Process of Patenting:

In India, the process of granting a patent is a lengthy procedure that may take anywhere from 3-4
years or more. The major steps involved in this process are:
1. Prior art search,

2. Choice of Application to be Filed,

3. Patent Application Forms,

4. Jurisdiction of Filing Patent Application,

5. Publication,

6. Pre-grant Opposition,

7. Examination,

8. Grant of a Patent,

9. Validity of Patent Protection,

10. Post-grant Opposition.

Some major steps involved in this process are listed in the following figure.

1. Prior Art Search:

Before an inventor embarks upon the patent filing process, he has to ensure that his invention
is ‘novel’ as per the criterion for the grant of a patent. For this, he has to check whether or not
his intentional ready exists in the public domain. For this, he needs to read patent documents
and Non-Patent Literature (NPL), scientific journals/reports/magazines, etc. The information
lying in the public domain in any form, either before the filing of the patent application or the
priority date of the patent application claiming the invention, is termed as Prior Art.
Conducting a prior art search before filing the patent has advantages as it averts infringement,
tracks research and development, and provides access to detailed information on the invention. The
prior art search is carried out on the parameters such as novelty, patentability, state of the art,
infringement, validity, and freedom to operate. The commonly used databases for prior art search
fall into two categories: Patents Databases and NPL.

Patents’ Databases:

Indian Patent Advanced Search System (InPASS-

http://ipindiaservices.gov.in/publicsearch/).

Patent scope (WIPO-https://www.wipo.int/patentscope/en/).

Espacenet (EU-https://worldwide.espacenet.com/patent/).

USPTO (USA-https://www.uspto.gov/).

Google Patents Advanced Search (https://patents.google.com/advanced).

Orbit Intelligence (https://www.questel.com/business-intelligence-

software/ orbit-intelligence/).

Derwent Innovation (https://clarivate.com/derwent/solutions/derwent-innovation/).

PROQUEST (https://about.proquest.com/search/?searchKeyword=patent+).

Non-Patent Literature (NPL):

Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopedias,

Journals (IEEE, Research Gate, Springer, Wiley Online Library, etc.), Dissertations, NCBI’s
Pub Med, Conference Proceedings, Technical Reports, Public Conferences, etc.

Industry/trade publications: Industry reviews and public disclosures (Social media,

YouTube, Books, Magazines, Datasheets, Blueprints, etc.).

Others: News papers, Websites, Technology blogs, Researchers’ websites, etc.

Although the majority of NPL data is available freely on the public forum, some of the journals
are paid and can be accessed after paying the subscription. Major Patent Office’s such as the
United States Patent and Trademark Office’s (USPTO), European Patent Office (EPO), Japan
Patent Office (JPO), etc. are maintaining in-house NPL databases to make patents examination
more effective.
 2. Choice of Application to be Filed - Once a decision has been made to patent the invention,
the next step is, what kind of application needs to be filed i.e. provisional patent application or
complete (Final) patent application - generally, the provisional patent application is preferred
for the following reasons:
It is cheaper, takes less time, and involves fewer formalities.

Any improvements made in the invention after the filing of the provisional application can be
included in the final application. In other words, the provisional application does not require
complete specifications of the inventions. The application can be filed even though some data is
yet to be collected from pending experiments.

A provisional application allows you to secure a priority date for the patent applied.

However, it is mandatory to file the complete patent application within one year of the filing
of the provisional application; otherwise, the application stands rejected.

3. Patent Application Forms:

As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and
sub rule (1) of rule 20, the application for the grant of patent is filed using Form-1 and Form-2.

The information sought in Form-1 is general in nature i.e. Title of Application, Names of
Applicant(s) and Inventor(s), Type of Application (Ordinary, Convention, PCT-NP(PCT-
National Phase), Divisional, Patent of Addition, etc.).

Whereas Form-2 seeks technical information and whether to file the provisional application or
complete the application.

For ‘Provisional Application’, only ‘Description of the Invention’ and the ‘Abstract’ is to be
furnished. Whereas, ‘Complete Application’ requires ‘Description of the Invention’,
‘Abstract’, ‘Claims’ and the manner in which invention has to be per- formed.

The ‘Claims’ of the patent are a very crucial part of the specifications because they define the
actual boundary of the invention.

‘Claims’ specify what is actually claimed by the invention and what is being sought to be
protected. It clearly describes what the patent does and does not cover.

