Manual For Patent Office Practice and Procedure
Manual For Patent Office Practice and Procedure
Manual For Patent Office Practice and Procedure
AND PROCEDURE
Version 3.0
PUBLISHED BY:
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PREFACE
The Patents Act, 1970 was amended in 1999, 2002 and finally in 2005 to provide for product
patents in chemicals, pharmaceuticals, food and agro-chemicals and bring in other necessary
amendments in line with Trade Related Aspects of Intellectual Property Rights (TRIPS). Patents
Rules have been commensurately amended, initially as Patent Rules, 2003, which were further
amended in 2005, 2006, 2012, 2013, 2014, 2016, 2017 and 2019. India became signatory to Patent
Cooperation Treaty (PCT) in 1998. Consequently, patent filing in India, including National Phase
applications under PCT, has increased exponentially. Indian Patent Office is a major PCT filing
country and also functions as ISA/IPEA under PCT.
Indian Patent Office has been modernized in terms of automation, IT enablement and
electronic processing of patent applications during last decade. The objective of modernization
project was to increase the functional efficiency and streamline the procedures in tune with
international best practices.
Considerable changes have been effected in patenting procedures from time to time in
accordance with the provisions of the amended Act and Rules and also to bring in automation,
electronic work-flow, comprehensive e-filing, simplified and transparent procedures and
efficient public service delivery of IP services.
The office has been regularly publishing the Manual of Patent Office Practice and Procedure
to codify patent procedures for streamlining the functioning, provide benefit to stakeholders and
also to provide guidance for prosecution of patent applications at Patent Office.
In view of the recent amendments of Patent Rules, reengineering of patent procedures and
automation in almost all activities in Patent Office, there has been demand to revise and update the
present Manual.
Accordingly, the present version of Manual of Patent Office Practice and Procedure,
hereinafter referred to as ―Manual‖, has been prepared which is yet another step to fulfill our
commitments towards more efficiency and transparency in the functioning of Patent Office.
This Manual may be considered as a practical guide for effective prosecution of patent
applications in India. However, it does not constitute rule making and, hence, does not have the force
and effect of law.
The Manual will be revised from time to time based on interpretations by courts of law,
statutory amendments and valuable inputs from the stakeholders.
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INDEX
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Chapter-1: Introduction
1. This manual has been compiled with an intention to codify the practices and procedures being
followed by the Indian Patent Office and the same is intended to serve as a procedural guide
for practitioners and other users of the Indian Patent System.
2. Indian Patent Office functions from four locations viz. Delhi, Mumbai, Kolkata and Chennai
with defined areas of territorial jurisdiction. Introduction of office automation and electronic
processing of patent applications has resulted in uniformity and transparency in functioning of
the office. A complete file wrapper in respect of published patent applications including,
information related to publication, examination reports, status of application, amendments,
grant, opposition, renewal and decisions of controllers as well as legal status of patents in the
form of electronic Patent Register, has been made available to the public. This manual is
expected to bring in further transparency and uniformity in patent office practices. .
4. This manual is intended to spell out patent office practices and procedure and bridge any
information gap that may be currently existing in this regard. It is not intended to be the
interpretation of the Indian Patents Act and Rules made thereunder.
5. The procedure for filing patent application and its processing up to grant/refusal,
maintenance etc. is explained in the following chapters except infringement proceedings.
Certain matters like exceptions to the rights of patentee, Government use, compulsory
licensing, etc. have also been included.
7. Chapters 3 to 8 relate to the procedure for filing of patent applications including ordinary and
PCT national phase applications, convention and PCT international applications, patent of
addition, divisional application and functioning of Indian Patent Office as ISA/IPEA.
10. Chapters 15 to 21 relate to Patent Agents, offences and penalties, general powers of Controller,
general services, scientific advisors and miscellaneous provisions.
11. Time lines prescribed under the Act and Rules have been dealt with separately in Chapter 22.
12. The officers, appointed under section 73 (2) of the Act having delegated statutory powers, have
4
some discretionary powers under the Act, which are to be exercised cautiously and judiciously.
