IPR Toolkit - India

Patents

Introduction to Patents

A patent is a grant by the government of exclusive rights in a new, useful and non-obvious invention in exchange for the disclosure of that invention. The rights holder may use the patent to exclude others from making, using, selling or exploiting the invention for a limited period of time. Patents are one of the oldest forms of intellectual property rights. The term "patent" has been in existence since the year 1700, though the world's first exclusive right over an invention is said to have been granted in the year 1421 to Filippo Brunelleschi for an improved method of transporting goods up and down the river Arno in Florence. Brunelleschi obtained the exclusive right to his invention for a term of three years.

In India, the first patent law was passed in the year 1856 and was known as the Act VI of 1856 on Protection of Inventions. This was modified in the year 1859 as Act XV.  The Act was replaced in the year 1872 with the Patents and Designs Protection Act, which was later replaced by the Protection of Inventions Act, 1883. Then in the year 1888, this Act was replaced by the Inventions & Designs Act. In the year 1911, this Act was replaced with the Indian Patents & Designs Act and thereafter with the Patents Act, 1970. The Patents Act, 1970 has been amended in the years 1999, 2002 and 2005.

Presently, the patent system in India is governed by the Patents Act, 1970 as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003 as amended by the Patents (Amendment) Rules, 2006. The latest amendment in the year 2005 was made in order to bring the patent law in India into compliance with the TRIPS Agreement and to introduce patents for drugs, medicines and food products; to remove transitional provision to exclusive marketing rights and to rationalize and reduce the timeline for processing patent applications. The provisions of patentability under Section 3(d) and the new disclosure requirements were introduced under this legislation.

Patent rights are territorial in nature. Thus, a patent obtained in India is not enforceable in another country. Under the Patent Cooperation Treaty (PCT), a person can file a single application to seek protection in all of the contracting parties to the PCT. The process of a PCT application can be divided in two phases: international and national. The international phase starts with the rights holder filing a PCT application in an eligible receiving office or the International Bureau in Geneva. Thereafter, there are steps for international search, publication and preliminary examination. Subsequent to this is the national phase, in which the rights holder has to pay fees and prosecute an application in all the national or regional offices where protection is sought. The procedure for prosecution of a patent application then becomes dependant upon the laws of each contracting party.

Moreover, the Indian patent system also allows Applicants to claim the priority of an earlier filed application in another Paris Convention country. Where a person has made an application for a patent in respect of an invention in a convention country and that person makes an application under the Patent Act, 1970 for a patent within twelve months after the date on which the application in the convention country was made, the priority date of a claim of the complete specification, being a claim based on matter disclosed in the application in the convention country, is the date of making of the basic application.   

Market Entry Planning

It is imperative that applicants file in India as early as possible, as India follows a "first to file" system that gives priority to the first inventor to file an application. This is irrespective of when the applicant plans to commence use of the invention in India. Furthermore, in order to protect its proprietary rights to the invention, the rights holder should have watertight Non-Disclosure Agreements with the recipient party before disclosing any particulars regarding the invention, prior to filing. This will help to bind the recipient party by its contractual obligation to maintain the confidentiality about the invention that is disclosed to it. Moreover, other contractual agreements that define rights between the parties should also be considered.

Who can apply

• Any person claiming to be the true and first inventor;
• Any person being the assignee of a person claiming to be the first and true inventor;
• The legal representative of any deceased person who immediately before his 
  death was entitled to make such an application.

What can be patented

Subject to certain exceptions, any invention that has the following three essential ingredients may be patented:

(i) The invention must be new: The inventor must have invented a product/process that must be original and such an invention must not have ever been used before.

(ii) Must involve an inventive step: This would mean that advancement has been made in the technology of the invention from existing technology and the advancement must not be obvious to a person of ordinary skill in that particular field.

(iii) The invention must be capable of industrial application: the invention must be useful.