The Claims are usually expressed as a declaration of technical particulars articulated in legal
terms.
 Claims can be classified in to two types
a) Independent Claims (stand alone claim) and
b) Dependent Claims (dependent on independent claim).

The Claims must be drafted precisely and carefully in order to seek patent protection and also
to protect the invention against potential infringers.

4. Jurisdiction of Filing Patent Application

India has four offices for filing patent applications (Refer the following table).

The applications can be filed only in one of the offices based on the applicant’s residence or
domicile or place of business or origin of the invention. These are termed as jurisdictions
to file patents.

Region/Office Territorial Jurisdiction

West Region: Patent The States of Maharashtra, Gujarat, Madhya Pradesh,
Office Branch, Mumbai Goa and Chhattisgarh and the Union and the Territories of
Daman and Diu & Dadra and Nagar Haveli
South Region :Patent The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu,
Office Branch, Chennai Telangana and the Union and the Territories of Pondicherry and
Lakshadweep
North Region :Patent The States of Haryana, Himachal Pradesh, Punjab, Rajasthan,
Office Branch, New Delhi Uttar Pradesh, Utarakhand, Delhi and the Union Territory of
Chandigarh, Jammu and Kashmir and
Ladakh.
Patent Office, Kolkata The rest of India.

For a foreign applicant, the address for service in India or place of business of his patent agent
determines the appropriate Patent Office for filing a patent application.

In the case of joint applications, all the applicants are best owed with equal rights and
consideration.

5. Publication:

Once the patent application has been filed at the Regional Patent Office, the patent
application is kept secret for 18 months in the Patent Office.

After the expiry of 18months (from the date of filing of the application or the priority claimed
 date, whichever is earlier), the application is published in the Official Journal of Patent
Office (http://www.ipindia.nic.in/journalpatents.htm).

The purpose of publishing the application is to inform the public about the invention.
The publication of an application is a mandatory step.

6. Pre-grant Opposition:

If anybody has an objection to the invention claimed in the patent application, he can
challenge the application by approaching the Controller of Patents within 6 months from the
date of publication. It is termed as Pre-grant Opposition.

Depending on the outcome of the case, the patent application may be rejected or
recommended for the next step, i.e. patent examination.

Although the patent application is kept secret for 18 months, under special circum-
stances, this period can be reduced when the patentee (A person/Organization who
owns the patent (granted))/applicant plans to sell or license the patent or seek an
investor.

For this, the applicant has to fill a Form-9 and submit it to the Controller General.

7. Examination:

Patent examination is a critical step in the process of grant of a patent. All the important criteria
(novel, inventive step, etc.) are scrutinized by the professionals depending on the content of
the invention.

Usually, the examiner raises certain queries/doubts which need to be addressed by the
inventors. Once the examiner is satisfied with the answers received from the inventors, the
application is recommended for the grant of a patent.

It is pertinent to mention that a patent application is not examined automatically after

clearing the publication stage.

The applicant or his representative has to make a request for examination of the patent by
filing Form-18 A and submitting the same within 48 months from the date of filing of the
application.

8. Grant of a Patent:
 After fulfilling all the requirements for the grant of a patent, including all objec- tions/queries
raised by the ‘Patent Examiner’ and the public at large, the patent is granted to the
applicant.

The granted patent is published in the Official Journal of the Patent Office.

This journal is published every Friday and contains information related to patent applications
published under section (u/s) 11A, post-grant publication, restoration of patent, notifications,
list of non-working patents and public notices issued by the Patent Office.

9. Validity of Patent Protection:

The patent protection is granted to an applicant for a limited period, generally 20 years,
starting from the date of filing of the application.

Once a patent is granted for an invention in India, the next vital step is to ensure that it is
renewed annually by paying Patent Renewal Fee as per Section 53, Rule 80 of the Indian
Patents Act, till the expiry of the patent grant period. Non-payment of Patent Renewal Fee
might result in the cancellation of the patent.

In some countries, patent protection may be extended beyond 20 years. The ex- tension
aims to compensate for the time expended on the administrative approval procedure
before products can be put on the market. The time taken for this procedure means that
the patent owner may sometimes not be able to benefit from his right for a considerable
period after the grant of the patent.

10. Post-grant Opposition: Once the patent has been granted by the Patent Office, it still can
be challenged by anyone within one year from the date of publication of the grant of the
patent. The granted patent can be challenged either via a Patent Office or in a Court of Law.
These bodies may invalidate or revoke a patent upon a successful challenge by the interested party on the
grounds mentioned below:

 The applicant for the patent wrongfully obtained the invention or any part of the
invention.

