A patent is a type of intellectual property right (IPR) that gives its owner, the legal right to exclude others from making, using, or selling, offering for sale or importing the patented invention in the territory where patent is granted. Patent rights are granted for a limited period of time, generally 20 years from the date of filing application. As provided in, Section 2(1)(j), an invention must fulfil certain requirements known as conditions of patentability, such as, novelty, inventive step and industrial applicability.
Section 6 of the Indian Patents Act 1970, prescribes for the person who are entitled to file for patents, any person who is a first and true inventor of an invention, by any person being the assignee of the person claiming to be true and first inventor of the invention, by legal representative of any deceased person who immediately before his death was entitled to make such an application can file for patent.
A. Steps to register a Patent
- Filing a Patent Application
In India, the patent registration process starts with filing of patent application in the respective patent office branch. Section 7, dealing with form of application requires every application for a patent to be made for one invention only. In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a patent specification. The Patent Specification, thus, forms a crucial part of the Patent Application. It is mandatory on the part of an applicant to disclose fully and particularly various features constituting the invention. The specification may be filed either as a provisional or as a complete specification.
- Publication of Application
Section 11A(1) provides that no application for patents shall ordinarily be open to the public before expiry of eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier. Every application for patent shall be published on expiry of the period specified in sub-section (1) except those applications in which;
a. secrecy direction is imposed under Section 35;
b. application has been abandoned under section 9(1);
c. application has been withdrawn three months prior as specified under section 11A(3).
The publication of a patent application is an opportunity for the public or any third party to put forward any opposition with respect to the grant of patent. The opposition filed after publication of application and before grant of a patent is called as pre-grant opposition.
- Examination of Application
After publication, the application is examined by the examiner of patents and first statement of objections is sent to the applicant, to be replied within 6 months from the date of issuance. There may be a hearing also before patent is granted. After examination, the patent is granted.
- Grant of Patent
According to Section 43(1) of the Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register, where an application for a patent has been found to be in order for grant of the patent and either:
(a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or
(b) the application has not been found to be in contravention of any of the provisions of this Act,
Further, Section 43(2), specifies that on the grant of patent, controller shall publish the fact that patent has been granted and thereupon it is open for public inspection.
- Renewal of the Patent
Under section 53, the term of every patent granted, shall be twenty years from the date of filing of the application for the patent. Rule 80 requires that to keep a patent in force, the renewal fees specified in the First Schedule should be paid at the expiration of the second year from the date of the patent or of any succeeding year and the same should be remitted to the patent office before the expiration of the second or the succeeding year. The annual renewal fees payable in respect of two or more years may be paid in advance.
Opposition to the Patent
The Indian Patents Act 1970 provides two types of opposition, “pre-grant and post-grant” opposition, which allow third parties flexibility to contest the validity of a patent. There are various grounds mentioned in the Act, on the basis of which a patent application may be opposed. Pre-grant opposition is the first opportunity for the opponent to challenge grant of the patent.
Once the application is published, it is kept open for a particular period of time for any opposition. The opposition of a patent that takes place before grant of the patent but after publication is called as “Pre-grant opposition”. There are various grounds mentioned in the Act, on the basis of which a patent application may be opposed. Pre-grant opposition is the first opportunity for the opponent to challenge grant of the patent.
However, even after grant of the patent, the patent is kept open for one year for any opposition called as “post-grant opposition”. The patent may be opposed within 12 months from the date of publication of the grant of the patent. There can be various grounds on the basis of which the application can be opposed. The main purpose of the opposition proceedings is to give opponents the opportunity to challenge the validity before as well as after grant of the patent.
Pre-grant Opposition
Under, Section 25(1), where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent. This opposition is called as Pre-grant opposition and it can be filed under certain grounds, which are as follows:
- wrongfully obtained the invention or any part thereof
- anticipation by prior publication, anticipation by prior date, prior claiming in India
- anticipation by prior claiming in India
- public knowledge or public use in India before the priority date
- invention is obvious and lack inventive step
- subject of any claim of the complete specification is not an invention
- specification does not clearly specify the invention, the method of invention
- providing materially false information by the applicant
- application for patent not filed within 12 months of filing the first application in a convention country
- non-disclosure or wrong information about the source of biological matter and
- invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
Post Grant Opposition
Post-grant Opposition can be filed by any “person interested” within one year from the date of publication of the grant of a patent, as laid down in Section 25(2) of the aforesaid Act. A post-grant opposition can be filed on a number of grounds as specified under Section 25(2)(a) to (k), such as:
- wrongfully obtained the invention or any part thereof
- anticipation by prior publication, anticipation by prior date
- anticipation by prior claiming in India
- public knowledge or public use in India before the priority date
- invention is obvious and lack inventive step
- subject of any claim of the complete specification is not an invention
- specification does not clearly specify the invention, the method of invention
- providing materially false information by the applicant
- application for patent not filed within 12 months of filing the first application in a convention country
- non-disclosure or wrong information about the source of biological matter
- invention anticipated with regard to traditional knowledge of any community, anywhere in the world
On receiving the notice of opposition (post-grant opposition), the Controller shall constitute an “Opposition Board” to deal with the opposition proceedings. The board consists of such officers as the Controller may determine and refer such notice of opposition along with the documents to that Board for examination. The board examines the opposition proceedings and submits of its recommendations to the Controller. Every Opposition Board shall conduct the examination in accordance with prescribed procedures as mentioned in the Act.
Author: Yashwi Singh, K.L.E Society’s Law College, Bengaluru
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