Filing Patents in India

Summary: The Controller General of Patents has ordered the removal of a patent agent from its register, following a committee report on his professional misconduct. The report was made following directions from the Delhi High Court in a case where the applicant raised concerns about their agent.

In an uncommon decision, the Controller General of Patents, Designs, and Trademarks (CGPDTM) ordered the removal of a patent agent, from the Register of Patent Agents on January 1, 2025. This decision was taken due to the agent’s alleged professional misconduct, following recommendations from an ad hoc committee constituted by the Department for Promotion of Industry and Internal Trade (DPIIT) to address complaints against patent or trademark agents. The ad hoc committee had been formed following the Delhi High Court’s directions in Saurav Chaudhary vs. Union of India, (W.P.(C)-IPD 9/2023). This decision underscores the importance of professional conduct and accountability for patent agents.

Case Background

In this case, the authorized patent agent failed to inform the applicant / Petitioner of the First Examination Report (FER) having been issued in respect of their patent application. Consequently, the reply to the FER was not filed in time, and the application was deemed abandoned. The Petitioner later engaged a new patent agent, and requested for restoration of the application, resulting in the present matter.

Court findings

1. The Delhi High Court noted that the patent agent had clearly not shown diligence in communicating the issuance of the FER to the Petitioner. There was no email from the patent agent to the Petitioner. This negligence directly led to the abandonment of the patent application.

2. The Court emphasised that a party should not suffer for the inaction, deliberate omission or misdemeanour of their According to the Court, the present case also fell within the ambit of extraordinary circumstances, with the Petitioner having done his part and duly following up with the agent on application status. In exercising writ jurisdiction, the Court said it should be liberal in cases where mistakes are made by patent agents, and should be treated in a similar manner as made by counsels /advocates.

3. The Court highlighted the essential roles and function of patent agents in the effective handling of patent applications. This includes prompt client communication and compliance with procedural guidelines. The Court pointed out that the only authority that can regulate the conduct of the patent agents is the CGPDTM, but there is no procedure for dealing with misconduct by patent a

4. Accordingly, the Court set aside the abandonment order, and allowed the Petitioner to submit a reply to the FER. The Court also directed the CGPDTM to hold an enquiry against the patent agent and take appropriate action.

5. For generally dealing with complaints against patent and trademark agents, the Court directed the constitution of a committee consisting of at least two officials from the patent/trademark office and a senior IP practitioner (also registered as a Patent/TM Agent, with at least 15 years of practice). The Court also directed that a Code of Conduct be notified by December 31, 2024. However, no such Code of Conduct has been released by the CGPDTM till date. 

This may be the first time that the CGPDTM has directed the removal of a patent agent from the register. But it is not the first time where a patent application  was reinstated due to agent negligence. Some recent rulings from the Delhi and Madras High Courts shed more light on judicial views on agent misconduct.

Abandonment follows from intent; cannot be presumed 

In Bry-Air (Asia) Pvt. Ltd. vs. Union of India (W.P.(C)-IPD 17/2024), the Delhi High Court in September 2024 quashed the “deemed to be withdrawn” status of a patent application for non-filing of a request for examination (RFE) within the specified timeframe. The abandonment had been due to the negligence of the patent agent. The Court restored the application, allowing prosecution to follow due process. Critically, the Court observed that abandonment per se ought not to be presumed, as it is a question of intent. It said that in situations where express intentions and implied actions coupled with overall conduct of the applicant reflect that the applicant was willing to pursue the application in question, the applicant should not be made to suffer and due benefits ought to be extended.

In European Union v. Union of India  (W.P.(C)-IPD 5/2022), the Delhi High Court held that the delay in filing responses to FERs arose from the negligence of the patent agent and not because of any disinterest on part of the applicant; there was no intention to abandon, and instead, the applicant’s actions indicated that they were actively pursuing the applications. The Court also relied on jurisprudence to conclude that if the applicant did not have an intention to abandon, and if the Court is convinced that there was a mistake of the patent agent and the applicant can establish full diligence, the Court ought to be liberal in its approach.

Extraordinary circumstances

For this purpose, the Court also relied on orders passed in the cases of Ferid Allani v. Union of India [W.P (C) 6836 of 2006], and Telefonaktiebolaget Ericsson v. Controller of Patents and PNB Vesper Life Sciences v. Controller General of Patents, [W.P 22253 of 2021]. These orders provide an exception to the normally mandatory and non-extendable timelines. They state that while the Controller may not have the power to extend the deadline for putting the application in order for grant, Courts may in rare cases permit the same, after examining the facts to assess applicant intention to abandon or not. Extraordinary circumstances could also be considered, such as negligence by the patent agent, docketing error and whether the applicant has been diligent. Importantly, the lack of follow-up by an applicant may lead to an inference that there was intent to abandon the patent.

In Bry-Air Prokon Sagl & Ors. vs Union of India & Anr. (W.P.(C)-IPD 25/2022), the the Delhi High Court ordered the restoration of patent applications which had been abandoned and had lapsed due to non-filing of timely response to the FER as well as non-filing of timely renewal fee. For this, the Court referred to its power extend the time for filing response to FERs in extraordinary situations, where patent agents were found to be negligent in patent prosecution, with no contributory negligence of the applicant and on showing that the applicant had a positive intent to prosecute. The Court also affirmed the settled position on ‘abandonment’ requiring conscious intent, and that no presumptions can be drawn in this respect.

Additionally, the Court noted that on account of their long association, the applicant had no reason to doubt the patent agent or to suspect that the inputs given by him, from time to time, was doubtful. The Court was of the view that there was no fault or negligence on the part of the applicant and therefore, they should not suffer for the fault or negligence of the patent agent.

In Chandra Sekar vs The Controller of Patents and Designs (W.P Nos 12620 and 12621 of 2021), the Madras High Court set aside the Controller’s order dismissing the patent applications for filing the RFE beyond the prescribed period. The Court noted that the delay was due to exceptional circumstances. The Court said that without any demonstrated evidence of intention to abandon, the applicant could not be deprived of their statutory rights merely because the RFE had not been diligently filed by their agent. The Court also noted that the applicant, being a US citizen, was dependent on their Indian agent. After considering the communications between the applicant and the agent, the Court directed that the applications be restored since the lapse was due to the agent’s negligence and not the applicant.

In Rubicon Research Pty Ltd. vs. The Controller General of Patents, Designs and Trademarks and Ors., (OA/18/2014/PT/KOL), the erstwhile Intellectual Property Appellate Board (IPAB) set aside the Controller’s order and allowed restoration of the patent beyond the 18-month period. In its order, the IPAB observed that the Controller had decided the matter without following principles of natural justice and settled law. The IPAB, on its part, took into consideration the appellant’s efforts, applicant agent’s negligence, and the potential harm to the patentee if the patent was not restored.

