The Indian Patents Act 1970 has been amended by Patents Amendment Act, 2005 and Patent Amendment Rules 2006 have been enforced.
Major procedures of filing a patent application in India
- Request for Examination : It is now possible to file a Request for Examination for pending Patent Applications filed by you or also for Applications filed by somebody else, provided you can prove your interest in such Patent applications. The Request for examination has to be filed within 48 months from the earliest priority date of the application or from the date of filing the application whichever is earlier.
- Convention Country : “Convention Country” now includes a group of countries, union of countries or an inter-governmental organization. This will enable claiming priority from Applications filed under other treaties and conventions, for e.g. European Patent Convention.
- The Concept of “invention” : The definitions of invention have been enlarged to mean “a new product or process involving an inventive step and capable of industrial application”.
- Publication : An Application for Patent in India will be published on expiry of eighteen months from its priority date, or from the date of filing of application which is earlier. Earlier an Application would be published only after acceptance thereof. This will be in line with the PCT and EPO practice. Therefore, only way publication may be avoided is by withdrawing the Application before the expiry of eighteen months from its priority date. A request for publication under sub section (2) of section 11(A) shall be made in Form 9 for early publication.
- Time for placing the Application in order : The time for placing the Application in order for grant has been 6 months from the date of issuance of first examination report. This will again call for a careful re-docketing by Applicants and their Agents to avoid untimely lapse of an Application.
- Publication of all documents : The date of Application, number of application, name and address of the Applicant identifying the application and an abstract will be published on the website of the Indian Patent Office and Official Gazette.
- Opposition : The following two grounds of the opposition and revocation have been added:
(a) Investigating infringements and filing actions for infringement, revocation of patents.
(b) Anticipation of the invention by prior knowledge, oral or otherwise, available within any local or indigenous community in any country. The purpose is to protect traditional knowledge. We expect that the burden or establishing these grounds will be rather heavy.
Pre-grant opposition under Section 25 (1) can be filed by any person at any time before the grant of the Patent (i.e. in pending application) without any fee.
Post grant opposition under Section 25(2) can be filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any interested person may give notice of opposition to the Controller of Patents on Form-7 along with prescribed official fee.
- Restoration : The request for Restoration of lapsed patents can be filed within a period of eighteen months from the date on which the patent ceased to have effect. Statement and Evidence for support of the failure of renewal fees has to be filed on Form 15 along with prescribed official fee.
- Reversal of burden of proof : In special cases where the alleged infringement is for a process for the manufacture of a new product, the burden of proof may be on the defendant to establish that its process does not constitute an infringement. Hitherto, the burden of proof on all classes of infringement cases was always on the plaintiff.
- Term of Patent : The term of the Patent is now twenty years from the date of filing of the application in Paris Convention and in the International application the term starts from the International filing date.
Statement regarding the working of the patent Invention on commercial working scale in India Under Section 146(2)
The statement regarding the working of the patented invention has to be furnished by every patentee and every license on Form 27 in respect of every calendar year within three months of the end of each year.
- Minimum information and documents for filing a Patent Application in India-
(a) Name, address and nationality of the Applicant(s) and the Inventor(s).
(b) Complete specification in English language including drawings (if any).
(c) Particulars of the priority to be claimed such as the date of filing and the Application number of the basic Application. (Certified/verified English translation of priority document).
(d) For PCT Applications the International filing date and number and the date of filing and the Application number of the basic Application.
(e) Sequence listing (if any)
(f) Proof of right
(g) Power of Attorney
(h) Details of corresponding foreign Applications under Section 8 of the Indian Patents Act, 1970
Information Regarding Entry into the National Phase in India of an International PCT Application.
When does your Patent Application enter into National Phase of India as PCT
- How Does the National Phase Start?
The national phase starts only if the Applicant performs certain Acts, either before the expiration of a certain time limit or together with an express request that it start earlier. The Applicant should not expect any notification inviting him to perform those Acts (though in some designated / elected Offices, he may receive such invitations). It is his sole responsibility to perform them in due time, even though, for example, the international search report or, if Applicable, the international preliminary examination report is not yet available.
- The Time Limit for Entering the National Phase is 31 Months from the Earliest Priority Date.
ACTS to be Performed for Entry in to the National Phase
An Applicant desirous of entering the Indian national phase before DO/IN or EO/IN is required to perform certain Acts within the time limit Applicable for entry into the national phase [under PTC Article 22 or Article 39(1)]. We have used the sentence “performance of certain Acts” quite often above; the actual meaning of the same is meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (a) basic requirements and (b) additional special requirements to be complied with by the Applicant in connection with the national phase.
- Additional special requirements
Under the said additional special requirements (PCT Rule 51bis), no designated Office is to require before the expiration of the applicable time limit for entering the national phase, the performance of acts other than those referred to in Article 22, namely the payment of national fee, furnishing of a translation and, in exceptional cases, the furnishing of a copy of the international application, and indication of the name and address of the inventor. All other requirements of the national law are referred as “special requirements” and they may be complied with once national processing has started. As per DO/IN or EO/IN the special requirements of the Office are as follows:
(a) Name and address of the inventor if they have not furnished in the “Request” part of the international Application,
(b) Instrument of assignment or transfer where the Applicant is not the inventor,
(c) Document evidencing a change of name of the Applicant if the change occurred after the international filing date has not been reflected in a notification
form the International Bureau (From PCT/IB/306),
(d) Declaration of Inventorship by the Applicant,
(e) Statement regarding corresponding foreign Applications in countries, Under Section 8.
(f) Power of attorney if an agent is appointed,
(g) Address for service in India ( but no representation by an agent is required),
(h) Verification of translation, and
(i) International Application or translation to be furnished two copies.
(j) PCT/IB/304, Notification concerning transmittal of priority document or certified copy of priority document.
- For obtaining copies of the required documents for filing new PCT Application in India kindly send us an email at email@example.com