Securing a Patent in India

Patents among other intellectual property rights is one which takes relatively longer time to secure. The very first question which comes up to an applicant’s mind before applying for a patent is if they need to go about it on their own or seek a professional firm for the same.

The process of securing a patent has various time constraints and deadlines hence it is advisable to seek a professional firm to secure a patent. It is also important that the applicant seeks a Non-Disclosure agreement prior to engaging with any firm in order to protect their invention before disclosing it.

Once the applicant has proceeded with selection of a firm and have signed the Non-Disclosure agreement, the next step to be considered is a Patentability search also referred to as a prior art search. This search isn’t mandatory however is recommended as it helps asses the strength of the patent application and helps asses the patentability of the invention, in other words a prior art search indicates whether the invention is patentable or not based on three pre-defined criteria which are:

(1) Novelty
(2) Non – obvious
(3) Usefulness or Industrial application

Novelty indicates that the invention for which patent is being applied for is not similar in one way or more to other inventions already present in the public domain. Non – obviousness means that the invention is not obvious, a person in a similar field of expertise should look at the invention and find it to be unexpected. For instance, if you were born in the beginning of times and you were the first person who made a table. If after that someone applies for a table with a circular top as opposed to a square top, it is arguable that a skilled carpenter would say that the top could be of any shape is not really an improvement on the previous invention and hence is not non-obvious. Usefulness as the word indicates, requires the invention to have useful need or industrial application.

Step 1: An application for a patent can be made provisionally or completely. A provisional application is a temporary application which is generally filed when the invention is not finalized.It gives the applicant a time period of 12 months to finalize the finer details and provide a complete specification application.

When a patent application is filed for instance in China on 1st June 2009 and subsequently another application is filed in India on 5th May 2011, priority date will be considered as 1st June 2019. If an application is only filed in India for instance on 1st January 2010, priority date shall be 1st January 2010. This implies that if there has been no application filed for your invention anywhere, then the date of application becomes the priority date.

Step 2: Once an application is filed, it takes about 18 months to have the application enter publication. Once the application enters publication, a request for examination can be filed. However, there are provisions to reduce the time of 18 months generally taken for publication by filing a request for early publication.

Step 3: A request for examination can be filed within 48 months of the priority date. Indian Patent Office will not examine an application until the request for examination has been filed, hence it is an important step.

Step 4: Once the Indian Patent office receives a request for examination, the application is placed in queue for review/examination. Once examination of the application has been conducted, the patent office will either be of the opinion that the invention/application satisfies all the requirements and subsequently patent will be granted or there will be oppositions raised via First Examination Report (abbreviated as FER).

Step 5: An applicant or their representatives have a time frame of 6 months to reply to the First Examination Report from the date of its issuance. It is always advisable to file a reply as soon as possible so that the patent office can examine the response and issue another examination report if needed. This timely response is imperative since the applicant or their representatives have a total of 6 month from the date of issuance of the FER (First Examination Report) to respond to all the examination reports if there are more than one.

Step 6: There is also an additional provision of requesting a hearing after the First Examination Report. Post the hearing/filing response to the examination report, the patent office will either proceed with grant of the patent or reject the application.

If the applicant wants to appeal against the decision of the patent office of rejecting the application, they can reach out to the Intellectual Property Appellate Board (IPAB) who are authorized to hear such appeals.

Note: It is important to understand that these steps do not imply that an applicant or their representatives need to wait to file a request for examination till the application has been published. A request for early publication or request for examination can be filed along with the patent application.

Expedited Process:

A lot of times an applicant will want to have their examination process expedited due to any number of reasons as 48 months from the priority date can seem to be a lot of time. To have the examination process expedited, provision of requesting an Expedited Examination is also available for the applicant. However, this expedited examination is only allowed for certain types of applicant and not everyone can request an expedited examination.

Expedited Examination Request:

As per the recent draft rules, the eligibility criteria for expedited examination is to be expanded further as following:

  • Small entity;
  • Female applicants (in case of natural persons only) or at least one of the applicants is a female;
  • A government undertaking in case of an Indian applicant, or is a similar entity in case of a foreign applicant;
  • An applicant who is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office;
  • The applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

An expedited examination incurs additional charges.In case the request for examination was already filed, there is a provision to convert the regular request for examination to an expedited one. If there was no Request for Examination filed, an applicant or their representatives can directly file a request for expedited examination with fee as applicable.

The steps taken to try an increase the eligibility for expedited examination seems to be a step in the right direction encouraging applicants to seek patent protection in a timely manner and contributing to women empowerment as well.

Author:  Dhruv Verma, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at dhruv@iiprd.com.

References:

[1] https://www.lotempiolaw.com/2010/06/patents/what-is-nonobvious-and-can-be-patented/

[2] https://iiprd.wordpress.com/2018/12/17/draft-patent-amendments-rules-2018/

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