Conclusion

Through their various decisions discussed here, the Delhi and Madras High Courts have established that the negligence or misconduct of patent agents can be a factor in restoring patent applications deemed abandoned. However, in order for such restoration to be granted, applicants must demonstrate that they themselves had no intention to abandon, that there was negligence on the agent’s part, and that harm would be caused if the application was not restored. At the very least, applicants should protect their interests by being in regular touch with their agents, keeping track of prosecution timelines independently, and consistently following up on the status of their applications. In the unfortunate instance of timelines being missed, immediate remedial action should be sought.

For patent agents, this series of cases serve as a timely reminder that they need to be extremely vigilant and professional in handling their clients’ portfolios, and any demonstrable negligence may lead to undesirable consequences, including being struck off the register altogether. Agents must be cognizant of their role and function in effectively handling applications, and ensure prompt client communication and procedural compliance.

On its part, the CGPDTM would also do well to finalise its Code of Conduct, which would offer additional proper guidance to applicants and agents alike.

The Indian Patent Office (IPO) has released “Draft Guidelines for Processing Patent Applications of AYUSH Systems and Related Inventions” (draft guidelines), which is available for comment till 28 February 2025.

The AYUSH system of medicine includes Ayurveda, Yoga & Naturopathy, Unani, Siddha, Sowa-Rigpa, and Homoeopathy. The draft guidelines seek to complement the existing “Guidelines for processing of patent applications relating to traditional knowledge and biological material, 2012.”.

The scope for AYUSH-related inventions in the draft guidelines is identified as follows:

1. AYUSH Products and Equipment/Devices used in AYUSH systems
2. Food Recipes/Nutraceuticals described in AYUSH systems

Subject to patentability criteria under Section 2(1)(j) and Section 3 of the Patents Act, 1970 (‘Patents Act’), products and processes in these areas are entitled to intellectual property protection.

Existing law and procedure

At the outset, the draft guidelines clarify and emphasise that AYUSH-related inventions must meet the same standards of patentability as laid down in the Patents Act, e.g., meet the basic criteria of patentability (novelty, inventive step, industrial applicability), and lie outside the exceptions to patentability, as contained in Section 3, including exclusion on grounds of being traditional knowledge (TK) or an aggregation of known properties of traditionally known components (3(p)). Procedural requirements of proper disclosure, etc., apply to all such applications as well.

National Biodiversity Authority (NBA) approval

The draft guidelines clarify that applicants must secure prior approval from the National Biodiversity Authority (NBA) if their invention is based on research or information pertaining to biological resources sourced from India. However, NBA permission is not required merely for a device that is used merely for handling biological resources from India. For example, if an invention is for a modified device for the storage or dispensation of Ayurvedic medicine, then NBA permission would not be required merely because Ayurvedic medicine is mentioned thus.

Declaration in patent application

According to the draft guidelines, where relevant, an applicant must submit a declaration in the patent application form that the invention uses biological material from India and that necessary permissions from the competent authority (e.g., NBA) will be submitted before the grant of the patent. Further, this declaration is required only when the invention is based on research on biological resources obtained from India and not for a device that is used to handle the biological resource, as discussed above.

Non-disclosure or wrong mention of source

Applicants must also make proper disclosures. The draft guidelines specify that non-disclosure or wrong mention of the source or geographical origin of biological material used for an invention in the complete specification forms a ground for refusal of the patent application under Section 15 of the Patents Act, pre- and post-grant oppositions, and revocation.

Guiding principles for assessment of applications

The draft guidelines provide six guiding principles to be followed while examining AYUSH-based applications, accompanied by illustrative examples.

1. Guiding Principle 1: If the claimed subject matter relates to extracts/alkaloids and/or isolation of active ingredients of plants, which are naturally or inherently present in plants, such claims cannot be considered novel or inventive when the use of such plants is pre-known in AYUSH systems. However, processes for obtaining such extracts/isolates may be considered patentable, subject to the requirements of novelty and inventive step. For example, if the process uses low temperatures and minimal chemicals to obtain extracts or isolates that are not disclosed in prior art, it may be considered patentable.
2. Guiding Principle 2: If a combination of ingredients from plants/minerals/animal origin/ existing formulations already known for the treatment of a disease as a part of TK, then it would be considered obvious that a combination product comprising these known ingredients with further ingredients from plants/minerals/animal origin/ existing formulations with the same known therapeutic effect would be more effective than each of the ingredients when applied separately (additive effect). However, specific ratios leading to unexpected technical effects of such combinations may be considered to establish non-obviousness. This principle is in alignment with the requirements laid out in Section 3(e) of the Patents Act, which requires that a combination or an admixture be patentable provided that the synergistic data is provided in the complete specification through comparative data.
3. Guiding Principle 3: If an ingredient is already known for the treatment of a disease, then it creates a presumption of obviousness that a combination product comprising this known active ingredient would be effective for the treatment of the same disease. However, the unexpected technical effect of such combinations may be considered to establish non-obviousness.
4. Guiding Principle 4: Discovering the optimum or workable ranges of traditionally known ingredients by routine experimentation is not inventive.
5. Guiding Principle 5: If a composition comprising multiple ingredients is known to have therapeutic activity as per TK, then a claim pertaining to one of the ingredients for the same therapeutic activity cannot be considered inventive.
6. Guiding Principle 6: If the subject matter of the claims relates to inventions regarding equipment/devices used in AYUSH systems, then such inventions may be patentable if novel and inventive over the prior art.

Conclusion

The draft guidelines aim to streamline the patent application process for AYUSH-related innovations, ensuring these meet the necessary standards for patentability by collating, summarizing, and clarifying existing principles typically used in the assessment of such applications.

While the guidelines provide some clarity regarding the processing of such applications (such as the data required to demonstrate synergy), they may potentially also create rigid structures that lack the flexibility currently available in the system. For instance, the guidelines specify that discovering the optimum or workable ranges of traditionally known ingredients through routine experimentation is not inventive. This seems to contradict the principle of selection patents.

Guidelines such as these are most relevant and useful when they make the application process clearer, easier, and more efficient. In their present version, these guidelines may potentially lead to more obstacles in the application process for AYUSH-related inventions than desirable. The IPO may consider tweaking the guidelines appropriately so that flexibility, efficiency, and ease of prosecution remain unaffected.