They shall not be guided solely by the contents of this manual, but shall take judicious decisions
based on the Act, Rules and judicial decisions available in the matter. However, all officers of
Patent Office shall uniformly follow the procedures set forth in the Manual.
a) Affidavit and Evidence: Subject to anything contrary to the directions issued by the
Controller, evidence shall be given by way of an affidavit in all proceedings before
the Controller, as may be required under the Act or Rules. As per Section 77(1)(c) of
the Act and Rule 126 of the Patents Rules, the Controller has the power to receive
evidence on affidavits which shall be duly sworn in. Nevertheless, a self-declaration
signed before the Controller, who is legally empowered to receive the evidence, may
also be considered as admissible evidence in any proceeding before the Controller
under the Patents Act, if the Controller so allows.
b) Consequent upon adopting the e-filing system, where certain documents are
required to be filed in original, only one copy of such documents shall be submitted
to the appropriate Patent Office.
c) The latest document filed by the applicant shall be considered as final and the
corresponding earlier document shall be deemed to have been superseded and
cancelled by the applicant.
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Chapter 02: Key definitions
02.01 General
For better appreciation of the Manual, the user may require to have
clear understanding of certain terms which are defined in the Act and
Rules. Some of the important definitions are as under:
02.02 Definitions
02.02.01 ―appropriate office‖ means the appropriate office of the Patent Office Rule 2(b), 4
as specified in rule 4.
02.02.02 "assignee" includes an assignee of the assignee and the legal Section
representative of a deceased assignee and references to the assignee of 2(1)(ab)
any person include references to the assignee of the legal representative
or assignee of that person.
02.02.03 "capable of industrial application", in relation to an invention, Section
means that the invention is capable of being made or used in an 2(1)(ac)
industry
02.02.04 "Controller‖ means the Controller General of Patents, Designs and Section
Trade Marks referred to in Section 73 (1). 2(1)(b),
The Central Government may appoint examiners and other officers Act, 1999
with designations as deemed fit. The officers so appointed shall
discharge, under the superintendence and directions of the Controller
General of Patents, Designs and Trademarks, such functions of the
Controller under this Act, as he may authorize in writing from time to
time, by general or special order.
6
The Controller General has the power to withdraw any matter
pending before an officer, by an order in writing and for reasons to be
recorded therein, and deal with such matter himself, either de novo or
from the stage it was so withdrawn or transfer the same to another
officer who may, subject to special directions in the order of such
transfer, proceed with the matter either de novo or from the stage it was
so transferred.
02.02.05 "Government undertaking" means any industrial undertaking Section
carried on – 2(1)(h),
a. By a department of the Government, or
Section 617
b. by a corporation established by a Central, Provincial or
of the
State Act, which is owned or controlled by the
Government, or Companies
7
02.02.14 "person interested" includes a person engaged in, or in promoting, Section 2(1)
research in the same field as that to which the invention relates. (t)
02.02.15 "prescribed" means prescribed by rules made under this Act. Section
2(1) (u)
02.02.16 "prescribed manner" includes the payment of the prescribed fee. Section
2(1) (v)
02.02.17 "small entity" means, -
(i) in case of an enterprise engaged in the manufacture or production of Rule 2(fa),
goods, an enterprise where the investment in plant and machinery does Section 7 (1)
not exceed the limit specified for a medium enterprise under clause (a) (b) of MSME
of sub-section (1) of section 7 of the Micro, Small and Medium Development
Enterprises Development Act, 2006 (27 of 2006); and Act, 2006
(ii) in case of an enterprise engaged in providing or rendering of
services, an enterprise where the investment in equipment is not more
than the limit specified for medium enterprises under clause (b) of sub-
section (I) of Section 7 of the Micro, Small and Medium Enterprises
Development Act, 2006.
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Chapter 03: Filing of Patent Application
An application for a patent for an invention may be made by any of 7(2) 54,
the following persons either alone or jointly with any other person: 134, 135;
10
03.01.01 Procedure to be followed for substitution of applicants etc. Section 20,
34-36,
(1)(a) If the Controller is satisfied with the claim that, by virtue of any
assignment or agreement in writing made by the applicant or one of Form-6
the applicants for the patent or by operation of law, the claimant
would, if the patent were then granted, be entitled thereto or to the
interest of the applicant therein, or to an undivided share of the
patent or of that interest, the Controller may direct that the
application shall proceed in the name of the claimant or in the
names of the claimants and the applicant or the other joint
applicant or applicants accordingly, as the case may require.
(2) Where one of two or more joint applicants for a patent dies at any
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time before the grant of patent, the Controller may, upon a request in
that behalf made by the survivor or survivors, and with the consent of
the legal representative of the deceased, direct that the application shall
proceed in the name of the survivor or survivors alone.
