Patent

What is a Patent?

A patent is a legal document which grants the patent holder (individuals or businesses) the right to safeguard their inventions, preventing unauthorized use in the form of import, production, or sale of their product. Inventors frequently opt to patent their creations to protect their innovative ideas from exploitation.

What is the Indian Patent Office?

The Ministry responsible for Patents is the Ministry of Commerce and Industry, under this ministry is the Department of Industrial Policy and Promotion where is the  office of the Controller General of Patents, Designs and Trademarks (CGPDTM) that has the Indian Patent Office (IPO)

The Patents Act 1970 was amended to fulfil the obligations of international agreements and treaties to which India became a party.

The Government of India invested in infrastructure, both physical and manpower during the past decade, establishing a strong intellectual property regime in the country. The Indian Patent Office was recognized as an International Searching Authority and International Preliminary Examining Authority under the PCT and started functioning on 15th October 2013. IPO has established a Quality Management System covering technical and administrative tasks of the office.

Official Definition of Patent

‘Patent’ as defined in Patent Act, 1970

While defining the term Patent, the Act simply states that Patent means a patent for any invention granted under this Act. However, there are certain other definitions which stipulate certain criteria for any subject matter to be classified as inception and then may be considered for patentability.

The provisions define Invention as a new product or process involving an inventive step and capable of industrial application. Wherein further elaboration has been made upon "inventive step" to mean as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. The clarification has been given for "capable of industrial application" as an invention is capable of being made or used in an industry.

Additionally, the Act has a separate definition for "new invention" which means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art;

Eligibility criteria for grant of Patent:

To get the granted Patent, which is essential for the enforceability, every country has its criteria to judge the invention. Usually, Novelty, Inventive Step/Non-Obviousness and Industrial Applicability are the common criteria for judging an invention.

In case of India, the requirement is mentioned under section 2 i/e definition clause of the Patent Act, 1970.

1. It should be novel.
2. It should have inventive steps or it must be non-obvious
3. It should be capable of Industrial application.
4. It should not attract restriction from any provisions. This requirement finds elaboration under section 3 and 4 of the Act.

Statutory Exclusions on Patentability -

The Patents Act, of 1970 has a provision that restricts grant of patent on the inventions that are against public order or morality. Under section 3 of the Act, there are 16 grounds that specifically excludes the inventions from being patented. Furthermore, section 4 restricts the patentability of inventions pertaining to atomic energy.  

The grounds of restrictions under section 3 are namely -

(a) Frivolous or Contrary to Natural Laws: Inventions that have claims against established scientific principles cannot be patented.  

(b) Against Public Order or Morality: This provision excludes inventions that could disrupt public peace and morals, or cause serious damage to humans, animals, plants, or the environment.  For instance: biological weapons.

(c) Discoveries of Natural Things or Principles: Mere discoveries of things that already exist in nature, like a new animal species or a scientific principle, are not patentable.  For instance the discovery of Earth being round in shape, for the theory of relativity etc.

(d) Known Substance Modifications Without Improvement:  An insignificant modification in the form of a known substance unless it improves its effectiveness cannot be patented. Discovering a new use for a known substance is also not patentable by itself.  

(e) Simple Mixtures: Simply mixing known things together without creating some new function or property  is not patentable.  

(f) Known Device Rearrangements: Similar to the previous clause, taking known devices and adjoining them in a new way, but without creating a new function, is not sufficient for a patent.  

(h) Agriculture and Horticulture Methods: Techniques used in farming and gardening can not be patented.  

(i) Medical Treatments (Humans & Animals): Processes used to treat or diagnose diseases in humans and animals are not patentable.  

(j) Plants, Animals (Except Microorganisms), and Essentially Biological Processes:  This excludes naturally occurring plants and animals (except microorganisms) from being patented,  as well as processes that rely solely on biological processes for plant or animal production.  

(k) Mathematical Methods, Business Methods, Software, Algorithms:  Mathematical formulas, business practices, computer programs themselves, and algorithms are not patentable.  

(l) Creative Works:Because it is the subject matter of a different IP altogether.

(m) Mental Acts, Games, and Information Presentation

(o) Topography of Integrated Circuits: Subject matter of another IP.

(p) Traditional Knowledge: Inventions that are essentially based on traditional knowledge or simply combine known properties of traditional components are not patentable.  

Legal Provision

Legal provisions relating to Patent Applications:

Application for Pre-grant opposition - Form 7A mentioned under Second Schedule of the Patent Rules, 2003 is used for filing this, by any person. The grounds for the same are enlisted under section 25(1) of the Act.

Application for Post-grant opposition - Form 7 is used for the purpose of making the representation, by the interested parties within 1 year of the grant. This is also mentioned under the same schedule of the Patent rule. The grounds for the same are enlisted under section 25(2) of the Act.

Application for filing revocation - Form 19 is used for the purpose of claiming revocation of a granted patent because of its non-working status.