Challenges to patents through revocation petitions can be filed independently or as counterclaims in infringement suits. In infringement suits, a defending party has the option to file a revocation petition or argue that the patent itself is invalid. Many questions arise in these contexts, and the Delhi High Court recently had occasion to clarify precisely some of these, concluding that the scope and effect of a revocation petition filed under Section 64 (which deals with revocation) are different from an invalidity defence raised under Section 107 of the Patents Act (‘the Act’).

In Macleods Pharmaceuticals Ltd. vs. The Controller of Patents & Anr. (I.A. 7635/2024 and I.A.46685/2024 IN C.O.(COMM.IPD-PAT)38/2022), the Court addressed two issues: firstly, whether a revocation petition is maintainable if the petitioner has filed a written statement, taking defence of the patent’s invalidity under Section 107 in an infringement suit; and secondly, whether a revocation petition can be filed or sustained (if already filed) after the patent has expired.

Background

Macleods Pharmaceuticals Ltd. (‘the petitioner’) filed a revocation petition against Boehringer Ingelheim Pharma GmbH & Co. KG’s (‘the respondent’) Patent IN 243301 in respect of the anti-diabetic drug ‘Linagliptin’ on February 17, 2022. The revocation petition was filed just before the commercial launch of the petitioner’s generic product on February 22, 2022. Thereafter, on February 19, 2022, the respondent filed an infringement suit against the petitioner before the High Court of Himachal Pradesh. The term of the patent expired on August 18, 2023.

In the meantime, the respondent submitted several applications. The first application sought to dismiss the revocation petition on grounds that the petition was filed 12 years after the patent was granted. The second application requested the revocation petition to be transferred to the High Court of Himachal Pradesh to be consolidated with the Himachal Suit. The third application contended that since the patent expired in 2023, the revocation petition was now moot and should be dismissed. Subsequently, the petitioner filed a transfer petition before the Supreme Court seeking the transfer of the Himachal suit to the Delhi High Court, which is pending.

The Delhi High Court’s decision

In its detailed analysis, the Delhi High Court observed that the scope of a revocation petition under Section 64 and the defence of invalidity under Section 107 are different for the following reasons:

1. A revocation petition can be filed either as a stand-alone or by a counter-claim in an infringement suit, and only a High Court has the authority to entertain such petitions. On the other hand, patent infringement suits and defences under Section 107 can be adjudicated by a District Court.
2. Once a revocation petition is successful, the patent is effaced from the Register of Patents as if it never existed, whereas a finding of invalidity of claims under Section 107 requires a defendant to take additional steps under Section 71(1) of the Act for rectification of the register. Hence, a finding of invalidity by itself would not result in the removal of the patent from the register.
3. In a revocation proceeding, if the patent is deemed invalid, the patentee may amend the complete specification instead of having the patent revoked. On the other hand, based on the defence taken under Section 107 of the Patents Act, a court cannot direct the patentee to amend the claims.
4. Once a patent is revoked by the High Court, it would operate in rem, and the patentee would not be able to assert the patent or claims against any third party. On the contrary, the findings in an infringement suit between contesting parties operate in persona and will only bind the contesting parties.
5. A party has the choice to either file a revocation petition or a counterclaim in a pending suit, and there is no limitation in the Act that restricts this choice.

Based on these reasons, the court concluded that a defence of invalidity in an infringement suit does not equate to a revocation of the patent; hence, the present revocation petition is maintainable.

On the issue of revocation after the patent’s expiry, the court said that the expiration of the patent term does not render the infringement suit infructuous, as the cause of action and damages still survive. The court further observed that the petitioner had a valid cause of action to continue with the revocation petition, and the patent’s expiration did not make the petition irrelevant, considering its possible effect on the ongoing infringement case.

Given these findings, the Delhi High Court dismissed the objections taken by the respondent concerning the maintainability and sustainability of the revocation petition.

Conclusion

This decision clarifies the different legal consequences and procedures of filing an invalidity defence under Section 107 of the Patents Act and filing a revocation petition under Section 64 of the Patents Act. Additionally, it affirms that if an infringement lawsuit seeking damages is still pending, a revocation petition can be maintained even after the patent has expired. For parties defending themselves in infringement suits or seeking to file revocations against patent holders, this decision offers considerable clarity on strategy, timing, and maintainability.

1. What are the stages of obtaining a patent in India?

Ans. The stages of obtaining a patent in India are as follows:

a) Filing a patent application in India: This stage includes filing an application for a patent in the prescribed format along with the necessary documents at the Indian Patent Office (IPO). On receipt of the application, the IPO accords a date and application number to it.

b) Publication of the application: After the application has been filed, the IPO publishes the application in the official Patent Journal making it available for public inspection. A patent application is published after eighteen (18) months from the date of filing, or date of priority, whichever is earlier.

c) Examination of the Application: The IPO examines the application only after the application is published and a request for examination is filed along with the prescribed fee. After a request for examination is filed, the application is substantively examined to ensure that all the requirements under the Patents Act, (the Act) are met. Based on the examination, the Controller issues a First Examination Report (FER).

The applicant is required to file a response to the FER within six (6) months (extendable by three (3) months) from date of the FER.

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 requested by the applicant) and decides the case on merit. The applicant is required to file the written submissions with any proposed amendments within fifteen (15) days (extendable by six (6) months). 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.

d) Grant of Patent: If 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 the requirements under the Act have been met.

e) Maintenance of Patent: 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.

2. When is a patent application published in India?

Ans. A patent application is published after eighteen (18) months from the date of filing, or date of priority, whichever is earlier.

3. Is it possible to expedite the publication of a patent application in India?

Ans. Yes, the publication can be expedited 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. Once such a request is filed, the IPO generally publishes the application within one (1) month of filing the request.

4. What happens after publication of a patent application in India?

Ans. Upon publication, the patent application along with the complete specification and any other documents filed in respect of the application is made available on the IPO’s website. One may obtain certified copies of the documents from the IPO for a fee. Upon publication, any biological material submitted at the International Depository in respect of the application is also made available to the public.

After the publication of the application, the applicant enjoys the privileges and rights of a granted patent. Although the applicant can file an infringement suit only after the grant of the patent, they can claim damages from the date of publication of the application in India.

Any person can file a pre-grant representation at the IPO against the published application opposing the grant of a patent.

Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence, the person filing the pre-grant opposition may be required to demonstrate why they are interested in opposing the patent application.

The application can now be considered for the examination by the IPO, provided a Request for Examination has been filed.

5. Who can file a request for examination of a patent application in India?

Ans. A request for examination can be filed by the applicant or a person interested in the patent application.

6. When can a request for examination be filed in India?

Ans. On March 15, 2024, the Indian Patent Rules were amended via the Patent (Amendment) Rules, 2024. As per the amended rules, a request for examination of a patent application in India may be filed any time within thirty one (31) months from the date of filing or the date of priority, whichever is earlier. This thirty one (31) months’ due date is however applicable for the applications filed after March 15, 2024.