An application for patent shall be filed with the Patent Office having
appropriate jurisdiction. A territorial jurisdiction of patent office in
respect of a patent application is decided based on any of the
following:
12
ii. Place from where an invention actually originated or,
iii. Address for service in India given by the applicant, when the
Applicant has no place of business or domicile in India
(Foreign applicants).
13
03.03 Types of Patent Applications Section 7,
16, 54,135
1. Ordinary Application i.e., an application which has been filed
directly in the Indian Patent Office without claiming priority of
any foreign application.
It may be noted that 10% additional fee shall be payable when the
application for patent and other documents are filed through physical
mode, namely, in hard-copy format.
14
filing of all the documents has also been integrated.
15
However, the Controller may allow Form-5 to be filed within one
month from the date of filing of complete specification, if a
request is made to the Controller in Form-4.
7. Form of Authorisation:
16
Where the documents have been digitally signed by the
Applicant/Patent Agent, there will be no requirement of physical
signature of the agent or applicant.
11. The application shall disclose in the specification the source and
geographical origin of the biological material, if any used in
the invention.
03.04.02 Comprehensive E-filing: Rule 6
Steps of e-filing:
1. Visit www.ipindia.gov.in and proceed to E-Gateways
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6. Draft the Form(s) for new application or any other subsequent
form (s)
7. Upload the PDF version of required documents
8. Save the draft
9. Go to the drafted forms
10. Enter the mobile number, if SMS alert are required
11. Select the drafted form and proceed for signing of drafted form
12. After the forms are digitally signed, it is ready for making the
payment though the available Payment Gateways
13. Select the digitally signed form and proceed for payment
14. Select the payment gateway (NTRP-Bharatkosh payment gateway)
15. Select the bank and payment mode to make the payment of fee
16. After making payment, the acknowledgement receipt would be
generated.
Submitted Forms would then proceed to the respective section of the
Patent Office for processing and official actions.
(For more and updated information on the steps for e-filing, you may
also refer to the Comprehensive E- Filing Portal).
03.04.03 Leaving and Serving Documents at Patent Office
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by electronic transmission duly authenticated;
19
in support of the statement.
Whenever an applicant is unable to submit the documents in time
due to failure of server/Bharat Kosh/IT infrastructure on part of
the Office, the applicant/patent agent is required to take screen
shot of the problem and submit the same to the Office along with
a statement regarding the circumstances of the facts as evidence
in support as per Rule 6(5), whereupon such delay may be
condoned after due verification by the Office.
Such delay condoned by the Controller shall not exceed the period
between the date on which the party was supposed to have
received the document or communication by ordinary course of
mail or electronic transmission duly authenticated and the actual
date of receipt of the same.
(ii). The condonation of such delay can also be made for reasons of
war, revolution, civil disorder, strike, natural calamity, a general
unavailability of electronic communication services or other
similar reasons occurred in the locality where the applicant/agent
resides or has place of business. The delay can be allowed when
the applicant/agent files a petition for condonation of such delay
to the Controller provided the situation was of such severity that
it disrupted the normal communication in that area and that the
petition is filed within maximum one month from the date of
cessation of the such situation.
Such delay condoned by the Controller shall not exceed the period
for which national emergency was in force, or six months from
the expiry of the prescribed period, whichever is earlier.
2. The fee bearing documents are sent to the fee counter and the
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non-fee bearing documents are sent to the non-fee counter.
4. The fee bearing documents are sent to the fee counter and the
non-fee bearing documents are sent to the non-fee counter.
5. The staff at the fee counter makes relevant entries in the module,
stamps the documents so received, generates the Cash Book
Receipts (CBRs) and enters the CBR number, date, amount of fee
received, application number, patent number or other relevant
entries.
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office as may be required by the Controller.
6. names and addresses of applicant and other persons shall be
given in full, together with their nationality and such other
particulars, if any, necessary for their identification.
Signature
Any signature which is not legible or which is written in a script
other than Hindi or English shall be accompanied by a transcription
of the name, either in Hindi or in English, in block letters.
03.04.06 Sequence listing Rule 9
If the application for patent discloses sequence listing of nucleotides
or amino acid sequences, such sequence listing shall be filed in the
computer readable text format along with the application and no print
form of the sequence listing of nucleotides or amino acid sequences
will be required to be given.