What is non-patentable under the Indian patent system

Many types of inventions may be patented. In general, a new product that has been created or any new process for developing a product may be patented. Though the range of things that can be patented is very wide, there are certain exceptions under the Indian patent system. The following is a list of subject matter that cannot be patented in India:

(i) Any purported invention that is against the laws of nature; or

(ii) Any invention that is contrary to public order or morality; or

(iii) Any invention that causes serious prejudice to human, animal or plant life or health or to the environment; or

(iv) Things, which are discovered i.e., which have existed in nature.  
Only things that have been invented are patentable. For example, human genes cannot be patented in the form that they exist in nature. Another example of a non-patentable discovery might relate to a new star; or

(v) Mere discovery of any new property or new use for a known substance or of the 
mere use of a known process, machine or apparatus (unless such known process results in a new invention or employs at least one new reactant); or

(vi) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; or

(vii) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another; or

(viii) A method of horticulture or agriculture; or

(ix) The method of doing a medical treatment for human beings or animals, or the way 
in which the disease in diagnosed; or

(x) Plants and animals in whole or any part thereof including seeds, varieties, and species and essentially biological processes for production or propagation of plants and animals; or

(xi) Mathematical methods and scientific theories. For example, Newton's Law of Motion or the Archimedes principle cannot be patented; or

(xii) A literary, dramatic, musical or artistic work or any other aesthetic creation; or

(xiii) Schemes, rules, and methods that are used for different things; like doing a classical dance, running a business, etc.; or

(xiv) Presentation of information; or

(xv) Topography of integrated circuits; or

(xvi) An invention which in effect is traditional knowledge or which is an aggregation of duplication of known properties of traditionally known components; or

(xvii) Invention relating to atomic energy falling within sub-section (1) of Section 20 of 
the Atomic Energy Act, 1962; or

(xviii) Under the Indian patent law, a computer program is not patentable but a computer program embedded in hardware is patentable;[ i.e. a description of a program is not patentable while a claimed computer readable medium integrated with hardware maybe  patentable.

As another example of what is not considered to be patentable under the Indian legal system, the High Court of Gujarat in Cadila Pharmaceuticals Ltd. v. Instacare Laboratories Pvt. Ltd. {2001(21) PTC 472 (Guj.)} held that "development of a combination medicine by a pharmaceutical company does not amount to patentable invention…."

Procedure for grant of Patent

The patent system in India is on a 'first-to-file' basis. The grant of patent in India normally takes four to five years. The Office of the Controller General of Patents, Designs and Trade Marks is the appropriate office for filing of a patent application in India. The different steps that are involved in the registration process in India are as follows:

• Select a patent agent in India:As the area of patents is highly specialized, it is important that you consult a local IP law firm or a patent agent before proceeding with the filing of the patent application in India. See for example, www.legal500.com and http://www.patentoffice.nic.in/ipr/patent/patent_agent_2006.pdf.
  
• Preparation of the paperwork and filing of application
  
  A patent application should be accompanied by the provisional or complete specification and drawings (if any). If the application is accompanied by the complete specification, the complete specification should include the following:
  - Description of the invention and its operation or use and the method by which it is to be performed; and
  - Disclosure of the best method of performing the invention, which is known to the Applicant and for which he is entitled to claim protection; and   
  - Claims defining the scope of invention for which protection is claimed; and
  - Abstract to provide technical information on the information; and
  - Statement and undertaking regarding foreign filing details in respect of the   same invention; and
  - Declaration as to Inventorship; and
  - Priority document (if it is a convention application); and
  - Power of attorney (if the application is made through a patent agent); and
  - Proof of right to file (if the application is made by the assignee).
  
  There are four patent offices in India, which are located in Mumbai, Kolkatta, Delhi and Chennai. A rights holder can file their patent application in any one of these patent offices, depending on the territorial jurisdiction. The patent law in India allows the Applicant to file a patent application if they have a place of residence or business or a domicile in India. The Applicant must be an Indian national or a national of a Convention country. The   persons who are authorized to file the application are the true and first inventor or his/her assignee or the legal representative of deceased inventor or assignee. Foreign Applicants who do not having a place of business in India are required to file their patent applications through an Indian patent agent.
  