For applications filed before March 15, 2024, the timeline for filing the RFE continues to be forty eight (48) months from the priority date or application filing date, whichever is earlier.

In a case where secrecy direction has been issued under the Act, the request for examination may be made within thirty one (31) months from the date of priority or from the date of filing of the patent application, or within six (6) months from the date of revocation of the secrecy direction, whichever is later.

In the case of a national phase application, the application is taken up for examination thirty one (31) months after the priority date. However, a request for express examination may be filed to initiate the examination of such an application before thirty one (31) months along with a request for early publication.

7. Can a request for examination of a patent application in India be filed after the due date?

Ans. Yes, for applications filed after March 15, 2024, a six (6) months’ extension is available for filing the request for examination after the thirty one (31) months deadline from priorirty date or filing date, whichever is earlier.

However, for applications filed before March 15, 2024, no extensions are available.

If the request for examination is not filed within aforesaid time limit, the application is irrevocably terminated.

8. What is the timeline for filing a response to patent examination report in India? Can this timeline be extended?

Ans. The response to an examination report in India is required to be filed within six (6) months from the date of issuance of the examination report. An extension of a maximum period of three (3) months is available. Failure to submit the response within this time limit results in abandonment of the application.

9. Can the extension to file a response to the patent examination report be filed retrospectively?

Ans. Yes. The extension to file a response to the patent examination report can be filed retrospectively.

10. What is the timeline for filing written submissions after the patent examination hearing in India? Can this timeline be extended?

Ans. The written submissions are required to be filed within fifteen (15) days from the date of hearing. An extension of six (6) months is available.

1. Who can file a patent application in India?

Ans. A patent application can be filed by any of the following, either alone or jointly:

a) any person claiming to be the true and first inventor of the invention,

b) the assignee of the person claiming to be the true and first inventor,

c) the legal representative of any deceased person who immediately before their death was entitled to make such an application.

2. What are different categories of applicants?

Ans. The different categories of applicants are:

a) one or more natural person(s),
b) one or more start-up(s),
c) one or more small entity(ies),
d) one or more educational institution(s),
e) one or more large entity(ies) or company(ies) either alone or with one or more natural person(s) or start-up(s) or small entity(ies).

Natural persons, start-ups, small entities, and education institutions are eligible for a 80% reduction in the official fee.

3. What type of entity is considered a start-up in India?

a) An Indian entity is considered a start-up under the Act if it:
– is incorporated as a Private Limited Company, a Registered Partnership Firm or a Limited Liability Partnership;
– is incorporated or registered for not more than ten years;
– has a turnover under INR one hundred crores (approximately USD 14.5 million) for any of the financial years since incorporation or registration;
– is not formed by splitting up or reconstruction of a business already in existence;
– is working towards innovation, development or improvement of products or processes or services, or is a scalable business model with a high potential of employment generation or wealth creation; and
– is recognized by the Department for Promotion of Industry and Internal Trade (DPIIT) as a start-up.

b) A foreign entity is considered a start-up if it fulfils the above criteria for turnover and period of incorporation or registration.

4. What documents are required to claim start-up status in India?

a) Indian Entity: Certificate of recognition as a start-up from the Department for Promotion of Industry and Internal Trade (DPIIT);

b) Foreign Entity: The following documents are required:

– A document showing that the company is incorporated or registered for not more than ten years. (A notarized or certified copy of the incorporation certificate, in original).

– A document showing that the annual turnover did not exceed INR one hundred crores (approximately USD 14.5 million) in any preceding financial year. For example, financial documents or accountant certificate (on the letter head of the accountant who will sign the document)

– A brief write-up of the company in either word or a pdf format

– A self-declaration, that the applicant is a start-up.

5. What documents and information is required for recognition as a start-up by the DPIIT?

Ans. The following are required to register an entity as a start-up:

a) Incorporation or registration certificate

b) Details of the director(s)

c) Proof of concept like pitch deck/website link/video (in case of a validation/ early traction/scaling stage start-up) respectively. If the entity is still at the idea stage, then the proof of concept may be submitted at a later stage as well.

d) Patent and trademark details (optional)

e) Permanent Account Number (PAN)

6. What is a small entity patent applicant in India?

Ans. A small entity patent applicant in India is an entity whose investment in plant and machinery or equipment does not exceed INR 50 crores (approximately USD 6.8 million) and turnover does not exceed INR 250 crores (approximately USD 34 million).

7. What documents are required to claim small entity status in India?

a) Indian Entity: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006.

b) Foreign Entity: Any documentary evidence that shows that the company fulfils the required criteria i.e., the investment in plant and machinery or equipment by the entity does not exceed approximately USD 6.8 million and turnover does not exceed approx. USD 34 million. Examples of such documentary evidence include annual reports or accountant’s certificates. A declaration, that the applicant is a small entity may also be submitted.

8. What type of instituion is considered as an “educational institution”?

Ans. An educational institution means a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as recognised by an authority designated by the Central Government or the State Government or the Union territories in this regard.

9. Are foreign educational institutions also eligible for “educational institution” status in India?

Ans. Yes, foreign educational institutions are also eligible.

10. What documents are required to claim “educational institution” status in India?

Ans. Any document as evidence of eligibility may be submitted.

1. How is the official fee for a patent application in India calculated? 

Ans. The official fee is calculated based on:

– the type of applicant,
– number of priorities (additional fee for each priority above 1),
– the total number of pages (additional fee for each age above 30) and
– the number of claims in the application (additional fee for each claim above 10)

To calculate the applicable official fee, please check the Patent Fee Calculator provided on our website   www.obhanandassociates.com.

2. Can extra claim fee or extra sheet fee be paid subsequent to the filing of the patent application in India?

Ans. No, all extra fees including fees for extra claims, pages or priorities are required to be            paid at the time of filing of the patent application in India.

3. Can fee for Request for Examination be paid after filing of the patent application in India?

Ans..     Yes. For applications filed on or after March 15, 2024 the fee for Request for Examination can be paid at anytime within thirty one (31) months from the earliest filing date (priority date). An extension of 6 months is available by filing a request for extension.

For applications filed before March 15, 2024 the fee for Request for Examination can be paid at any time within 48 months from the earliest filing date (priority date).

However, it is generally advisable to file the request for examination along with the application for faster examination of the patent application.

4. Are there any fee reductions for filing a patent application in India?

a) one or more natural person(s)
b) one or more a start-up(s)
c) one of more small entity(ies).
d) One of more education institution(s)

To calculate the applicable official fee, please check the Patent Fee Calculator provided on our website, www.obhanandassociates.com.

