section 25(2) shall be filed on Form-7 along with a fee of Rs. 1500/ or Rs. 6000/- for natural person and other than natural person respectively, in duplicate at the appropriate office. The grounds of opposition under section 25 (2) are the same as given before in case of pre grant opposition. The post grant opposition is decided by an Opposition Board followed by a hearing and the reasoned decision by the Controller.