 The invention claimed has been published before the priority date.

 The invention claimed was publicly known/ used before the priority date.

 The invention claimed is obvious and does not involve an inventive step.
 The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.

 The details/ specifications of the invention do not sufficiently and clearly

describe the invention.
Commercialization of a Patent:
The patent owner may grant permission to an individual/organization/industry to make,
use, and sell his patented invention. This takes place according to agreed terms and
conditions between the involving parties.

A patent owner may grant a license to a third party for the reasons mentioned below:

– The patent owner has a decent job (e.g., university professor) and has no
desire or aptitude to exploit the patent on his own.
– The patent owner may not have the necessary manufacturing facilities.
– The manufacturing facility is not able to meet the market demand.
– The patent owner wishes to concentrate on one geographic market; for
other geographical markets, he may choose to license the patent rights.

Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the
exclusive rights to use the patented invention.

Only the patentee has the right to license or deal with the patent for any deliberations.
Although the validity of the granted patent is for 20 years (from the date of filing a
patent application), the patentee is required to furnish information (Form- 27) annually
relating to the commercialization/selling of the patent. It is called as ’Working/Licensing
of the Patent’.

The licensing of a patent can be exclusive or non-exclusive.

In an Exclusive Licence, the patent is sold to only one individual/organization for a fixed
time period. During this time period, no other person or entity can exploit the relevant
IP except the named licensee.

In a Non-Exclusive Licence, a patentee can sell his patent rights to as many

individuals/parties as he likes.

If the patentee is not able to commercialize his patent within three years from the date of the
grant of a patent, any person may submit an application to the Controller of Patents for the
grant of Compulsory Licensing (of the patent), subject to the fulfillment of the following
conditions:

– Reasonable requirements of the public concerning the patented invention have not been
 satisfied.
– The patented invention is not available to the public at a reasonable price.
– The patented invention is not worked in the territory of India.

Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and file them without
assistance from a patent attorney.

However, given the complexity of patent documents, it is advisable to seek legal assistance
from a patent attorney/agent when drafting a patent application.

Furthermore, the legislation of many countries requires that an applicant, whose ordinary
residence or principal place of business is outside the country, be represented by an
attorney or agent qualified in the country (which usually means an agent or attorney who
resides and practices in that country).
Can a Worldwide Patent be Obtained
There is no such term as ‘Universal Patent’ or ‘World Patent’ or ‘International Patent’ as
the patent rights are territorial.

An application for a patent must be filed with a Patent Office of the country in which one
wishes to seek patent protection. Unfortunately, this option becomes laborious,
cumbersome, time consuming and expensive if one wishes to file a patent application in
many countries.

To ease out this issue, many Regional Offices have been established which receive
patentapplicationsonbehalfofagroupofnationse.g.EuropeanPatentOfficeand African
Regional Intellectual Property Organization.

A single application is sufficient to cover many nations that are members of a particular regional
office/organization.

However, if one wishes to seek patent protection in several countries worldwide, it is

preferred to file an international patent under the Patent Cooperation Treaty (PCT).

The only condition is that the applicant’s country should be a member of PCT. India,
along with over 190 nations, is a member of PCT.

Do I Need First to File a Patent in India

Yes, in general, Indian residents are required to file the patent application first in India.
Subsequently, they may file for patent protection in other countries. However, prior approval is
needed from the Patent Office. This approval can be waived off under the following circumstances:

The applicant is not an Indian resident.

If 6 weeks have expired since the patent application was filed in India by an Indian
resident.

If two or more inventors are working on an invention in a foreign country and one of the
inventors is an Indian resident. The invention does not have a potential market in India, and
hence the Indian resident seeks Foreign Filing Permission (FFP) from an Indian Patent
Office.

In case of international collaboration, if one part of the invention originated in India and the
inventor is an Indian resident, he has to seek permission to file the patent outside India.

If the invention is related to defense or atomic energy or utility model, the inventor(s) need to
seek permission from the Indian Patent Office because inventions related to these domains
are not the subject matter of patentability in India.
Patent Related Forms:
There are over 30 patent-related forms. Some of Important Patent Application Forms are mentioned
below.