5. Can the fee reduction be claimed if an application, originally filed by one or more natural person(s) or a start-up(s), a small entity(ies), or an educational institution(s) is subsequently transferred to a large entity?

Ans. No, the fee must be paid in accordance with the entity status of the new assignee. Additionally, the difference in official fee chargeable from the new assignee and that charged earlier, if any, must also be paid.

6. Is the difference in official fee payable if the applicant ceases to be a start-up or a small entity? 

Ans. Where a start-up or small entity, having filed an application for a patent, ceases to be a start-up or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.

1. What are the different types of patent applications that may be filed at the IPO?

Ans. The various types of patent applications that may be filed at the IPO are as follows:

a) Provisional patent application application

b) Complete patent application
– Ordinary patent application
– Convention patent application
– National Phase patent application
– Divisional patent application
– Application for a patent of addition

2. What is a provisional application?

Ans. It is an optional interim patent application, which is filed with a provisional specification. The provisional specification sufficiently covers the subject matter of the invention but need not contain all the sections or portions required in a regular patent application. It is usually filed when the inventor(s) have developed the invention but are still in the process of generating extensive experimental data or additional information to support the disclosure. It is filed to establish a priority date for the invention and to show that the applicant adequately possessed the invention described in the provisional application at the date of filing of such application. It also gives the applicant sufficient time to evaluate the market potential of the disclosed invention before filing complete specification.

3. Is it required to include claims in a provisional application?

Ans. It is not required to include claims in the provisional application.

4. Does the patent office publish or examine a provisional patent application in India?

Ans. A provisional patent application in India is not published or examined.

5. What is the timeline for filing a complete application after a provisional patent application in India?

Ans. A complete patent application must be filed within twelve (12) months of filing the provisional patent application in India.

6. Can a complete patent application in India be submitted after twelve (12) months from the filing of the provisional application?

Ans. No, the timeline for filing a complete application after a provisional application is not extendable. If an applicant does not file non-provisional or complete application within twelve (12) months, the provisional application is deemed abandoned.

7. What is a complete application?

Ans. It is an application filed with a complete specification describing the invention fully and particularly including the best mode of working the invention. It can be filed directly or within twelve (12) months of filing the provisional patent application.

8. What is a convention application? 

Ans. It is an application that claims a priority date based on the same or substantially similar applications filed in one or more convention countries (parties to the Paris Convention for the Protection of Industrial Property). It must be filed within twelve (12) months from the date of the first filing of a similar application in the convention country. For example, if an application for a patent is filed in the US, a corresponding convention application can be filed in India within twelve (12) months of filing in the US.

9. What is a National Phase application?

Ans. It is an application arising out of a PCT application. A national phase application in India can be filed within thirty one (31) months of the filing or priority date of the PCT application, whichever is earlier.

10. What is the timeline for filing a National Phase patent application in India? 

Ans. A National Phase patent application is required to be filed within thirty one (31) months from the priority date of the PCT application. 

11. Can a National Phase patent application be filed in India after thirty one (31) months from the priority date?

Ans. Yes, the thirty one (31) months timeline is extendable up to six (6) months upon payment of extension fee.

12. Is it possible to file a National Phase patent application in India before the publication of the corresponding PCT application?           

Ans. Yes, it is possible to file a National Phase application in India even if the corresponding PCT application has not been published.

13. What is a Divisional application? 

Ans. A divisional application is an application that has been divided out of a pending Indian patent application (referred to as “parent application”).

14. When can one file a divisional application? 

Ans. A divisional application can be filed any time before the grant of the parent application. The grant or refusal of a patent may take place at any time after filing a response to the First Examination Report. Therefore, the divisional application should be filed as soon as possible.

15. What is the criteria for filing a divisional application?

Ans. If the  disclosure of a patent application relate to more than one invention, then the applicant may file a divisional application either suo moto or in response to the objection raised on the ground of plurality of distinct inventions in the claims by the IPO.

If a divisional application is voluntarily filed, the  IPO will assess whether the provisional and/or complete specification of the parent application discloses a plurality of inventions or not, during examination.

16. What is the term of patent granted on a divisional application?

Ans. The term of patent for a divisional application is the same as the term of the parent i.e. 20 years from the filing date or priority date of the parent application.

17. Is a separate renewal fee (other than that payable for the parent patent) payable for a patent granted on divisional patent application in India?

Ans. A divisional application is treated as a substantive application, and all the fees applicable to a regular application are payable in case of a divisional application as well.

18. What is a patent of addition? 

Ans. It is an application made for an improvement or modification of an earlier invention for which the applicant has already applied for or has obtained a patent. A patent of addition  is granted only after the grant of the parent patent. However, if the parent patent is revoked, the patent of addition may be converted into an independent patent, if so requested by the patentee.

19. When can one file an application for a patent of addition in India? 

Ans. An application for a patent of addition can be filed at any time after the filing of the parent application. It can even be filed after the grant of the parent patent.

20. Is a separate renewal fee (other than that payable for parent application) payable for a patent of addition, upon grant? 

Ans. No separate renewal fee is required to be paid for a patent of addition.

21. What is the term of patent of addition?

Ans. A patent of addition expires along with the parent application.

22. What is a PCT application?

Ans. A PCT application is an application filed under the Patent Cooperation Treaty (“PCT”). It is filed at one of the receiving offices under the said treaty. The applicant may then file a national phase application corresponding to the PCT application in any of the member states of the treaty within the prescribed time.

A PCT patent application allows the applicant to postpone the expense of filing individual national patent applications in each of the countries where protection is desired.  This also provides the applicant time to assess the value of the invention and analyse the potential markets throughout the world before making more significant investments in securing patent rights in multiple jurisdictions.

India is a member of the PCT. For a full list of the PCT members, please refer to https://www.wipo.int/pct/en/pct_contracting_states.html.

1. What are the documents and information required for filing a patent application in India?

2. Do we have to file the sequence listings mentioned in the patent application in India?

Ans. If the application discloses any amino acid and/or nucleic acid sequence(s), the sequence listing is required to be submitted.

3. Is there a format for submitting the sequence listings for patent application in India?

Ans. Yes, the sequence listing is required to be submitted in a computer-readable text format along with the application. It is preferred that any sequence listing in the electronic document format is created by a dedicated software such as PatentIn (WIPO STANDARD ST.25). The prescribed format for a sequence listing is as follows:

a. A nucleotide sequence to be listed with a maximum of 60 bases per line, with a space between each group of 10 bases.

b. The bases of a nucleotide sequence (including introns) to be listed in groups of 10 bases, except in the coding parts of the sequence.

c. Leftover bases, fewer than 10 in number at the end of non-coding parts of a sequence, to be grouped together and separated from adjacent groups by a space. The bases of the coding parts of a nucleotide sequence to be listed as triplets (codons).

