From filing a patent to its eventual grant, there are various stages that a patent application goes through in India. Patent filing is the primary step an inventor must initiate to protect their invention from being misused. Before a patent is granted, the Indian Patent Office (IPO) meticulously examines it, to ensure that the innovation sought to be patented is novel and involves an inventive step based on specific criteria.
Stage 1: Filing of Application
The first stage entails filing an application for a patent in the prescribed format along with the necessary documents at the IPO. The documents that are required at the IPO include details of the applicant as well as details of the invention, including specifications, corresponding applications filed in other countries, and so on. Once this application is received, the IPO accords a date of filing and an application number to it.
Stage 2: Publication of Application
Once the application has been filed, the IPO publishes it in the official Patent Journal making it available for public inspection. A patent application is ordinarily published after 18 months from the date of filing, or date of priority, whichever is earlier. It is also possible to expedite the publication of a patent application in India by filing a request for an early publication. The request will be considered if the subject matter disclosed in the patent application is not relevant for defence purposes or atomic energy. The IPO generally publishes the application within one month of filing such a request.
Upon publication, the patent application along with the complete specification and any other documents filed alongside, are made available on the IPO website. Certified copies of the documents can be obtained from the IPO for a fee. Upon publication, any biological material submitted at the International Depository in connection with the application is also made available to the public.
After publication, the applicant enjoys the privileges and rights of a granted patentee. Although an applicant can file an infringement suit only after the patent is finally granted, damages can be claimed from the date of publication of the application in India.
The Indian Patents Act, 1970 (the Act) permits any person to file a pre-grant representation at the IPO against a published application opposing the grant of a patent. However, in view of recent jurisprudence, it is recommended that pre-grant representations be filed by persons who are involved in the same field of technology as the patent application in question.
Stage 3: Examination of Application
Once the application is filed and published, the applicant must file a request for examination along with the prescribed fee, after which the IPO proceeds to examine the application. A request for examination can be filed by the applicant or a person interested in the patent application.
A request for examination of a patent application in India may be filed any time within 48 months from the date of filing or the date of priority, whichever is earlier. In a case where secrecy direction has been issued under the Act, a request for examination may be made within 48 months from the date of priority or from the date of filing of the patent application, OR within six months from the date of revocation of the secrecy direction, whichever is later. A request for examination cannot be filed after the due date. If a request is not filed within the time limit, the application is irrevocably terminated.
In the case of a national phase application, the application is taken up for examination 31 months after the priority date. However, a request for express examination may be filed to initiate the examination of such an application before 31 months along with a request for early publication.
A patent application is examined in order to ensure that it meets all requirements under the Act. Based on the examination, the Controller issues a First Examination Report (FER).
An applicant must file a response to the FER within six months of the date of issuance of the examination report. An extension of a maximum period of three months is available for filing such responses, provided a request of extension is filed within the six-month period. Failure to submit the response within this time limit results in the application being abandoned.
If the response or amendment filed by the applicant does not satisfy the requirements laid down by the Act, the Controller offers the applicant a hearing, if it is requested by the applicant, and decides the case on merits. The applicant must file its written submissions with any proposed amendments within 15 days from the date of hearing. This can be extended to one month, by filing a request for extension before the expiry of the 15-day period.
After hearing the applicant and reviewing the written submissions, the Controller may specify or permit such amendments as they think fit and grant the patent. The Controller may refuse to grant the patent if any requirements of the Act are not complied with.
After Grant of Patent
Once all objections have been addressed, the application proceeds to be granted. A patent is normally granted within a few months of the filing of the response to the FER or the hearing if all requirements under the Act have been met.
After the grant of the patent, the patentee must pay a renewal fee every year to keep the patent in force. This renewal fee starts from the expiration of the second year from the date of filing. However, the renewal fee is payable, along with the arrears, only after the grant of the patent.
Once all these stages are completed, a patent is granted to an applicant for a period of 20 years from the date of filing the application. The grant of a patent gives the owner of the invention the right to prevent others from making, using, importing or selling the invention without their permission.
Patents Team, Obhan & Associates