1. What are patents and its advantages/objectives?
Answer: Patents are techno-legal documents providing the details of new, non-obvious, and industrially applicable inventions. Once approved by the patent office of a certain country/region, the patent provides the patent owner legal rights of monopoly/ right to exclude others from using, -selling, offering for sale, importing – the patented invention in that country, or exporting the patented invention from that country. If however, a third party flouts the legal rights of the patent owner (infringement) he/she/they can be sued in the court of law for injunction and/or damages (compensation).
Few key advantages of patents can be enlisted as below:
– advantage to companies/industry over competitors due to monopolistic rights over a certain invention
– ability to sell/license the patent to another entity can help researchers monetize their invention even if they themselves won’t market the invention
– increased chances of investments and VC interest in patent-protected – inventions because of the advantage of the monopoly
– branding of the technology and new and unique with the patented status
2. What is the application process for a patent?
Answer: The true and first inventor(s), his assignee, or their legal representative – can apply for a patent with a provisional or a complete specification either themselves or through an agent by duly submitting the application form – at the appropriate office. In India, there are 4 offices, namely Delhi, Mumbai, Chennai & Kolkata, and depending on the address of the applicant where he resides, has his domicile, or has a place of business or the place from where invention actually originated, the appropriate office is applicable. In the case of foreign applicants, who don’t have a domicile, place of business in India, place of business, or address for service in India of the patent agent appointed by them is the determining factor for the appropriate office. Specific state-wise details can be accessed here: http://ipindia.nic.in/ipr/patent/patjurid.htm
The date of the first filing of a patent application is called the priority date. In the patent system of first to file, this date becomes important, and if there are two patents/ patent applications with the same/substantially similar subject matter, the earlier priority date patent application/patent survives the other.
If a filing has to be done in other countries, the priority of the initially filed application (parent application) -can be taken and filed in respective countries/regions. The subsequent applications shall have the same priority date as the parent application and are referred to as family members of the initial application and each other. The application process is generally similar but the format of application may differ from country to country and the applicant ordinarily cannot file without the professional assistance of a patent agent or attorney in that country/region.
3. What is the difference between provisional and complete specifications?
Answer: A complete specification is the regular patent application that is prosecuted, examined, accepted, and granted by the patent office. The complete specification comprises the full and sufficient disclosure of the invention along with the best mode of working of the invention and definitive claims enabling the legal boundary of the invention.
However, the patent lawmakers understood that sometimes when the invention is conceived but not fully developed providing a complete specification is not practically possible and hence they introduced the option of a provisional specification. A provisional specification is required to give only the key novelty and inventive aspect of the invention in an abridged form and may not have claims provided.
Following are few key points with respect to provisional and complete patent specification:
1. A complete specification has to be filed within 12 months from the date of filing provisional; else the patent application shall lapse. In some countries, like India, there is an option of post-dating the 12 month period by pushing forward the application date of the provisional but the same is not recommended as the patent system follows the first-to-file priority of patents.
2. Provisional patent specification filing is optional and voluntary. An applicant can also file a complete specification directly without filing a provisional specification.
3. Even though the provisional specification does not have claims, it creates a legal boundary of the invention with respect to the novelty and inventiveness, and the complete specification cannot be broader in scope compared to the provisional. Hence provisional specification also requires careful drafting.
4. More than one provisional application can be combined to form a single complete specification – in case provisional specifications were filed in respect of cognate inventions or where one was a modification of another.
4. What are the steps involved in patent registration in India and the timelines associated with it?
Answer: Following are the steps involved in patent registration in India:
– Filing the patent application is the first step of the patent registration.
– Patent office then publishes the complete patent specification ordinarily after eighteen months from the priority date. Optionally a request for early publication can be made whereby publication happens ordinarily within one month of such request.
– The next step in the process is an examination by the patent office. Unlike publication, examination of the patent application is not automatic and request has to be filed within 48 months from the earlier date of priority and filing of the application.
-Once a request for examination has been made, the Patent office issues an examination report to the applicant. Examination of the application is done based on the date of filing of the request for the examination i.e. earlier the request made for the examination, earlier in the report issued.
– After the issuance of the first examination report, the application is to be put in a condition of allowance within 12 months by waiving the objection and complying with requirements, if any.
– After considering replies to the first or subsequent examination reports and hearing notices if any, the controller grants or rejects the patent application.
-In India, a patent application can be opposed before and after the grant of the patent. A patent can also be revoked under some circumstances. After the grant of the patent, renewal fees have to be paid to keep the patent in force.
– An appeal can be made against the decision of the patent office/controller at the Intellectual Property Appellate Board by the aggrieved party.
Below is a flowchart representation of the process:
5. When can the phrase ‘patent applied’ or ‘patent pending’ or ‘patented’ be used?
Answer: ‘Patent applied’ or ‘patent pending’ can be used with any article sold when the patent application has been filed to cover that article and the application is not yet granted/rejected/withdrawn/abandoned. Patented or patent can be used with any article sold when a patent has been granted which covers the product. Unauthorized use of these words can lead to a fine extendable to one lakh rupees.
6. Is there a way to add improvements or technical modifications to a patent?
Answer: Ordinarily no new matter can be added to a complete patent specification. However, in such cases, there is a provision of filing a patent of addition in respect of – original patent of application, and thereby claiming through the patent of addition improvements or modification to the invention.
The reader is further advised to click here for an interesting and knowledgeable article on the patent of addition.