4. Do I need to deposit the biological material mentioned in the patent application filed in India? 

Ans. In case a biological material described in the specification is not available to the public and cannot be described adequately as per the provisions of the Act, such material must be deposited with the International Depository Authority (IDA) under the Budapest Treaty, on or before the date of filing of the application. 

Further, a reference to such biological material must be made in the specification within three (3) months from the date of filing. The reference must include the name, address of the depository institution and the date and number of the deposit of the material at the institution and any other available characteristics of the material required for it to be correctly identified or indicated. 

If there is any request for early publication, then the said reference must be given on or before the date of filing of such request.

5. Do I need to mention the source and geographical origin of the biological material in the patent application filed in India? 

Ans. The source and geographical origin of the biological material used in the invention must also be disclosed in the specification.

6. When is the approval from National Biodiversity Authority (NBA) required for filing a patent application in India? 

Ans. The permission from the NBA is required if the invention as disclosed in the patent specification uses a biological material obtained from India.

7. Is there an International Depository Authority (IDA) in India?           

Ans.  Yes, the following two institutes in India act as IDAs:

a) Microbial Type Culture Collection and Gene Bank (MTCC) Chandigarh

b) Microbial Culture Collection (MCC), Pune

8. Are WIPO Digital Access Service (WIPO DAS) and WIPO Centralized Access to Search and Examination (WIPO CASE) available in India?         

Ans. Yes, the IPO is both an accessing office and a depositing office for the WIPO DAS and WIPO CASE.

9. What information and documents are required to be submitted in respect of the corresponding foreign applications?

Ans. Section 8 of the Act along with Rule 12 of the Patent Rules, 2003 (as amended) requires the applicant to submit the details of the corresponding foreign applications for ‘the same or substantially the same invention’ at the IPO. The requirement is a follows:

10. What is considered as an application relating to ‘same or substantially same invention’ for the purpose of Section 8 in India?

Ans. The expression ‘same or substantially same invention’ is not defined in the Act or the Patents Rules. All patent applications sharing a common priority or derived from the same PCT application, continuation applications, continuation-in-part applications, and divisional applications may be considered as applications relating to the same or substantially same invention for the purpose of Section 8.

11. What are the consequences of non-compliance with the obligation under Section 8 in India?

Ans. Non-compliance with the obligation under Section 8 of the Act is a ground for:

a) pre-grant and post-grant opposition proceedings before the IPO

b) revocation of a patent.

However, Indian Courts have clarified that the revocation on this ground should not be automatic but based on the specific facts and circumstances of the case. The courts are expected to enquire into whether there was a deliberate or wilful suppression and whether the undisclosed information was in fact material to the grant of the patent.

12. How can a patent applicant in India comply with the requirement of submitting proof of right if one or more of the inventors are not available to sign the assignment deed or endorse Form 1 due to change in employment or death?

Ans. In such cases, any of the following documents may be submitted to comply with the requirement:

a) A notarized or a certified copy of an assignment deed submitted in the priority application or a corresponding application. The assignment deed must indicate that the inventor(s) have assigned their rights to the applicant worldwide.

b) A notarized or a certified copy of the employment agreement, or similar contract executed by the inventor with the applicant, indicating that the inventor has transferred all the rights arising in an invention to the applicant.

c) A copy of declaration as to the applicant’s entitlement to apply for and be granted a patent submitted with the PCT application in accordance with Rule 4.17(ii) of the PCT Regulations.

13. What documents are required to be submitted if one of the inventors is deceased?

Ans. Any one of the following may be submitted at the IPO:

a) a notarized or certified copy of an existing assignment deed from the inventors to the applicant, along with its English translation if applicable; or

b) Form 1 signed by the legal heir of the inventor: The legal heir is required to execute the Form 1 in column 12 (i) above the deceased inventor’s name. No modification of Form 1 is required. Form 1 executed by the legal heir is required in original. Further, please note that a document identifying the legal heir as well as relationship with the deceased inventor (along with English translation, if applicable) and Death Certificate (along with English translation) would be mandatorily required if it is chosen to have the document executed by legal heir; or

c) an employment agreement/ contract executed between the deceased inventor and the applicant. Please note that this document should clearly indicate that the inventor had assigned all the rights of invention claimed in this application to the applicant. Alternatively said document may indicate that the inventor is under an obligation to assign any/all invention made by him to the applicant. A notarized/certified copy of such a document will suffice this requirement. In addition, if the document is not in English, please also send the English translation of the contract along with a Certificate of Translation for submission at the IPO.

14. Is it mandatory to register an assignment deed or a license at the IPO?

Ans. Yes, it is mandatory to register an assignment deed, a license, a mortgage deed or any other document that indicates transmission of any partial or complete interest in a patent application or a patent as the case may be at the IPO. If not registered, the court may not admit such a document as evidence during proceedings.

1. What are the various timelines involved in the grant of an Indian patent?

Ans. The timelines for completing various tasks or submitting various documents are as follows:

1. Can the examination of a patent application in India be expedited? 

Ans. An applicant may file a request for expedited examination at any time within thirty one (31) months of the date of filing or date of priority, whichever is earlier if:

a) the applicant is any one of the following:
– a start-up,
– a small entity,
– a female applicant,
– in case of joint applicants, all the applicants are natural persons, and at least one of the those applicants is a female,
– a department of the Government,
– an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government,
– a Government company,
– an institution wholly or substantially financed by the Government,
or

b) the application pertains to a sector, which is notified by the Central Government,

or

c) in the case of a National Phase application, India is chosen as the competent ‘International Searching Authority’ or elected as an ‘International Preliminary Examining Authority’ in the corresponding PCT application,
or

d) the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the IPO and a foreign Patent Office.

Additionally, a request for early publication is required to be filed, in case the application has not already been published.

2. Is it possible to file a request for expedited examination after filing a regular request for examination? 

Ans. Yes, if the conditions for filing an expedited examination are met, the applicant may convert a regular request for an examination into a request for expedited examination by making a request in the prescribed format and paying the difference in the prescribed fee.

3. How can a patent applicant expedite the grant of a patent application in India?

Ans. The following may expedite the grant of an application:

a) Filing a request for an early publication of the application (as an application is taken up for examination only after it has been published).

b) Filing a request for examination along with the application itself.

c) In case of a National Phase application, filing an express request for examination before the expiry of thirty one (31) months.

d) Filing a request for expedited examination, if the patent applicant qualifies.

e) Filing a response to the First Examination Report at the earliest.

f) Filing all the necessary formal documents at the earliest. 