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paid in cash or may be sent by bank draft or banker‘s cheque 142,
payable to the Controller of Patents and drawn on a scheduled Rule 7,
bank at the place where the appropriate office is situated. Fee First
can also be paid through BHIM app in Controller of Patents Schedule
Account.
12. Prescribed fee for various proceedings under the Act is given in
the First Schedule.
03.05 Processing of Application
03.05.01 Initial processing:
1. On receipt of an application, the Office accords a date and serial
number to it. Requests for examination are accorded separate serial
numbers.
2. Applications and other documents filed in physical form are digitized,
verified, screened, classified and uploaded to the internal server of the
Office.
3. Patent applications and other documents are arranged in e-wrapper.
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4. The Application is screened for:
( in YYYY/MM/DD )
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03.05.03 ii. Numbering Format for Request for Examination
• Format: EYYYYJNNNNNN
Where, "E denotes Request for Expedited Examination under rule
24 (C ).
03.05.04 Scrutiny of Application
2. The Office checks for Proof of Right to file the application (See
03.04). If proof of right is not filed along with the application, the
same shall be filed within a period of six months from the date of
filing of the application. Otherwise, the applicant shall file the
same along with a petition under Rule 137/138. The Office
checks whether the application and other documents have been
filed in the prescribed format i.e. prescribed forms, request,
petitions, assignment deeds, translation etc.
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e. whether authoristion of an Agent in Form 26 or in the
form of a power of attorney is filed within a period of
three months from the date of filing of such application or
document.
f. whether Form-5 has been filed, if required.
g. whether the invention has been assigned to another person,
and if yes, whether Form 6 has been duly filed along with
the deed of assignment. If the right is assigned from an
individual to a legal entity, the legal entity is invited to pay
the balance fees.
03.05.05 Secrecy Directions and consequences thereof- Section
1. If in the opinion of the Controller, an invention pertains to a 35, 36, 37,
subject matter relevant for the purpose of defence, as notified by 38
the Central Government, or otherwise the invention appears to Rule 72
the Controller to be so relevant, he will issue directions prohibiting
the publication of the application and will notify the applicant.
2. Where the Controller gives any such direction, he shall refer the
matter to the Central Government for consideration as to whether
the publication of the application would be prejudicial to the
defence of India.
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longer be prejudicial to the defence of India, it shall forthwith
give notice to the Controller to revoke the direction and the
Controllers shall thereupon revoke the directions previously
given by him.
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continuance in force of the directions, the Central
Government may make to him such payment (if any) by way
of solatium as appears to the Central Government to be
reasonable having regard to the novelty and utility of the
invention and the purpose for which it is designed, and to
any other relevant circumstances.
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Chapter – 4 : Publication of Application
a) An application for Patent is not open to public before the expiry Section
of 18 months from the date of filing or date of priority, 11A,
whichever is earlier. Rule 24
b) At the end of the period as mentioned in para (a) above, the
Application is published in the Official Journal except in the
cases, where:
d) Where a secrecy direction has been given, then the application will
be published after the expiry of the period as mentioned in para
(a) above or when the secrecy direction has ceased to operate,
whichever is later.
a) A request for early publication may be made in Form-9 with the A(2),
prescribed fee. Rule 24-A,
b) Such a request will be considered only if the Complete Form-9,
specification has been filed in the instant case.
First
c) Further, a patent application shall not be considered for early Schedule
publication if an invention pertains to subject matter relevant for
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defence purpose.
The Patent Office Journal is published on every Friday with the 11A
following particulars in respect of application:
i. Application number
ii. Country
iii. Date of filing
iv. Publication date
v. Title of invention
vi. International Patent Classification
vii. Priority details like priority document number, priority date,
Priority country, International Application No. and Filing date,
etc.
viii. Name and address of the applicant
ix. Name of the inventor(s)
x. Reference in respect of Patent of Addition shall be the
application number and filing date of the main application.
xi. Reference in respect of Divisional Application shall be the
application number and filing date of the of the first mentioned
application.
xii. Abstract
xiii. No. of pages
xiv. No. of claims
04.04 Effects of Publication Section
11A(6),
a) Upon publication, the Patent Office makes the specification
Rule 27,
(complete as well as provisional, if any), abstract, drawings and
55 (1A).
any other documents filed in respect of the application available
to the public on its website and copies of the same can also
be made available on payment of the prescribed fee as given in
the First Schedule of Patents Rules 2003 (as amended), if such a
request is filed.
