Patent Support in India: Search, Filing and Examination Reply

What Is a Patent?

A patent is a statutory right granted by the government to an inventor, or the person to whom the inventor has assigned the invention, for a limited period. In return for disclosing the invention to the public, the patentee gets the exclusive right to make, use, sell or import the invention in India, and to stop others from doing so without permission. Patents in India are governed by the Patents Act, 1970 and the Patents Rules, 2003, and are examined and granted by the Indian Patent Office, which functions under the Controller General of Patents, Designs and Trade Marks. A patent lasts for twenty years from the date of filing, subject to the payment of annual renewal fees.

Patents are the most technical of the intellectual property rights. The invention has to be described in a written specification that is precise enough to be reproduced by a skilled person, and the claims at the end define exactly what is protected. Because a patent cannot be granted for something already known, timing and secrecy matter: an invention that is published, sold or publicly shown before filing can lose its novelty.

What Can Be Patented?

An invention is patentable if it meets four conditions:

• Novelty: it is new, and has not been published or used anywhere in the world before the date of filing.
• Inventive step: it is not obvious to a person skilled in the field, given what is already known.
• Industrial application: it can be made or used in some kind of industry.
• Not excluded: it does not fall within the categories that Sections 3 and 4 of the Act exclude.

The excluded categories include mere discoveries, scientific principles and abstract theories, mathematical and business methods, computer programmes per se, algorithms, methods of agriculture, methods of treatment of humans and animals, plants and animals in whole or in part, and inventions that are frivolous or contrary to law or public order. Software and business inventions are often debated: a computer-related invention can be patentable when it has a technical effect or technical contribution beyond the programme itself, but it needs careful drafting. We assess these cases specifically.

The Patent Journey in India

1. Invention disclosure and patentability assessment: understanding the invention, the problem solved and what is new.
2. Prior art search: a search of patent and non-patent literature to see whether the invention is likely to be novel and inventive.
3. Provisional or complete application: a provisional application secures a filing date for an invention that is still being developed, and the complete specification has to be filed within twelve months, while a complete application can be filed straight away.
4. Publication: the application is generally published after eighteen months from the filing or priority date, and early publication can be requested.
5. Request for examination: the applicant has to request examination within the time the Rules allow, and startups, small entities and certain applicants can request expedited examination.
6. First examination report (FER): the examiner raises objections, to which the applicant replies within the time prescribed, with amendments and arguments, and a hearing may follow.
7. Pre-grant and post-grant opposition: third parties can oppose the application before grant, and within one year after the grant.
8. Grant and renewal: when the application is in order, the patent is granted, and renewal fees have to be paid every year to keep it in force.

The grant of a patent commonly takes several years from filing. Time limits and fees are revised in the Rules from time to time, so we confirm the current position for each stage.

Filing Abroad

A patent is territorial, so an Indian patent gives no rights outside India. If you want protection abroad, you can file in each country directly, or use the Patent Cooperation Treaty (PCT), under which one international application can be filed, usually within twelve months of the first filing, and later proceeds into the national phase in the countries you choose. The Indian Patent Office can act as a receiving office for PCT applications. Foreign filing involves cost and deadlines, and we help you to plan it, but local patent attorneys in each country handle the filing there.

What Our Patent Support Service Includes

• An initial confidential discussion of the invention and a preliminary patentability assessment.
• Coordination of a prior art search through a patent professional.
• Support in preparing the invention disclosure and drawings, and coordination with a registered patent agent for the drafting of the provisional or complete specification and claims.
• Preparation of the application forms, including the declaration of inventorship, the statement on foreign filings, the assignment from the inventors to the applicant and the power of attorney.
• Filing with the Indian Patent Office, including with the benefit of reduced fees for startups, small entities or individuals, where eligible.
• Docketing and tracking: the dates for publication, request for examination, reply to the first examination report and renewal fees.
• Support with the replies to the examination report and hearings, through a registered patent agent or advocate.
• Planning for foreign filing under the PCT.

How the Process Works

We recommend that you speak to us before you disclose the invention publicly, sell it or show it at an exhibition, and that you sign a confidentiality agreement with anyone who needs to know about it. We start with a confidential call and a short disclosure form. After the search and assessment, we advise whether to file a provisional or a complete application, and we coordinate the drafting with a registered patent agent. After filing, we track the dates and keep you informed. Each stage involves the Patent Office and the examiner, and the timeline depends on the Office. Because the outcome depends on the invention and on the examiner, we do not promise that a patent will be granted.

Important Considerations

• A patent is granted by the Patent Office. We cannot guarantee that any application will be granted, or its scope.
• Drafting of specifications and claims, and appearance before the Patent Office, are done by registered patent agents or advocates. We coordinate this work.
• Public disclosure before filing can destroy novelty, with very limited exceptions. Please do not publish or sell before filing.
• Patents expire after twenty years from filing, and they lapse if annual fees are not paid on time.
• Enforcement of a patent through the courts, and opposition proceedings, are separate and need an advocate.