4. Is it possible to initiate an examination of a National Phase application before the expiry of the thirty one (31) months’ period?

Ans. Yes, an express request for examination may be filed to initiate the examination of a National Phase application before the expiry of the thirty one (31) month period.

5. Is India part of any Patent Prosecution Highway (PPH) program?

Ans. No, India is currently not a part of any Patent Prosecution Highway (PPH) Program.

6. Can a patent application be withdrawn in India? If yes, how?

Ans. a) An applicant may withdraw a patent application by filing a request for withdrawal at the IPO any time before the grant of the patent. If the applicant also intends to prevent the publication of the application, the request must be filed three (3) months prior to the eighteen (18) months period from the date of filing or the priority date; or

1. b) An application shall be deemed to be withdrawn if:

• a request for examination is not filed, or
• a response to the examination report issued by the IPO is not filed.

7. Is there any fee for withdrawal of application?

Ans. There is no fee for withdrawal of a patent application.

8. Is it possible to obtain a refund of the application and/or examination fee, if an applicant withdraws a patent application before the examination?

Ans. An applicant can claim a refund of up to 90% of the examination fee if the applicant withdraws the application before the issuance of the examination report. The application fee is not refundable.

9. Can a Controller’s decision be appealed or challenged when a patent is refused in India?

Ans. Yes, it is possible to appeal/ challenge a Controller’s decision refusing the grant of a patent in India. In this regard, following options are available to the applicant:

a) The applicant may make an application to the Controller for the review of his decision. This application must be made within one (1) month from the date of communication of the decision to the applicant.

b) The applicant may make an appeal at the High Court. This appeal must be made within three (3) months from the date of the decision.

10. Can a patent application or a patent be challenged in India? 

Ans. Yes, a patent application/ patent may be challenged by a third party. The provisions available for challenging a patent application/ patent have been summarized in the table below:

* Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence,  the person filing the pre-grant opposition may be required to demonstrate why they are interested in opposing the patent application.

** Section 2(1)(t) of the Act defines “person interested” as including a person engaged in, or in promoting, research in the same field as that to which the invention relates.

1. What types of amendments to a patent application can be made in India? 

2. What amendments can be made to a specification or claims of patent application in India?

Ans. Only the following amendments to the specification or claims are allowable:

a) Correction: An amendment made to correct a mistake made during the preparation of the specification and not an error of judgment.

b) Explanation: An amendment made to clarify the invention. This, however, should not result in the addition of new matter or broadening of the scope of claims.

c) Disclaimer: An amendment made to limit the scope of the invention or remove doubts.

3. Can an applicant amend the claims at the time of National Phase entry into India?

Ans. The applicant is only allowed to delete claim(s) at the time of the National Phase entry.

(Note: The claim fee is calculated on the basis of the number of claims present on record at the time of National Phase entry.)

Any further amendment to the claims can be made by filing a request for amendment after filing the application.

4. Is it possible to add or remove inventor(s) from a patent application in India?

Ans. Yes, it is possible to add or remove inventor(s) from an application by filing a request in a prescribed format along with affidavits from the inventor(s) already on record.

5. Is it possible to amend the name or address of a patent applicant or an inventor in India?

Ans. Yes, the name and/or address of an applicant or an inventor may be amended at any time during the pendency of the application or even after the grant of a patent. A request in the prescribed format is required to be made along with documentary evidence in support of the change.

6. Is it possible to amend the priority date of a claim in India?

Ans. Yes, the priority date of a claim may be amended at any time during the pendency of the application or after the grant of a patent. The priority date may be amended suo moto by the applicant, or to overcome the objection raised by the Controller, or in an invalidation proceeding.

7. Is it possible to amend the filing date of a patent application in India?

Ans. Yes, an application may be post-dated any time after the filing of the application but before the grant of a patent on a request made to the Controller in the prescribed format. An application may also be post-dated if the Controller requires that amendments be made to the specification and if such amendments cannot be allowed without post-dating the application to a later date.

1. What are the key requirements that a patent applicant is required to comply with after the grant of a patent in India? 

Ans. There are three key  requirements that a patent applicant must comply with after the grant of a patent in India, which are as follows:

• Pay renewal fees to maintain the patent
• File the statement of working of patent in India
• Update patent register records in case of any change in the ownership. 

2. What are the immediate steps required to be taken once a patent has been granted in India?

Ans. After the grant of the patent, the patentee is required to pay renewal fee accumulated till the date of grant of the patent to maintain the patent. The schedule for the payment of the renewal fee is as follows:

• Within three (3) months of grant: All annuity payments that are due, calculated from the third year from the filing date. An extension of six (6) months is available.

• Before each subsequent anniversary of the filing date:

Note: For a PCT National Phase application, the international filing date is the filing          date in India. For a complete application filed after provisional, the filing date is the       filing date of the provisional application.

3. When is renewal fee/annuities for patent payable in India? 

Ans. The renewal fee becomes due on the anniversary of the patent’s filing date. The patentee may pay the renewal fee every year or may pay renewal fee for two or more years in advance.

4. Is there a requirement of paying a separate sealing fee/issue fee in India?

Ans. There is no requirement of paying any separate sealing fee or issue fee, other than the renewal fee.

5. What are the consequences of non-payment of renewal fee in India? 

Ans. Non-payment of the renewal fee results in cessation of the patent.

6. Can a patent ceased on account of non-payment of renewal fee be restored?

Ans. In case a patent ceased due to the non-payment of the renewal fee, the patentee may file a request for the restoration of the patent. The request for restoration must be filed within eighteen (18) months of the expiry of the patent. The patentee will be required to demonstrate that the failure in payment of renewal fee was unintentional and the request for restoration has been filed without any undue delay. The Controller, if satisfied, may allow the request for restoration. Also, the Controller may impose certain conditions on the restored patent in order to safeguard the interest of those who would have started working the invention owing to the lapse of the patent.

7. What is a financial year for the purposes of Statement of Working?

Ans. A financial year is a period from 01 April of a given year to 31 March of the following year.

8. What is a Statement of Working of patent in India? 

Ans. It is a statement as to  whether the patented invention has been worked on a commercial scale in India.

9. When is the first Statement of Working required to be filed?

Ans. The Statement of Working is required to be filed once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted. The first Statement of Working is required to be filed within six (6) months from the expiry of the 3^rd financial year commencing immediately after the financial year in which the patent was granted.

For example, for a patent that is granted between 01 April 2024 to 31 March  2025, the first working statement is required to be filed for the financial years: 01 April 2025- 31 March 2026,  01 April 2026- 31 March 2027 and 01 April 2027- 31 March 2028, by 30 September  2028.

