Patent registration can be obtained in India for an invention. Patent registrations are not applicable for all inventions, and the invention must satisfy certain criteria to be patentable in India.
As per the Patent Act, for an invention to be patentable, the invention must be a new product or process, involving an inventive step and capable of being made or used in industry. It means the invention to be patentable should be technical in nature and should meet the following criteria –
1. Novelty: The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India.
2. Inventive Step: The invention is not obvious to a person skilled in the art in light of the prior publication/knowledge/ document.
3. Industrially applicable: Invention should possess utility so that it can be made or used in an industry.
A patent application for an invention can be made by any of the following persons either alone or jointly with any other person:
1. The true and first inventor
2.True and first inventor's assignee
3. The legal representative of the deceased true and first inventor or his/her assignee
The Patent Act defines the word “person” as including any natural person, company or association or body of individuals or government body, whether incorporated or not. In the case of a proprietorship firm, the application should be made in the name of the Proprietors. In the case of a partnership firm, the names of all personally responsible partners must be included in the patent application.
An assignee can also be a natural person or other than a legal person such as a registered company, LLP, a Section 8 Company, an educational institute or Government.
It is also important to note that true and first inventor does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India. Th applicant is required to disclose the name, address and nationality of the true and first inventor.
A patent application can be filed electronically using Form-1 along with provisional/complete Specification, with the prescribed fee at the appropriate patent office. Jurisdiction of a patent office is decided based on the following:
1. Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants).
2. Place from where the invention actually originated.
3. Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).
The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli fall under the Mumbai Patent Office jurisdiction.
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh fall under the Delhi Patent Office jurisdiction.
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep fall under the Chennai Patent Office jurisdiction.
Rest of India, the States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands fall under the Kolkata Patent Office jurisdiction.
A patent application is a plea for the grant of a patent for the invention described and claimed by the applicant. An application for this purpose generally comprises of a description of the invention, added with official forms and correspondence relevant to the application. Patent applications are of several types, and each one of them caters to a unique purpose.
The types of a patent application are:
1. Provisional Application
2. Ordinary or Non-Provisional Application
3. Convention Application
4. PCT International Application
5. PCT National Phase Application
6. Patent of Addition
7. Divisional Application
The rest of the article covers these types in detail.
A provisional application, also known as a temporary application, is filed when an invention is under experimentation and isn’t finalized. Moreover, it is a preliminary application which is filed before the patent office for claiming priority, as the Indian Patent Office follows the ‘First to File’ system (known popularly as the First-Come-First-Served-Basis). In technical terms, early filing of an invention will prevent the occurrence of any other related inventions from being designated as prior art to the inventor’s application.
To add more, this type of patent application is filed when an invention requires additional time for development. If an application is supported by a provisional specification, the applicant is necessitated to file a complete specification within twelve months from the date of filing a provisional application. A failure in this part would render the application void.
An application for this purpose must include a brief explanation of the invention and must be drafted in a meticulous manner so as to ensure that the priority rights are secured for the invention.
This type of application is filed if the applicant doesn’t have any priority to claim or if the application is not filed in pursuance of any preceding convention application. It must be supported by a complete specification, the likes of which must depict the invention in detail.
The complete specification can be filed through:
Direct Filing – wherein complete specification is initially filed with the Indian Patent Office without filing any corresponding provisional specification.
Subsequent Filing – wherein complete specification is filed subsequent to the filing of the corresponding provisional specification and claiming priority from the filed provisional specification.
A complete specification entails the following:
2. A preamble to the invention.
3. The technical field of the invention.
4. Background of the invention.
5. Objects of the invention.
6. Statement of the invention.
7. A brief description of the drawings
8. A detailed description of the invention.
A convention application is filed for claiming a priority date based on the same or substantially similar application filed in any of the convention countries. To avail a status of convention, an applicant is required to file an application in the Indian Patent Office within a year from the date of the initial filing of a similar application in the convention country. To re-iterate in simpler terms, a convention application entitles the applicant to claim priority in all the convention countries.