Form Title of Form

No.
1 Application for a grant of a patent
2 Provisional/Complete specifications
7 Notice of opposition on grant of a patent
7A For filing a representation opposing grant of a patent
17 Application for compulsory license
18 Request for examination of the application for patent
21 Request for termination of compulsory license
22 Application for registration of patent agent
27 Statement regarding the working of the patented invention non a
commercial scale in India
30 Miscellaneous form to be used when no other form is prescribed

Fee Structure
As per the Patent Act, 1970, and The Patents Rules (1972), the requisite fee has been specified
based on the type of form/s to be submitted to the Office (See the Table). Electronically filed
applications are 10% cheaper than physical filing.

Item Natural Small Entity Others Alone or

Per- Alone or with with Natural Per-
son/Startup Natural Per- son/Startup/Small
(Rupees) son/Startup Entity (Rupees)
(Rupees)
Provisional/Complete 1,600 4,000 8,000
Specifications
Request for Early 2,500 6,250 12,500
Publication
Request for Examination 4,000 10,000 20,000
Express Request for 5,600 14,000 28,000
Examination
Renewal Fees (Annually)
3rd to 6th Year 800 2,000 4,000
6thto10thYear 2,400 6,000 12,000
11thto15thYear 4,800 12,000 24,000
16thto20thYear 8,000 20,000 40,000

Types of Patent Applications:

Provisional Application- A patent application filed when the invention is not fully finalized and
some part of the invention is still under experimentation. Such type of application helps to
obtain the priority date for the invention.

Ordinary Application-A patent application filed with complete specifications and claims but
without claiming any priority date.

PCT Application - An international application filed in accordance with PCT. A single

application can be filed to seek patent protection and claim priority in all the member
countries of PCT.

Divisional Application-When an application claims more than one invention, the applicant
on his own or to meet the official objection on the ground of plurality may divide the
application and file two or more applications. This application divided out of the parent
one is known as a Divisional Application. The priority date for all the divisional
applications will be the same as that of the main (the Parent) Application (Ante-dating).
 Patent of Addition Application-When an invention is a slight modification of the earlier
invention for which the patentee has already applied for or has obtained a patent, the applicant
can go for ’Patent of Addition’, if the modification in the invention is new. Benefit - There is no
need to pay a separate renewal fee for the ’Patent of Addition’, during the term of the main
patent. It expires along with the main patent.

Convention Application-If a patent application has been filed in the Indian Patent Office,
and the applicant wishes to file the same invention in the one or more Convention
countries (e.g., Paris Convention) by claiming the same priority date on which the
application was filed in India, such an application is known as Convention Application. The
applicant has to file Convention Application within12 months from the date of filing in
India to claim the same priority date.
Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of patenting, as listed in following table.

Sl.No. Term Definition

1 Inventor Creator of an invention
2 Applicant Organization/individual/industry that files a patent
Application or applies for a patent
3 Patentee A person/organization who owns the patent(granted)
4 Licensee Organization/individual/industry which obtains a li-
cense of the patent from the Patentee for
commercialization purpose
5 Assignee A person in whose name patent has been assigned
legally
6 In force The applicant is paying the annuity(renewal fee)for
The patent to keep it alive(Active Patent)
7 Working of a Patent The selling of a patent to an individual/party for
commercial exploitation is called the working of a patent
8 Patent Specification Written description of the invention and the way of
representation and process of making and using the
same
9 Priority Right A time-limited right, activated by the first filing of an
Application for a patent
10 Priority Date The claimed date on which the first application for
the invention is filed
11 Patent Claims The scope of the protection conferred by a patent,
or the protection sought in a patent application. The
purpose of the claims is to define which subject matter
Is protected by the patent
12 National Phase Application An application filed to obtain patents in different
countries simultaneously based on a single
International/PCT application
13 Patent Revocation Cancellation of the patent due to certain reasons,
such as lack of patentability or wrong fully obtaining
A patent
14 Restoration of Patent Once a patent has ceased(e.g., due to non-payment of
the fee), it can be restored within a permitted period
by paying the requisite fee

National Bodies Dealing with Patent Affairs:

There are many departments/organizations/bodies dealing with various aspects of
patents, namely:
1. The Indian Patent Office (IPO): The Office of the Controller General of Patents, Designs
and Trade Marks generally known as the Indian Patent Office, is an agency under the
Department for Promotion of Industry and Internal Trade which administers the Indian
law of Patents, Designs and Trade Marks.

2. Department for Promotion for Industry and Internal Trade (DPIIT): DPIIT, earlier
known as the Department of Industrial Policy and Promotion (DIPP), under the Ministry of
Commerce and Industry, Govt. of India, is the apex IP body. It came into existence in 1995
and is the main body for regulating and administering the industrial sector.