10. Who is required to file the Statement of Working? 

Ans. It must be filed by the patentee and each licensee of the patentee.

11. Can the patentee file the working statement on behalf of the licensee? 

Ans. No, the patentee cannot file the working statement on behalf of the licensee. The licensee is required to file a separate statement of working in his own name. 

12. Is Statement of Working required to maintain a patent in India? 

Ans. No. Not filing of a Statement of Working does not affect the legal status of a patent in India, as long as the necessary annuities, required for maintaining the patent, are paid within the prescribed period. 

13. What information is required to be furnished in the “Statement of Working”? 

Ans. The patentee is required to furnish the following information in the “Statement of Working”:

a) Whether or not the invention has been worked in India.

b) If not worked, reasons for not working the patented product in India reasons for not working,

i. Patented Invention is under development/ commercial trial;
ii. Patented Invention is under Review/approval with Regulatory authorities;
iii. Exploring commercial licensing

c) Whether the patent is available for licensing.

d) In case the patent is available for licensing, the patentee has also an option to indicate whether the patentee would you be interested in receiving communications from any person interested in seeking a license, and provide their contact details.

14. What information is required to be provided in the Statement of Working if a patent is not being worked in India? 

Ans. If a patent is not being worked in India, reasons for not working should be provided. 

15. Is importation of a patented article considered as working of patent in India? 

Ans. Yes, importation is considered as working of patent in India. 

16. Can one Statement of working be filed for multiple patents? 

Ans. Yes, a single statement can be filed for related patents and which are granted to the same patentee.  

17. What are the consequences of not submitting the Statement of Working?

Ans.  A failure to submit this information may result in a penalty which may extend to one lakh rupees, and in case of the continuing refusal or failure, a further penalty of one thousand rupees for every day after the first during which such refusal or failure continues.

18. What are the consequences of submitting incorrect information in the Statement of Working?

Ans.  Furnishing incorrect information in the Statement of Working may result in a penalty for a sum equal to one half per cent of the total sale or turnover, as the case may be, of business or of the gross receipts in profession as computed in the audited accounts of such person, or a sum equal to five crore rupees, whichever is less.

1. When is a Foreign Filing License (FFL) required in India?         

Ans. An FFL is required when a patent application is proposed to be filed outside India in            the following case:

a) the applicant or the inventor(s) is a resident of India, and

b) the applicant or the inventor does not wish to file a patent application in India prior to filing outside India or the applicant wishes to file a patent application outside India before the expiry of a period of six (6) weeks from the filing of an application in India.

Here, the nationality of the person concerned is not relevant and only residential status is taken into consideration.

An FFL is only granted if either no secrecy direction (under Section 35) has been given by the Controller for an invention relating to or relevant for defence or atomic energy purposes, or the secrecy direction has been revoked.  Also, if the invention is relevant for defence purposes or atomic energy, the Controller grants an FFL only after obtaining permission from the Central Government.

2. Can a patent applicant obtain Foreign Filing License (FFL) after filing the application outside India?

Ans. No, an FFL must be obtained before filing the application outside India.

3. Who is considered as a ‘person resident in India’ for the purposes of obtaining an Foreign Filing License (FFL)? 

Ans. A person is said to be a resident in India in any previous year (April 1- March 31), if he—

(a) is in India in that year for a period amounting in all to 182 or more, or
(b) is in India for a period of,

for any individual: at least 60 days during the relevant previous year and at least 365 days during the four years preceding that previous year;

for Indian citizens who go outside India for the purposes of employment: at least 182 days during the relevant previous year and at least 365 days during the four years preceding that previous year;

for an Indian citizen or a person of Indian origin who visits India during the year: at least 182 days during the relevant previous year and at least 365 days during the four years preceding that previous year;

for an Indian citizen or a person of Indian origin whose total income, other than income from foreign sources, is more than Rupees 1.5 Million during the previous year: at least 120 days during the relevant previous year and at least 365 days during the four year preceding that previous year.

In other words, if the person is eligible to pay taxes for the previous financial year, then he is a ‘person resident in India’ for that previous financial year.

4. What documents and information are required for obtaining Foreign Filing License (FFL)?

Ans. The following documents and information are required for obtaining an FFL:

a) The name, address and nationality of the inventor(s) and/or applicant(s) that are resident of India

b) The name, address, and nationality of the other inventor(s) and applicant(s)

c) Power of Authority from the inventor(s) or the applicant(s) residing in India

d) A brief write-up of the invention including the title of the invention and drawings (if any)

e) A list of countries in which the inventor(s)/assignee intends to file the application.

5. Can multiple patent applications be filed using a single Foreign Filing License (FFL)? 

Ans. Yes, as long as all the patent applications contain the invention for which the FFL was obtained.

6. How long does it take to get a Foreign Filing License (FFL) in India?

Ans. The FFL is generally given within 21 days from the date of filing the request.

7. What are the consequences of filing an application outside India without obtaining the Foreign Filing License (FFL)?

Ans. If an application is filed outside India without obtaining FFL then any subsequently filed Indian application shall be deemed to have been abandoned and the patent granted, if any shall be liable to be revoked.

Further, non-compliance with this requirement incurs a penalty that includes imprisonment for a term which may extend to two years, fine, or both.

1. What are the advantages or marking in your country and is it a legal requirement?

Ans. While practically, the Courts do not refuse enforcement of patent for non-marking, the legal provisions provide that in a suit for infringement of a patent, damages or an account of profits shall not be granted against a defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Thus, it is recommended to not only mention “Patented” but also the “Patent Number” to rebut any presumption of non-infringement in favour of any potential infringer.

2. What provisional protection can be obtained in your country and how?

Ans. Indian Patent law does not provide for provisional protection. Particularly, no action can be taken against infringement of a pending patent application. However, damages can be claimed from the date of publication of the application, in a suit for infringement filed after the grant of the patent application.

3. Is it best to give notice to potential infringers after the patent is granted or to do it once provisional protection for the application is in place? 

Ans. It is generally advisable to wait for grant before giving notice so as to avoid any pre-grant oppositions. Such pre-grant oppositions tend to delay the matter. However, there may be circumstances that may warrant giving notice and would depend on the facts of each case. 

4. What are the consequences of non-compliance with the obligation under Section 8 in India?

Ans. Non-compliance with the obligation under Section 8 of the Act is a ground for:

a) pre-grant and post-grant opposition proceedings before the IPO

b) revocation of a patent.

However, Indian Courts have clarified that the revocation on this ground should not be automatic but based on the specific facts and circumstances of the case. The courts are expected to enquire into whether there was a deliberate or wilful suppression and whether the undisclosed information was in fact material to the grant of the patent.