32
b) After publication of the application for Patent, the depository
institution shall make the biological material, mentioned in the
specification, available to the public.
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Chapter - 5: Provisional and Complete Specification
05.01 Specification
The Specification is a techno-legal document containing scientific and Section 9,
technical disclosure and claims for the invention which is the basis of 10, 57, 59.
rights of a patent. The Specification, thus, forms a crucial part of the Rule 13,
patent application. 14, 24A,
A specification may be filed either as a provisional or complete Form-1, 2
specification.
34
Filing amendments to the specification:
a) When the applicant finds that his invention has reached a stage 11A (3) (b),
where it can be disclosed but has not attained the final stage, he 17
may prepare a disclosure of the invention in the form of a written
description and submit it to Patent Office as a Provisional
Specification.
35
application is the date of filing of the earliest provisional
specification and shall bear the number of that application
[S9 (2)].
b) The description starts from the second page with the field of
invention, background of the invention, object of the invention
and statement of the invention.
c) It is advisable to include as much information as the applicant
has in a provisional specification, at the time of filing.
d) It may be noted that a provisional specification cannot be filed
in case of a Divisional, Convention or PCT National Phase
Application.
36
05.03 Complete Specification Section 10
37
for patent, as the case may be, and a definite statement that
invention comprises an improvement in or a modification of the
invention claimed in the specification of the main patent granted
or applied for.
05.03.02 National phase applications Section
abstract and claims filed with the international application are taken as Rule 20(1)
a complete specification. An application corresponding to an
International application filed under PCT may be made in Form-1.
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a short statement of the closest prior art known to the applicant in that
respect shall also be given. However, the description should fully and
particularly describe the invention by clearly distinguishing it from
such closest prior art, known to the applicant.
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should be able to perform the invention based on what is disclosed
in the specification.
c) Reference to the drawings should be specific and preferably in the
following form: “This invention is illustrated with the help of the
accompanying drawings......”
d) The Specification in respect of Patent of Addition should contain at
the beginning of the description, a definite statement indicating an
improvement in or modification of the original invention and the
serial number of the Application for Patent in respect of the
original invention. The Specifications should also contain a short
statement of the invention as disclosed in the earlier Specification.
e) Terms in other languages, if any, used in the description should be
accompanied by their English equivalents. The use of vague words,
slang and colloquialisms is objectionable and shall be avoided.
f) In case a biological material described in the specification is not
available to the public and cannot be described adequately as per
the provisions of the Act, such material shall be deposited with the
International Depository Authority under the Budapest Treaty, on
or before the date of filing.
g) The International Depository Authority in India are :
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h) If there is any request for early publication, then the said reference
shall be given on or before the date of filing of such request.
i) Further, the source and geographical origin of the biological
material specified in the Specification shall also be disclosed.
j) Access to the material in the depository institution is available only
after the date of application for patent in India.
k) In the case of Biotechnology related inventions, reference to the
relevant sequence ID (SEQ ID), if any, shall be mentioned in the
description/claims of the specification.
05.03.10 Drawings Rule 15
a) Drawings or sketches, which require a special illustration of the
invention, shall not appear in the description itself. Such drawings
shall be on separate sheet(s).
b) Drawings shall be prepared neatly and clearly on durable paper
sheet.
c) Drawings shall be on standard A4 size sheets with a clear margin
of at least 4 cm on the top and left hand and 3 cm at the bottom
and right hand of every sheet.
d) Drawings shall be on a scale sufficiently large to show the
inventions clearly and dimensions shall not be marked on the
drawings.
e) Drawings shall be sequentially or systematically numbered and
shall bear -
i. in the left hand top corner, the name of the applicant;
ii. in the right hand top corner, the number of the sheets of
drawings, and the consecutive number of each sheet; and
iii. In the right hand bottom corner, the signature of the
applicant or his agent.
f) No descriptive matter shall appear on the drawings except in the
flow diagrams.
05.03.11 Abstract Rule 13 (7)
a) Every complete specification shall be accompanied by an abstract
to provide technical information on the invention. The abstract
shall commence with the title of the invention.
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b) The abstract shall be so drafted that it constitutes an efficient
instrument for the purpose of searching in the particular technical
field.
