Introduction

Patent prosecution is a crucial process in intellectual property law, encompassing all the steps involved in securing a patent. The Patents Act, 1970 is the core law that deals with patent applications under India’s filing and regulatory framework. In India, patent prosecution is divided into two main phases: pre-grant prosecution and post-grant prosecution. Each phase consists of several stages, which collectively lead to the eventual grant or rejection of a patent.

This article will provide an in-depth overview of the various stages involved in the patent prosecution process in India.

Indian Patent Prosecution

The patent prosecution process is a formal legal procedure that involves a series of steps for obtaining a patent in India, which starts from filing a patent application to reaching the point of registration.

In India, patent prosecution is broadly divided into two stages:

Pre-Grant Prosecution
Post-Grant Prosecution

The Pre-grant prosecution stage includes the following process:

Filing and Publication
Request for Examination
Search and Examination
Issuance of Examination Report
Response to Examination Report
Subsequent Examination Report or hearing
Pre-grant opposition
Decision of the Controller

The post-grant prosecution stages include:

Post Grant Opposition

Pre-Grant Prosecution

The pre-grant prosecution phase is the initial and more comprehensive part of the patent process. It involves the steps that must be undertaken before a patent is granted. This phase is critical, as it determines whether a patent application will proceed to be granted or rejected.

Filing and Publication

The first step in the patent prosecution process is the filing of a patent application. In India, an applicant can file a patent application at the Indian Patent Office (IPO) in any one of the four jurisdictions: Delhi, Mumbai, Chennai, or Kolkata. The patent application must include a complete specification, which details the invention, and claims that define the scope of the patent for which the Applicant has sought protection.

Once the application is filed, it is assigned a filing date (priority date) and an application number. After filing, the patent application shall not be ordinarily open to the public for 18 months from the date of filing of the application or the priority date of the application, whichever is earlier. However, the applicant may request early publication, in which case the application will be published within one month of the request.

The publication of the application is significant because once the request for publication is filed, it makes the details of the invention publicly available. This is a crucial step, as it marks the beginning of the patent rights, although these rights can only be enforced after the patent is granted.

Request for Examination

An Indian patent application does not undergo examination automatically upon filing. The applicant must formally request the examination of the application within 31 months from the filing date or the priority date of the application, whichever is earlier. Filing the Request for Examination (RFE) is essential, as it triggers the examination process of the application. If the request for examination is not filed within the prescribed period, the application is deemed to be withdrawn by the applicant.

Upon receiving the request, the Patent Office queues the application for examination based on the date of filing the RFE. The examination is conducted to assess the patentability of the invention, which includes determining whether the invention is novel, involves an inventive step, capable of industrial application, falls under eligible subject matter, and more.

Search and Examination

During this stage, the Controller conducts a thorough search of the prior art, which includes any existing patents, publications, or public knowledge that may be relevant to the invention. The objective is to determine whether the invention is novel under Section 2(1)(ja) of the Indian Patents Act, 1970 (hereinafter, “Act”) and inventive in light of the prior art under Section 2(1)(j).

The examination also involves assessing the eligibility of the application, i.e., whether the invention falls under one of the many non-patentable categories of inventions mentioned under Section 3 of the Act.

The Controller also checks whether the claims are clearly defined and within the scope of the invention under Section 10 of the Act.

Issuance of Examination Report

After conducting the examination, the Controller issues an examination report, commonly known as the First Examination Report (FER). The FER contains the findings of the Controller, including any objections or requirements that need to be addressed by the applicant to put the application in order for a grant. The objections may relate to the patentability of the invention, clarity of the claims, sufficiency of the disclosure, definitiveness, or formal issues such as improper format, incorrect filing, or incomplete documentation.

Response to Examination Report

The applicant must respond to the objections raised in the FER within the prescribed time frame of 6 months, may be extended up to 3 months by filing a formal request along with prescribed official fees. The response to the FER can include amendments to the claims, submissions, or clarifications to overcome the objections raised by the Controller in the FER along with revised Forms or any documents required by the Controller.

The applicant must carefully address each objection and provide sufficient justification for why the invention should be granted a patent. Failure to respond within the stipulated time can lead to the application being deemed abandoned.

Subsequent Examination Report or Hearing

After receiving the response from the applicant, the Controller reviews the application again. If the Controller is satisfied with the response and the amendments, the application may proceed to be granted. However, if the objections are not adequately addressed, the Controller may issue a subsequent examination report, requiring further clarifications or amendments. However, issuance of a subsequent examination report is very rare.

In most cases, if the Controller is not satisfied with the submissions made in response to the FER or if any objection is left unaddressed by the Applicant, the Controller issues a hearing notice. During the hearing, the applicant or their representative can present arguments and clarify any remaining issues directly with the Controller, and based on the discussions, a post hearing written submission has to be filed within fifteen days from the date of the hearing and which may be extended up to one month by filing petition.

Pre-Grant Opposition

Before a patent is granted, third parties have the right to file a pre-grant opposition. The opposition can be filed by any person after the publication of the application but before the grant of the patent. There are various grounds for opposition, some of which may include lack of novelty, lack of inventive step, insufficient disclosure, or prior public use of the invention.

The provision of pre-grant opposition ensures that only deserving inventions receive patent protection. The Patent Office considers the opposition and the applicant’s response before making a decision.

Decision of the Controller

After considering the examination reports, responses to the hearing notice, and any opposition proceedings, the Controller makes a final decision on whether to grant the patent. If the Controller is satisfied that the application meets all the requirements imposed by the Act, the patent is granted, and a certificate of grant is issued. If not, the application is rejected, and the reasons for rejection are communicated to the applicant.

Rights of Patentees

Under the Act, a patentee in India is granted various exclusive rights. These rights provide the patent owner with control over the use and commercialization of their invention for a limited duration (20 years from the filing date). The key rights available to a patentee are as follows:

Exclusive Right to Prevent Unauthorized Use
Right to License the Patent
Right to Assign the Patent
Right to Sue for Infringement
Right to Use the Patent
Right to Seek Compensation for Government Use
Right to Surrender the Patent

Duration of Patent and Renewal

In India, the patent duration is for 20 years from the date of filing of an application for both ordinary and standard patents. Post the grant of a patent, a renewal fee has to be paid, starting from the third year up to the 20th year, and this amount is payable before the expiry of each respective year. The patent gets automatically revoked when the renewal fee has not been paid at the appropriate time. The patent gets restored when the payment is made. No action can be taken by the patent holder against any person for infringement of the patent during the period between the revocation of the patent and its restoration.

Post-Grant Prosecution

Once a patent is granted, the post-grant prosecution phase begins. This phase involves managing and defending the granted patent against challenges, as well as making any necessary amendments.

Post-Grant Opposition

Even after a patent is granted, it can still be challenged through post-grant opposition. Any interested party can file a post-grant opposition within 12 months from the date of publication of the grant. The grounds for opposition are the same as those in the pre-grant opposition.

The opposition proceedings may involve multiple rounds of arguments and evidence submissions. The final decision is made by the Controller, who may uphold the patent, amend it, or revoke it based on the findings of the Opposition Board.

Conclusion

Patent prosecution in India is a rigorous process that involves multiple stages, from filing the application to defending the granted patent against challenges. Each stage requires careful attention to detail and a thorough understanding of patent law. By navigating the pre-grant and post-grant prosecution phases effectively, applicants can secure robust patent protection for their inventions. The process, while complex, is essential for ensuring that only deserving inventions receive the exclusive rights conferred by a patent.