As can be deciphered from its name, a PCT Application is an international application. Though the application does not provide for the grant of an international patent, it paves the way for a streamlined patent application process in many countries at one go. It is governed by the Patent Corporation Treaty and can be validated in up to 142 countries. Filing this application would protect an invention from being replicated in these designated countries.
Unlike other applications, it renders the application a time-frame of 30-31 months to enter into various countries from the international filing date or the priority date, thereby affording the applicant with additional time to access the viability of the invention.
Apart from this, it renders the following other benefits:
1. The application provides an International Search Report citing prior art, which discloses whether or not the invention is novel.
2. It provides an option for requesting an International Preliminary Examination Report, which is a report that contains an option on the patentability of the invention.
3. The aforementioned reports facilitate the applicant to make more informed choices early in the patent process, as he/she can amend the application to deal with any conflicting material. Also, the applicant would receive a glimpse of the patentability of the invention before incurring charges for filing and prosecuting the application in each country.
An applicant from India can file this application at:
1. The Indian Patent Office (IPO), which acts as the receiving office.
2. The International Bureau of WIPO, either after availing a foreign filing permit from IPO or after six weeks and 12 months of filing an application in India.
It is considered essential for an applicant to file a national phase application in each of the country wherein protection is sought for. The time-frame for filing the same is scheduled within 31 months from the priority date or the international filing date, whichever is earlier. The time-limit could be enhanced through National Laws by each member country.
With respect to the National Phase Application, the title, description, abstract and claims as filed in the International Application under PCT shall be considered as the Complete Specification. Apart from this, the regulations applicable for filing and processing an ordinary patent application is also applied here.
This application must be filed if the applicant discovers that he has come across an invention which is a slight modification of the invention which has already been applied for or patented by the applicant. It can only be filed if the invention doesn’t involve a substantial inventive step.
A patent of addition is only granted after the grant of the parent patent, and hence no separate renewal fee should be remitted during the term of the main patent. Moreover, it shall be granted for a term equal to that of the patent for the main invention, and therefore expires along with the main patent. The date of filing here shall be the date on which the application for patent of addition has been filed.
An applicant may choose to divide an application and furnish two or more applications if a particular application claims for more than one invention. The priority date for these applications is similar to that of the parent application.
While filing a patent application, provisional specifications or complete specifications can be filed by the applicant. The following is a list containing all documents that must be filed for obtaining patent registration:
1. Patent application in Form-1.
2. Proof of right to file application from the inventor. The proof of right can either be an endorsement at the end of the application or a separate agreement attached with the patent application.
3. Provisional specifications, if complete specifications are not available.
4. Complete specification in Form-2 within 12 months of filing of provisional specification.
5. Statement and undertaking under Section 8 in Form- 3, if applicable. Form 3 can be filed along with the application or within 6 months from the date of application.
6. Declaration as to inventorship in Form 5 for applications with complete specification or a convention application or a PCT application designating India. Form-5 or Declaration as to inventorship can be filed within one month from the date of filing of application if a request is made to the Controller in Form-4.
7. Power of authority in Form-26, if the patent application is being filed by a Patent Agent. In case a general power of authority, then a self-attested copy of the same can be filed by the Patent Agent or Patent Attorney.
8. Convention Application (under Paris Convention).
9. PCT National Phase Application wherein requirements of Rule 17.1(a or b) or has not been fulfilled.
Note: Priority document must be filed along with the application or before the expiry of eighteen months from the date of priority, to enable the early publication of the application.
10. If the Application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent. However, it is sufficient if the permission from the National Biodiversity Authority is submitted before the grant of the patent.
11. The Application form should also indicate clearly the source of the geographical origin of any biological material used in the specification.
12. All patent applications must bear the signature of the applicant or authorized person or Patent Attorney along with name and date.
13. Provisional or complete specification must be signed by the agent/applicant with the date on the last page of the specification. The drawing sheets attached should also contain the signature of an applicant or his agent in the right-hand bottom corner.