  The Patent office has also started accepting patent applications online. Electronic applications can be filed through the following website:
  https://www.ipindiaonline.gov.in/on%5Fline/.
  
• Publication and Examination of Patent Applications
  
  If the application at the time of filing is accompanied by a provisional specification and not a complete specification then the complete specification has to be filed within twelve months from the date of filing of the application. If the complete specification is not filed within this period, the application is deemed to have been abandoned.
  
  With some exceptions, all of the applications for patent are published in the Patent Office Journal 18 months after the date of filing of the application or the date of priority, whichever is earlier. The exceptions to this are applications that are prejudicial to the defense of India, applications that are abandoned due to non-filing of a complete specification within 12 months after filing a provisional application or applications, which are withdrawn within 15 months of filing the application. The publication of the application in the Patent Office Journal includes the date of application, number of application, name and address of Applicant identifying the application, and an abstract.
  
  Thereafter, within a period of forty-eight months from the date of the filing of the application, the Applicant or any other interested person may request the Registrar to examine the application. If no such request is made then the application will be deemed to have been withdrawn and thereafter cannot be revived. Normally the First Examination Report stating the objections/requirements is communicated to the Applicant or his agent on record within six months from the date of request for examination or date of publication whichever is later. The Applicant has to respond to the First Examination Report by amending the application or the complete specification within 12 months from the date of the First Examination Report. In order to seek any clarification, the Controller General may even appoint a hearing. If the objections as cited in the First Examination Report are not complied with or overcome in the aforesaid period, the application is deemed to be abandoned. If the application along with the complete specification is accepted, the same is published in the journal.
  
• Registration
  
  Where the complete specification of the application has been accepted and no opposition has been filed against it or an opposition has been filed and is decided in favor of the Applicant or the application has been accepted by the Controller General, the Applicant shall make a request in the prescribed form that the patent should be granted to him and thereafter the Controller General shall seal the patent with the seal of the Patent Office and the patent shall be entered in the Register of the Patents. The patent is generally granted after 6 months of the date of the publication.
  
• Pre-grant and Post-grant opposition
  
  If an application for a patent has been published, but a patent has not been granted, any person may, in writing, oppose the same by making a representation to the Controller General. The Controller General shall, if requested by the person who is opposing the patent application, appoint a hearing in the matter and dispose of such representation. If the opposition is decided in favor of the Applicant, the patent will be granted and the patent advertised in the Patent Office Journal. Though this provision exists in the Indian patent system but it may result in unwarranted delay in the grant of patent because of some frivolous opposition that is initiated under this provision. The pre-grant opposition is typically decided within 4 months from the date of notice of opposition. There is no appeal from the order of the Controller General in these matters.
  
  Any interested person can also file a post-grant opposition anytime after the grant of the patent, but before the expiry of a period of one year from the date of publication of grant of a patent in the Patent Office Journal. After the receipt of notice of any such opposition, the Controller General will constitute an Opposition Board. After receiving the recommendations of the Opposition Board and hearing the patentee and the opponent the Controller General will decide whether to maintain, revoke, or amend the patent. The time normally taken to decide the opposition proceedings is about 8 months. The order of the Controller General can be appealed before the Intellectual Property Appellant Board.  
  
• Term of a Patent
  
  The term of a patent is twenty years from the date of the application, irrespective of whether it is filed with provisional or complete specification. To keep the patent valid for the term of 20 years a renewal fee has to be paid every year. If the renewal fee is not paid within the prescribed time, the patent will cease to have effect.
  
• Revocation of Patent
  
  At any time during the life of a patent, the patent might be revoked by the High Court on the petition of the following persons:
  -  Any person interested; or
  -  The Central Government by the Appellate Board; or
  -  On a counter claim by the defendant in a suit of infringement.
  