7. What are the modes of filing a patent internationally?
Answer: As it stands, there is no unitary worldwide patent and the applicant has to file in respective jurisdictions separately in one of the following routes:
Paris Convention: Direct filing in another country is facilitated through the Paris Convention for all members of the convention which includes India and all major countries. However, the filing through Paris convention has to be done within 12 months from the priority date.
Patent Cooperation Treaty System: PCT is a vehicular system that allows an applicant to file in PCT contracting states within 30-34 months from the priority date (varies from jurisdiction to jurisdiction) instead of 12 months. Not only does the PCT enable extended time periods, but it also simplifies logistic and formal work in terms of documentation and forms. The PCT system also provides for an International Search Report on the invention – giving the applicant a glimpse of the chances of the patent grant in multiple jurisdictions. However, it is pertinent to note that the PCT application itself has to be filed within 12 months from the priority date. Also, not every Paris convention country is a PCT member and in those jurisdictions, only the Paris convention route can be used for patent filing. The comparative listing of the jurisdictions therewith can be accessed here:
8. Are there any restrictions in filing outside India for Indian residents?
Answer: Yes, the following provisions have to be complied with in case of foreign filings by Indian Residents:
– If an application is filed in India, then there is a mandatory waiting period for at least 6 weeks before filing outside India, else a request for a foreign filing permit at the patent office must be submitted, and only after getting the permit can the filing be done outside India.
– If the applicant wants to file directly outside India, without filing in India first, then again, a request for a foreign filing permit at the patent office must be submitted, and only after getting the permit can the filing be done outside India.
Failure to take permission from IPO before the filing of foreign application can lead to the abandonment of the Indian Patent application and if granted, then revocation of the patent. One might even face imprisonment up to 2 years or a fine or both.
9. What is the relevant date from the infringement perspective?
Answer: Although suit for infringement can only be instituted after the grant of a patent, the patentee shall have privileges as if the patent was granted on the date of publication of application, and when suing for infringement the patent owner can sue to backdate and claim damages from the date of infringement or publication of patent application whichever is later.
10. When does the applicant have to pay any annuity/ maintenance/ renewal fees for the maintenance of the patent?
Answer: The annuity/maintenance/renewal fees need to be paid only after the grant of the patent in India but in the form of accrued payment for every year right from the first 2 years out of 20 years of the term of the patent. According to section 53 (2) of the act, renewal fees need to be paid in order to keep the patent in force at the expiration of 2 years or subsequent years from the date of a patent which shall be renewal fees for the third year or subsequent year. It means that maintenance fees need to be paid in the nth year in respect of nth plus 1 year. According to section 142 (4) of the act, where a principal patent is granted later than 2 years from the date of the filing of the application, the fees which have become due in the meantime may be paid within a term of three months from the date of the recording of the patent in the register or within the extended period not later than nine months from the date of recording. This system however varies from country to country.
11. What is the term of the patent? Can a patent be renewed once it is expired?
Answer: Generally throughout the world, the term of a patent is twenty years from the filing date in the case of domestic patents, and it is twenty years from the date of the international filing date in case of national phase applications entered through Patent Cooperation Treaty (PCT). Some countries also allow patent term adjustment in case of delay from the side of the patent office in the grant of patent and patent term extension in case of delay from the side of regulatory bodies in case of pharmaceutical and agricultural patents. In India, no patent term adjustment or patent term extension is granted. Once a term is expired, patents can’t be renewed.
12. Who may file a request for examination and what is time allowed for putting an application in condition of the grant?
Answer: The request for examination may be filed by the applicant or any other interested person, or their agents. Ordinarily, the first examination report (FER) is sent to the patent applicant and is also uploaded online for public perusal. Once the examination report is issued it is obligatory on the part of the patent applicant to respond to the FER or subsequent ERs if any, within twelve months from the date of FER issue to the applicant with the aim to put the application in order for grant.
13. Is it possible to file pre-grant opposition even though there is no request for examination filed?
Answer: Yes, it is possible to file representation for pre-grant opposition even though no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period. As representation for pre-grant will be considered only when a request for examination is received within the prescribed period, one can choose to file a request for examination as ‘any other interested person’ so that one does not need to wait till the applicant files a request for examination. This will help to expedite the process and decide the fate of the patent application.
14. Can a patent be opposed even after the grant of the patent? Or can the patent be revoked the grant?
Answer: A patent can be opposed even after the grant. There are different grounds available under section 25 (2) of the Patents Act, 1970. Grounds of section 25 (2) can be used to oppose the patent within a period of 12 months from the date of publishing of the grant of the patent. Section 64 of the Patents Act, 1970 can be used to revoke the patent. Unlike the grounds available under section 25 (2), grounds available under section 64 can be used till the expiry of the patent. The decision of the controller in the post-grant opposition can be appealed and such appeals shall be made within three months from the date of communication or receipt of the order of the appeal. Condonation of delay petition along with necessary fees can also be filed with the genuine reason of delay. According to section 64, a patent may be revoked on the petition of any person interested or central government, or a patent may be revoked by the high court on a counter-claim in a suit for infringement of the patent using one of the grounds of section 64.
15. What is patentability search and is it mandatory?
Answer: It is the search done to find out whether a particular invention is patentable or not. In this search, the study is done to check whether or not a particular invention meets all three criteria of patentability i.e. novelty, non-obviousness, and industrial applicability. Considering the costs involved in the patent registration, getting this search done from professional patent consultants who use paid and non-paid databases, search patent and non-patent literature from all over the world can save a lot of costs if the invention turns out to be non-patentable during the search. However, if one is confident enough of the patentability of the invention, this search can be skipped and patent applications can be filed directly.