Grant of compulsory license - Any party interested in obtaining the compulsory license may file a request by filing the Form 17.

Request for termination of Compulsory license - Form 20  

Process of Grant of Patent:

After filing the application for the grant of patent in the Form no. 1 and filing for the complete specification under form no. 2, a request for examination is required to be made for examination of the application by the Indian Patent Office. In case the application is not made then the application can be deemed abandoned.

After the First Examination Report is issued, the Applicant is given an opportunity to meet the objections raised in the report.

The Applicant has to comply with the requirements within 12 months from the issuance of the First Examination Report.

If the requirements of the first examination report are not complied with within the prescribed period of 12 months, then the application is treated to have been abandoned by the applicant.

After the removal of objections and compliance with requirements, the patent is granted and notified in the Patent Office Journal.

Compulsory license:

Compulsory license is an authorization granted by the Government to someone else i.e., a third party to produce a patented product without the consent of the patent owner who has been taking undue advantage of exclusive rights granted by the patent.  Under the Indian Patent Act, compulsory license can be granted after the expiration of a period of three years from the date on which the patent has been granted. The grounds include:

• The reasonable requirements of the public with respect to the patented invention have not been satisfied; or
• The patented invention is not available to the public at a reasonably affordable price; or
• Patented invention is not worked in the territory of India.

Under section 92 of Indian Patent Act, a compulsory license can be granted Suo moto by the Central Government in circumstances of:

1. The situation of extreme urgency or national emergency.
2. Non-commercial public use of the invention.

The issuance of such compulsory license is to be notified by the central government in the official gazette and the controller will have authority to issue the license to the person interested by setting conditions based on his discretion. The guiding principle for setting these conditions is that the product be made available to the public at large at affordable prices.  Section 92A is specifically for grant of license in pharma products, for tackling the public health problems.

Types of Patent Applications

Based on the Stage of filing

Provisional Application:

This application is also known as the interim application, wherein the entire specification need not be carried out. It assures the prior date of application simultaneously granting 12 months to the applicant to properly draft their final application of specifications so that there are higher chances of getting the invention patented without losing on to the novelty. A provisional specification is expected to sufficiently cover the subject matter of the invention but need not contain all the sections or portions required in a regular patent application.

Complete Specification Application

This is the final application that is considered for the purpose of publication and examination. This application can be made directly without filing the interim application; however, after the filing of the interim application, the applicant has to file the complete application within 12 months.

Based on protection claimed

Division Application:

The Divisional Patent applications enable the patent applicants to protect the unique aspects of their invention separately. After the initial disclosure in the Parent patent application the divisional patent application can be filed for a better protection of the distinct features of the product.

Patent of addition:

“Patent of addition” is defined in s. 2(1) (q). This concept is dealt with within section 54, 55 and 56 of the Act. Essentially the patent of addition gives the safe to expand the scope of the parent application made previously, to include the improvement or modification.

The term of the granted Patent of addition is based upon the duration of the parent patent application, thus it is dependent on the previously applied application. However, in case the Parent patent turns invalid, the patent of addition can continue as a valid Patent by converting into the main patent. The conversion is subject to the payment of the fees which are foreseen to maintain a “main patent” in force. In the case of the United States, this application is known as “Continuation In Patent”(CIP). CIP can only be filed when the parent application is pending. However, most of the nations in current time have abolished granting the patent of additions for modifications over the main invention.  

The essential requirements to be fulfilled for the grant of Patent of addition are:

1. There has to be a nexus between the main invention and the improvement in or modification.
2. The improvement or modification must be of the invention as described or disclosed in the competition for specification in respect of the main invention;
3. The specification must make it clear that the invention comes within the scope of improvement of modification of the main invention;
4. It should not cover an improvement in an invention not comprising the main invention.

Based on source of application -

Convention Patent Application

The Convention Patent application provides an immunity to the patent applicants, if they file in the nations party to the Paris Convention.Once an individual has filed application in their nation, if going via convention route to the party nations, that person will get a time period of 12 months for filing the application in those nations and the date of filing will be considered as the same as the parent application.   

PCT Application

The process provided by the Patent cooperation treaty is known as PCT application, wherein WIPO assists the applicant to file the application across the world, without individually applying to each nation. This application has two phases: international and the national phase. The National Phase follows the International Phase and consists of processing the application in the Patent Office of specific countries following the same procedure as processing a national application entry in India.

Based on Remedies claimed

Opposition

The Indian patent system allows individuals to challenge the grant or validity of a patent. This process, known as "opposition," can be initiated before or after a patent is granted, offering opportunities to safeguard innovation and prevent monopolies on unoriginal or non-inventive ideas.

Types

There are two types of oppositions available for Patent -

• Pre-grant opposition
• Post-grant opposition

Pre-Grant Opposition

Section 25(1) covers all the relevant grounds for the purpose of pre-grant opposition of a patent application. The pre-grant opposition can be made from the first publication till the time grant has not happened.