  The grounds for revocation as prescribed under The Patents Act, 1970 are as follows:
  - Claimed invention is the subject of prior grant; or
  - Patentee not entitled to the Patent; or
  - A person other than the person who is rightfully entitled to it wrongfully obtained the patent; or
  - Subject of a claim is not an invention; or
  - Invention is lacking in novelty with regard to prior knowledge or prior use; or
  - Invention is obvious or does not involve inventive step having regard to prior
  knowledge or prior use; or
  - Invention is not useful; or
  - Invention is not sufficiently described; or
  - Claim not clearly defined and not fairly based; or
  - Patent was obtained by false suggestion or representation; or
  - Subject of claims not a patentable invention; or
  - Claimed invention was secretly used before the priority date; or
  - Failure to disclose information regarding Foreign Application; or
  - Non-compliance of secrecy direction; or
  - Leave to amendment of specification obtained by fraud; or
  - Specification wrongly mentioning or not disclosing geographical origin; or
  - Invention is anticipated by traditional knowledge.
  Furthermore, a patent can also be revoked in public interest when the Central Government of India is of the opinion that a patent or the mode in which it is exercised is mischievous to the State or prejudicial to the public. In such case, the rights holder is given an opportunity to be heard and thereafter, should the decision to revoke remain in effect, a declaration is published in the official gazette and the patent shall be deemed to be revoked.
  The Controller General also has the authority to revoke the patent for "failure to work" the patent. This action for revocation can be initiated by the Central Government or any other interested person after the expiration of two years from the date of the order granting the first compulsory license, on the grounds that the patented invention has not been worked in the territory of India, that reasonable requirements of the public with respect to the patented invention has not been satisfied, or that the patented invention is not available to the public at a reasonably affordable price.
  
• Compulsory Licenses
  
  Under the prevailing Indian patent law, any person, including a current licensee of the patent holder, who is interested in the invention, can file an application with the Controller General for the grant of a compulsory license for a patent. Such an application can be filed after three years from the date of issuance of the patent. The basis on which the application for the compulsory license can be filed are:
  - The reasonable requirements of the public with respect to the patented
  invention have not been satisfied;
  - The patented invention is not available to the public at a reasonably
  affordable price; or
  - The patented invention is not worked in the territory of India.
  By the amendment of 2005, a provision regarding the compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems has been included. This provision is intended to ensure that patented pharmaceutical products may be manufactured and exported to countries having insufficient or no manufacturing capacity in the pharmaceutical sector.
  
• Mailbox Applications
  
  After India became a signatory to the TRIPS Agreement, it incurred an obligation to re-introduce product patents.  India therefore amended its Patent Act, 1970 by The Patents (Amendment) Act, 1999 with effect from January 1, 1995. However, India had a transition period of 10 years to adopt products patent protection.  Through this system, Applicants could file applications for product patents.  However, examination did not start until January 1, 2005. Applications for pharmaceutical products filed between January 1, 1995 and January 1, 2005 are called Mailbox applications. Subject to certain conditions, exclusive marketing rights were provided to the Applicants for a period of 5 years, until the grant of patent, or the rejection of the application, which ever was earlier.  Exclusive Marketing Rights were granted for mailbox applications if the following conditions were fulfilled:
  - Where an invention had been made and before filing such a claim in India, application for the same invention claiming identical substance in a Paris Convention Country has been filed on or after 1st January, 1995 and a patent had been granted on or after the date of making a claim for the substance in India and approval to sell or distribute has been obtained in the other Convention Country on the basis of test done on or after 1st January, 1995.
  - Where an invention had been made in India and before filing such a claim, the Applicant had made an application for patent or after January 1, 1995 for method or process of manufacturing the identical substance and a patent had been granted in India on or after the date of making of the product claim.
  - Marketing approval of the article or substance had been obtained from the appropriate authority in India provided that the Controller, on the basis of the report of the Examiner, had not rejected the application for patent, on the grounds that the invention is not an invention or the invention is an invention on which no patent can be granted.
  The provision relating to mailbox applications has been omitted after January 1, 2005. Applications for Exclusive Marketing Rights are now treated as a request for examination and these applications have been examined accordingly. Subsequent to these applications being examined, they will be treated as normal patent applications. However, the Patent (Amendment) Act 2005 allows generic manufacturers to continue to produce and sell generic copies of products that receive a patent under the mailbox procedure on payment of a "reasonable" royalty to the patent holder.