3. Technology Information, Forecasting and Assessment Council(TIFAC): The

importance of undertaking technology forecasting and assessment studies on a systematic
and continuing basis was highlighted in the Government of India’s Technology Policy
Statement (TPS) of 1983. Therefore in 1985, TIFAC was established as an autonomous
body, registered as a Society in 1988, under the Department of Science and Technology. It is
an important cog in filling a critical gap in the overall Science and Technology system of
India. Its mission is to assess the state-of-art of technologies and set directions for future
technological developments in India in important socio-economic sectors.

4. National Research Development Corporation (NRDC): NRDC, an enterprise of

Department of Scientific & Industrial Research(DSIR), Govt. of India, was set up in 1953
 with a mandate to develop, promote and transfer/commercialize IP and technologies
emanating from Higher Education Institutes (HEIs), R&D re- search
laboratories/institutions and Public Sector Undertakings(PSUs). NRDC has a repository of
2500 Indian technologies, filed over 1700 Patents and transferred about 5000 technologies
in different sectors in India. It has also created a technology data bank
(http://fccollc.com/nrdclive/) containing information regarding technologies available in
various fields, such as electrical & electronics, mechanical, coil, mining, biotechnology,
healthcare, leather, etc.
Utility Models:
In many cases, a new invention involves an incremental improvement over the existing
products, but this technical improvement is not sufficient enough to pass the stringent
criterion of ‘Novelty’ and ‘Non-obviousness’ set aside for the grant of a patent. Such small
innovations can still be legally protected in some countries and termed as ‘Utility Models’ or
‘Petty Patents’ or ‘Innovation Patents’. In this case, the criterion of ‘Novelty’ and ‘Non-
obviousness’ are diluted or relinquished. But the requirement of industrial application or utility
is the same as that for patents.

Definition of Utility Models : Utility Models, also known as ’Petty Patents’ or ’Innovation
Patents,’ represent a form of intellectual property protection for incremental improvements
over existing products.

Differences from Patents: While patents demand a higher threshold for ’Novelty’ and ’Non-
obviousness,’ Utility Models provide a more accessible option for smaller
innovations.Theindustrialapplicationorutilityrequirementremainsconsistentwithpatents.

Benefits for MSMEs: Utility Models serve as a valuable tool for Micro, Small, and Medium
Enterprises (MSMEs), offering a less rigorous and cost-effective alternative to patents. This is
particularly beneficial for MSMEs with limited resources for intensive research and
development.

Duration and Global Recognition: The lifespan of a Utility Model is typically shorter than
patents, varying from 7-15 years in different countries. Approximately 80 countries, including
France, Germany, Japan, South Korea, China, Finland, Russian Federation, and Spain, recognize
and provide protection for Utility Models under their Intellectual Property Rights (IPR) laws.

Current Status in India: As of now, India does not officially recognize utility patents. The
inclusion of utility patents in India’s IP protection framework could significantly impact the
annual number of filed and granted patents.

Additional Information
The patent system in India is governed by the Patents Act, 1970(No.39 of 1970) as amended by the
Patents (Amendment) Act 2005 and the Patents Rules, 2003. The Patent Rules are regularly
amended in accordance with the changing environment, with the most recent update in 2020.

Historical Note: The first patent filed in India dates back to 3rd March 1856. George Alfred
DePenning, a civil engineer and inventor from Calcutta, India, submitted the first petition for
the grant of Exclusive Privileges (a term used for patents at that time) for his invention called
’An Efficient Punkah-Pulling Machine’. This patent marked the inception of the patenting
tradition in India.

Budapest Treaty (1977): According to the Budapest Treaty (1977), microorganisms involved in
the patent disclosure procedure must be deposited with units of the International Depositary
Authority (IDA).

Impactful Patents: Edison’s Electric Bulb (1880) Patent Number: US223898

The Telephone (1876):Patent Number:US174465

The first telephone was invented and patented by Alexander Graham Bell in 1876.Bell went on
to co-found the American Telephone & Telegraph Company(AT&T),which later expanded to
control all telecommunications and became the world’s most significant industry.

Most Patents Granted: Japanese inventor Shunpei Yamazaki holds the record for the maximum
number of patents (9700) granted in a span of 49 years (1972-December2020) at an impressive rate
of 196 patents per year.

Most Patents Granted to a Person of Indian Origin: Gurtej Sandhu holdst he record for the
maximum number of patents (1299) granted to a person of Indian origin in a span of 30 years
(1991-December 2020) at the rate of 43 patents per year.