Anyone can act as watchdog and oppose the grant of a patent application if there is a belief that the concerned Patent does not meet the legal requirements. There is no limitation as to who can file the pre-grant opposition application.

The grounds for pre-grant opposition are: Opposing party claims the invention rightfully belongs to them or someone they represent, not the applicant, Opposing party can argue on Prior Publication, Lack of Novelty or Inventive Step, Providing misleading information, If the subject has not been properly disclosed or Improper Biological Material Disclosure.

Post-Grant Opposition

Even after a patent is granted, interested parties can still challenge its validity within one year of its publication. The opposition has to be made by an interested party and not anyone else. The grounds for post-grant opposition largely mirror those for pre-grant opposition, offering a safety net for situations where crucial information might not have been readily available before the patent was granted. The minor differences in the grounds are:

Ownership: Both use "applicant" for pre-grant and "patentee" for post-grant, reflecting who holds the patent at the time of opposition.

Time References: Clauses related to novelty (b, c, d) might be interpreted slightly differently depending on the timing of opposition (pre-grant vs. post-grant) due to the "priority date" concept. However, the core concept of the invention being publicly known or claimed before the applicant's claim remains the same. The priority date is understood as the date on which that matter was first so disclosed.

The Opposition Process:

If you choose to file an opposition, you'll need to follow a specific procedure:

1. File a Written Opposition: Clearly state the grounds for your opposition and provide supporting evidence like documents or expert opinions.

2. Notification and Board Formation: The patent office will notify the applicant/patentee and establish an "Opposition Board" to examine your claims.

3. Hearings for Both Sides: You and the applicant/patentee will have an opportunity to present your arguments and evidence before the board.

4. The Controller's Decision: After considering all arguments and the board's recommendations, the patent office controller will decide to:

•    Maintain the Patent so that the patent will remain valid as is.
•    Amend the Patent so that the patent will be modified to address the identified issues.
•    Revoke the Patent so that the patent will be declared invalid and unenforceable.

Rule 55 of the Patents Rules 2003 stipulates that representation for a pre-grant opposition needs to be filed in form 7(A) at the relevant patent office branch (currently online) with a copy to the applicant.

Rules 55A to 70 of Patent Rules, 2003 explains the procedure for a post-grant opposition. As per rule 55 A, after the grant of patent but before expiry of period of 1 year after publication of grant of patent, any “interested person” may file post-grant opposition by filling Form 7 in duplicate along with fees, mentioned under Second Schedule of the Patent Rules, 2003 on the grounds listed in Section 25(2) of the Patent Act, 1970.

Appeals

As per section 117A of the Act,  every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government or within such further time as the Appellate Board may, in accordance with the rules made by it allow.

Revocation proceedings

The grant of a patent can be questioned in the High Court, at any time period during its existence, by the interested parties. Such proceedings are covered under section 64 of the Act.

Who can bring suit under section 64:

1. Any interested party
2. Central Government
3. By way of Counter claim as a defense in proceedings such as infringement.

There are broad grounds provided under section 64, however the list is not exhaustive and gives enough space for all the concerns of the parties. Furthermore, section 65 specifically provides for revocation in case of atomic energy and section 66 in case the invention is against public morality.  

Additionally, a non-working patent, where the invention has not been commercialized to its full potential can also be revoked.

Infringement

The Patentholder is given certain exc;lusive rights with the grant of patent, that include the right of excluding these parties from making, offering, exporting the patented product or invention. In case the third parties are found to be engaged in these activities without the prior consent of the owner then it constitutes infringement of the rights of the Patentee. The remedy in this case is, interim injunction during the pendency of trial and permanent injunction when the violation is proved.

Official Database

Annual Report by Patent Office:

The chapter 3 in the Annual report on Intellectual Property 2022-23 covers the aspect of Patent. The report consists of the data regarding the number of all types of applications filed by both Indian and foreign applicants and in all the areas of invention including the sector of Information technology, Science research and development organizations, academic institutes etc. It also showcases the number of grants made and rejections sent.

Not only the status of application for grant but also the status of oppositions made at the level of pre-grant and post grant has been covered by the report. Further, the report depicts the number of Patents that have been restored from being lapsed and are working Patents. In this manner the entire Patent grant procedure is available for public scrutiny by way of this report.

WIPO IP Indicator Report 2023:

Fig 1: Average Time Taken for Patent Application

Source: WIPO for other countries and Office of the CGPDTM for India

Note: # Numbers for India is at the end of 2021-22 and for other countries is for 2020

Fig 2: Distribution of patent examination outcomes for selected offices, 2022

Source: WIPO IP Indicator Report 2023

Fig 3 Potentially Pending Applications

Source: WIPO IP Indicator report 2023

Fig 4: Average pendency times for first office action and final decision at selected offices, 2022

Source: WIPO IP Indicator report 2023

Fig 5: Manpower in the patent office

Source: Office of CGPDTM