Law and Procedure Relating to Patents

Law and Procedure relating to patents in India are primarily governed by the Patents Act, 1970, and the Patents Rules, 2003. These statutes have been amended several times to accommodate changes in technology, economic policy, and international legal frameworks, particularly the TRIPS Agreement under the World Trade Organization (WTO). The patent system in India is designed to encourage innovation by providing inventors with exclusive rights to their inventions for a limited period, in exchange for disclosing their inventions to the public.

Key Aspects of the Patents Act, 1970:

• Patentability Criteria:

For an invention to be patentable in India, it must satisfy certain criteria. It should be novel, involve an inventive step (non-obviousness), and be capable of industrial application. Additionally, it should not fall into categories of inventions that are non-patentable under Section 3 and 4 of the Patents Act.

• Term of Patent:

The term of a patent in India is 20 years from the date of filing of the application, subject to the payment of renewal fees.

• Types of Patent Applications:

There are various types of applications, including provisional applications, complete applications, convention applications (claiming priority from a convention country), PCT international applications, and PCT national phase applications.

• Process of Application:

The patent application process involves several steps, starting from the filing of the application, publication, and request for examination. After examination, the Controller of Patents issues an examination report, to which the applicant must respond. The application will be put in order for grant if it meets all requirements.

• Opposition to Patent:

The Patents Act provides for pre-grant and post-grant opposition procedures, allowing interested parties to challenge the grant of a patent on specified grounds.

• Compulsory Licensing:

Under certain conditions, such as non-availability, non-affordability, or non-working of the patented invention in India, compulsory licenses can be issued to third parties, allowing them to use the invention without the patent holder’s consent.

• Revocation and Surrender:

A patent can be revoked on various grounds, including non-disclosure or wrongful obtaining of the invention. A patentee can also surrender their patent, subject to certain procedures.

Patent Application Procedure:

• Filing:

The first step involves filing a patent application at the Indian Patent Office, which can be a provisional or complete application.

• Publication:

The application is published 18 months after the filing date or priority date, whichever is earlier, making it open to public inspection.

• Examination:

A substantive examination of the application is conducted only after a request for examination is filed within the prescribed period. The examination assesses the patentability of the invention based on novelty, inventive step, and industrial applicability.

• Responses to Objections:

The applicant may need to respond to objections raised in the First Examination Report (FER) by the examiner. This might involve amending claims or arguing against the objections.

• Grant:

If the application meets all patentability requirements, it proceeds to grant. The grant of the patent is published in the Patent Office Journal.

• Opposition:

After publication and before grant, any person can file a pre-grant opposition. Even after the grant, there is a provision for filing a post-grant opposition within one year.