Patent FAQ

Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.

The term of every patent granted is 20 years from the date of filing of application. However, for application filed under National Phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.

An invention which falls under the category of Section 3 & Section 4 of the Patent Act cannot be patented for example a mathematical/business method; computer programs; algorithms etc.

The Copyright System in India is governed by the Copyright Act, 1957 and the Copyright Rules, 2013.

A patent application can be filed by:
• true and first inventor or his assignee,
• alone or jointly with any other person
• legal representative of any deceased person.

The Patent system in India is governed by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003.

A patent application can be filed with Indian Patent Office either with provisional specification or with complete specification along with the prescribed fee.
In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional application. There is no further extension of time to file complete specification after expiry of said period.

An invention is patentable subject matter if it meets the following criteria –
• The Invention should be new/novel.
• The Invention should have an inventive step or it should be non-obvious in nature.
• The Invention should be capable of Industrial application.

A patent application is not examined automatically after its filing. The examination is done only after receipt of the Request of Examination is applied for either by the applicant or from third party.

The Applicant have to decide the appropriate territorial jurisdiction on the basis of place of business and residence in India. For foreign applicants, the Indian address for service which is provided by the applicant at the time of filing patent applications, is taken into consideration.
The Indian Patent Offices are located in New Delhi, Chennai, Mumbai and Kolkata.

• Patent filing (In case application filed on the basis of provisional specification, the complete specification filling is to be done within 12 months from provisional date of filing the application)
• Publication of the patent application within 18 months from the priority date.
• Request for Examination to be applied within 48 months from the priority date.
• The application is examined.
• A First Examination Report is issued.
• A response to First Examination Report has to be filed.
• Hearing is conducted.
• The patent office may issue a final grant or rejection.
• In case of refusal, the applicant may appeal further to the Appellate Board.

Though is not mandatory to conduct a patent search but it is recommended to conduct a thorough search before filing the application as it gives a clarity and assurance to the inventors about the availability of their invention.
Databases which can be used for patent search are:
• Thomson Innovation
• Google patents
• Orbit
• European Patent Office: Espacenet
• PatentScope: WIPO
• United States Patent and Trademark Office: USPTO

At present, the patent office is issuing examination reports within 36 months of filing the patent application. However, the patent office is increasing its resources and has promised to issue examination reports within 18 months of filing the request for examination.

The patent office raises objections relating to the below mentioned:
• Lack of novelty in the invention.
• Invention is obvious and in light of prior art.
• Subject matter is not patentable
• The enablement requirement required is not satisfied.

By default, a complete application will be published upon 18 months from the priority date. However, if an early publication request is filed for a complete application, the application will be published within 21 days of filing such a request.

Pre-grant oppositions can be filed within a time period of 6 months from the date of publication whereas post grant oppositions can be filed within a time period of 12 months from date of publication.

The applicant can sell the rights to the patent. However, if there are multiple applicants, consent of all the applicants is required to sell the patent.

At present, it takes about 36 to 48 months to get a final decision on a patent application.

In India, a patent application can be withdrawn in the following ways:
• Within 15 months of the date of filing or date of priority, whichever is earlier.
• Before the issuance of the First Examination Report.
• Any time after its filing but before the grant of patent by making a request.

If the patent renewal amount is not paid within the prescribed time period of 20 years, the patent will lapse or cease to exist.

The grounds for filing pre-grant and post grant oppositions are almost identical and an opponent filing a pre-grant opposition can file a post-grant opposition as well.
The notable grounds are:
• Prior publication or prior claim in India
• Prior use
• Obviousness
• Lack of inventive step
• The invention falling within the ambit of Section 3 & 4 of Patent Act.
• Insufficient description of the invention.
• Complete specification not filed within 12 months