Infringement and Enforcement Remedies available under the Act

The following acts, when not authorized by the patent owner, constitute infringement under the Indian patent law:

- Manufacturing patented products; or
- Using patented processes; or
- Offering to sell or selling patented products; or
- Using products directly acquired by the patented process for production or business purposes; or
- Importing or exporting patented products or products that are acquired through patented processes.

The rights holder may prevent unauthorized third parties from the acts of making, using, offering for sale, selling, or importing for those purposes, the patented product into India. When the rights holder has the exclusive right over a process, it shall have the right to prevent third parties, who do not have his consent, from the act of using that process, and from the acts of using, offering for sale, selling, or importing for those purposes the product obtained directly by that process in India.

The following acts are not considered to be an infringement under the Indian patent system:

• Any act of making, constructing, using, selling, or importing a patented invention solely for uses reasonably related to the development and submission of information, as is required under any law that regulates the manufacture, construction, use, sale, or import of any product;
• Importation of patented products by any person from a person who is duly authorized under the law to produce and sell or distribute the product.
• In the case of any infringement, the rights holder has the option of initiating a civil action against the infringer.
• Jurisdiction and Venue: The suit for infringement can be initiated either in the District Court or in the High Court depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carries on business.
• Elements of the Complaint: In the Complaint, the rights holder is required to demonstrate that (a) the alleged infringing act infringes the patent of the rights holder; and (b) the unlawful act interfered with the patent holder's rights of exclusive use or caused the rights holder economic loss
• Ex-parte Interim Injunction: Most Indian courts will grant ex-parte interim injunctions. Ex-parte interim injunction is a temporary injunction granted for the course of the trial restraining the infringer from use of the infringing patent, without any notice to the infringer and on the date of the first hearing itself, provided that the rights holder is able to establish its rights before the Court, establish the gravity of the offence and the fact that the violation of its proprietary rights merits immediate consideration.  
• Relief sought in the complaint: The reliefs that can be sought in a complaint include an injunction and damages or an account of profits. The court may also order that the goods that are found to be infringing and materials, whose prominent use is in the creation of the infringing goods, can be seized, forfeited or destroyed.
• Damages: There has been a change in the Indian judicial system in recent times with some of the courts granting damages to the rights holders. However, such cases are still few and far between and the amount of damages has not been substantial.

Provisions under the Customs Laws: Besides the remedies mentioned herein above, there are also certain provisions under the customs law, which prohibit the importation of infringing goods in India. The Customs Authorities have recently promulgated guidelines known as the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, under which the rights holder can record the patents that have been granted to it with the Customs authorities. These guidelines authorize the Customs officials to seize goods infringing the patents of the rights holder at the border without obtaining any orders from the court.  Under these rules, the Customs authorities have initiated a recordation system using which the rights holder may give a notice in writing to the Commissioner of Customs or any other Customs officer authorized by the Commissioner at the port of import of infringing goods requesting the suspension of clearance of goods suspected to be infringing patents of the rights holder. Subsequent to the filing of such notice, the Commissioner is bound to notify the rights holder within the prescribed time regarding the acceptance or rejection of this notice. In case of acceptance of the notice, the normal period of validity of such registration is one year during which assistance will be rendered by the Customs authorities to the rights holder to prohibit the importation of infringing goods at the border. After the grant of this registration the importation of goods that infringe the rights holder patents are deemed to be prohibited, as has been defined under the Customs Act, 1962. The Customs officers have the authority to suspend the clearance of such prohibited goods either at the information received by the rights holder or by initiating suo moto action, provided they have prima facie evidence or reasonable grounds to believe that the imported goods are goods infringing the patents of the rights holder. After the clearance of the suspected goods is suspended the Customs authorities have to inform the rights holder of the same and should the rights holder not execute the requisite bond and join the proceedings against the importer within the prescribed period the Customs authorities will release the suspended goods. These rules also empower the Custom officers to destroy the suspended goods under official supervision or dispose them outside the normal channels of commerce after it has been determined that the goods detained have infringed the patents of the rights holder and that no legal proceeding is pending in relation to such determination. These rules also prohibit the re-exportation of the goods infringing patents in an unaltered state.