The Act specifically requires that the complete specification must Section 10
describe the best method of performing the invention known to the
applicant, including the one, which he may have acquired during the
period of provisional protection prior to the date of filing the complete
specification.
05.03.13 Claims
Claims define the contours of rights, if and when a patent is granted for Section
an invention. Hence, claims are the most critical part of a patent 10(4)(c)
application. In a complete specification the description is followed by
claims. Since, claims of the invention define the scope of legal
protection, it should be drafted carefully to cover all the aspects of the
invention for which protection being sought; at the same time
adequately distinguishing the prior art from the claimed invention.
05.03.14 Unity of invention and Clarity of claims Section
b) Claims shall be clear and succinct and fairly based on the matter
disclosed in the specification.
05.03.15 Significance of Claims
a) Claims must not be too broad to embrace more than what the
applicant has in fact invented. A Claim which is too broad may
encroach upon the subject matter which is in public domain or
belongs to others.
b) However, a claim may not be too narrow also because such a
claim would not be sufficiently effective against potential
infringement. An infringer would go scot-free, if the claims were
too narrow and hence, the full benefit of the invention may not
accrue to the inventor.
c) Having many claims, where each claim has a different scope,
43
allows the applicant to have a legal title to different aspects of the
invention.
d) Terms of the claim which confuse the scope of the invention, or
claim that are not specific (e.g. any novel matter) should be
avoided.
05.03.17 Structure of Claims
a) The description of invention in the complete specification is to
be followed by a ‗statement of Claims‘ preceded by the preamble,
‗I / We Claim‘ as the case may be.
b) Claims should start from a fresh page, after detailed description
of the invention and should be serially numbered.
c) Each claim should be in a single sentence.
d) Each claim should be clear and succinct.
e) A claim should not be verbose.
f) The claims should relate to a single invention, or to a group of
inventions linked to a single inventive concept.
g) There is no restriction as to the number of claims that can be
incorporated in the specification. Applicant has to pay
additional fee for each claim, if total number of claims is more
than ten.
h) Each claim should be fairly based on matter disclosed in the
specification.
i) The claims must be fully supported by the description.
j) A claim should be clear in the sense that it should not cause any
speculation with respect to scope of the claimed invention. For
example, words like ‗thin‘, ‗strong‘, ‗a major part‘, ‗such as‘,
‗when required‘ or ‗any‘ are used in the claims, the same may lead
to a subjective interpretation. Where ever use of such terms are
unavoidable and are considered as clear and definitive to a person
skilled in the art, the same may be allowable.
k) A claim must be specific and not vague, ambiguous or
hypothetical in nature. Each claim should be complete so that it
covers the inventive feature and enough elements around it to
put the invention in the proper context.
l) Any term which is used in the claim, must be either found in the
description or fairly inferred from the description.
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m) Trade Marks should not be used in Patent Applications where a
generic term can be used instead, since a Trademark is an
indication of the origin rather than the composition or content of
goods, However, Trade Marks are only permitted in claims
where it can be shown that their use is unavoidable and does
not introduce ambiguity.
n) A claim usually consists of three parts:
- Preamble,
- Transitional phrase; and
- Body.
o) An introductory phrase(Preamble) identifies the category of
invention and sometimes the purpose (for example, a machine
for waxing paper, and a composition for fertilizing soil).
p) The transition phrase may be words and phrases such as:
- comprising
- including
- consisting of
- consisting essentially of
q) If the invention is an improvement on a product or a process
existing in the prior art, the invention should be characterized by
the feature(s) comprising such improvement over the prior art. In
such cases, the claim will have two parts separated by the word
‗characterized by‘ or ‗wherein‘.
r) The first claim is always an independent claim also known as
‗Principal Claim‘. It should clearly define the essential features of
the embodiment(s) of the process/product that constitutes the
invention. The claim should be properly characterized with respect
to the ‗prior art‘, defining all the technical features essential to the
invention or inventive concept. The claim should bring out
sufficient details of interrelationship and/or operation to establish
that the invention achieves the intended objectives.
s) There may be more than one independent claim in a single
application if the claims fall under a single inventive concept.
While there is no restriction as to the number of claims,
including independent claims, it is advisable to limit the number of
claims, as well as the number of independent claims in a single
45
application so that the claims are falling under a single inventive
concept.