Expected Developments

It is expected that the system of electronic prosecution of patent applications will commence shortly in India. The Patents Office is in the process of gearing up for the launch of this system. Moreover, the Patents Office has recently been designated as an International Searching and Examining Authority under the PCT system of filing and is likely to commence accepting applications under this system by June 2008. Furthermore, the Customs authorities are also in the process of upgrading their information technology infrastructure so that they can accept notices from the rights holders electronically.

Patent Legislation and Regulation in India

The Patents Act, 1970 as amended by The Patents (Amendment) Act, 2005
The Patents Rules, 2003 as amended by The Patents (Amendment) Rules, 2006

International Treaties to which India is a signatory

Paris Convention for the protection of Industrial Property
Patent Co-operation Treaty (PCT) 
Budapest Treaty 
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Patents Related Websites

http://www.dipp.nic.in
http://ipindia.nic.in/
http://www.cbec.gov.in/
http://www.wipo.int/trademarks/en/
http://www.uspto.gov

FAQs

1. Do I have to file the complete specification of the invention at the time of filing of the patent application?

No. You can file a patent application with a provisional specification. However the complete specification has to be filed within 12 months of the filing of the patent application, failing which the patent application is deemed to be abandoned.

2.     How do I file for a patent application in India?

The procedure for the registration of the patent is described under the section 'Registration Procedure'

3. What is the filing fee?

The official filing fee for filing one patent application accompanied by provisional/complete specification by a natural person is INR 1,000/-  (approximately USD 23) while for the other than natural person is INR 4,000/- (approximately USD 95). The details of the official filing fees for various kinds of applications can be found at http://www.patentoffice.nic.in/ipr/patent/patents_filing.pdf. The attorney charges for filing the application will depend on the patent agent that you will hire.

4. What are the different types of patent applications under the Indian patent system?

The following are the different types of patent application under the prevailing patent system:
 (i) Ordinary Application
 (ii) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).
 (iii) Divisional Application (in case there are multiple inventions disclosed in the main application).
 (iv) Convention application, claiming priority date on the basis of filing in Convention Countries.
 (v) National Phase Application under PCT.

5. What is the duration of a patent in India?
A patent is valid for 20 years from the date of filing of the patent application in India.
6. What is the Patent Cooperation Treaty (PCT)?
The Patent Cooperation Treaty (PCT) is a multilateral treaty that was concluded in Washington in 1970 and entered into force in 1978. The International Bureau of the World Intellectual Property Organization (WIPO), Geneva, administers it. The PCT facilitates the protection of inventions in any or all of the PCT Contracting States. It provides for the filing of one patent application ("the international application"), with effect in other PCT contracting parties, instead of filing many separate national and/or regional patent applications.
7. Can rectification proceedings be initiated for a patent?
Rectification proceedings can be initiated against a patent by an aggrieved person before the Intellectual Property Appellate Board on any of the following grounds:
- by the absence or omission from the register of any entry;
- by any entry made in the register of patents without sufficient cause;
- by any entry wrongly remaining on the register; or
- by any error or defect in any entry in the register.
The Appellate Board can pass orders for variation or deletion of any entry as it may deem fit.