A dependent claim derives antecedence from an independent
claim and reads into it the features of the independent claim and
may contain optional features.
t) A claim shall not comprise number of alternatives and/or variable
parameters/ features which make it unsearchable.
u) Dependent claims that are not fully limited by the terms of the
preceding independent claim, e.g. dependent claims which omit,
modify or substitute a feature of an independent claim should be
avoided.
v) The practice of including an omnibus claim does not have any
legal basis under the Patents Act. In fact, such a claim cannot be
allowed as per Section 10(4)(c) of the Act, being non-definitive
with respect to scope of invention for which the protection is
claimed.
05.04 Priority of Claim Section
Each claim of a complete specification shall have a priority date. 2(1)(w), 11
When a complete specification is filed along with the application, the
date of filing of the application is the date of the priority of the
claim(s) of the specification if the claim(s) are fairly based on the
matter disclosed in the specification.
05.04.01 Priority Dates- General Section 9,
a) When a complete specification is filed pursuant to a Provisional 11
Specification, the priority date thereof shall be the date of filing of
the provisional application.
46
d) When a complete specification is filed after the provisional
specification, the Controller may on the request of the applicant
made any time before the grant, cancel the provisional
specification and post-date the provisional specification to the
date of complete specification.
47
Chapter- 6: Divisional Application and Patent of Addition
ii.(a) If the Power of Attorney, filed with the first mentioned application,
expressly authorizes patent agent to act on his/her behalf in
connection with such application, including any divisional
application(s) arising out therefrom, a copy of the power of attorney
is not required to be filed again in case of divisional application so
filed. In absence of such express authorization in the Power of
Attorney filed with the first mentioned application, a fresh Power of
Attorney is required to be filed in case of divisional application.
(b) If the applicant has submitted the proof of right in the prescribed
manner with the first mentioned application, the same is not
required to be filed again in case of divisional application.
iv. The date of filing of a divisional application shall be the same as that
of the first mentioned application, from which it has been divided.
48
National phase application under PCT.
49
06.01.06 Fee Section 16
For all purposes under the Patents Act, the divisional application is
treated as a substantive application and, hence, all fees applicable to a
patent application, shall be payable.
06.02 Patent of Addition
06.02.01 General Section 54,
a) When an applicant comes up with an improvement in or 55
modification of the invention described or disclosed in the main
application for which he has already applied for or has obtained a
patent, the applicant may make an application for patent of
addition.
b) An application for a Patent of Addition shall be filed on the same
or subsequent date of filing of the application for main Patent.
c) A Patent of Addition shall be granted only after the grant of the
main patent.
d) When a patentee holds two patents, it is possible to convert one of
the independent patents to a patent of addition of the other, if the
subject matter was an improvement in or modification to the other
patented invention.
e) There is no need to pay separate renewal fee for the Patent of
addition during the term of the main patent.
f) A patent of addition expires along with the main patent. However,
if the main patent is revoked, the patent of addition may be
converted into an independent patent, if so requested by the
patentee and the renewal fee for the remaining term of the patent
need to be paid accordingly.
g) Date of filing shall be the date on which the application for patent
of addition has been filed.
06.02.02 Novelty and Inventive step Section 56
50
In the matter of Ravi Kamal Bali v/s Kala Tech and others the
Bombay High Court on 12th February, 2008 dismissed the
defendant‘s arguments that Patent of addition can only be granted if it
has an inventive step over the main application.
06.02.03 Reference Rule 13(3)
51
Chapter -7: Convention Application, International Application and National
Phase Application
52
an application under this Act for a patent within twelve months
after the date on which the basic application was made, the
priority date of a claim of the complete specification, being a claim
based on matter disclosed in the basic application, is the date of
making of the basic application.
53
3) be accompanied by an abstract
4) a certified copy of the priority document, if the Controller requires
the same, may be filed within 3 months from the date of
communication by the Controller of such requirement.
5) accompanied by a verified English translation of such document, if
the priority document is in a language other than English.
07.01.05 Multiple priorities Section
a) When two or more applications for patents constituting one 135(2), 137
invention have been made in one or more convention countries,
one application may be made within twelve months from the date
on which the earlier or earliest of those applications was made in
respect of the inventions disclosed in the specifications which
accompanied the basic applications.
c) For the purposes of this Act, a matter shall be deemed to have been
disclosed in a basic application for protection in a convention
country if it was claimed or disclosed (otherwise than by way of
disclaimer or acknowledgement of a prior art) in that application, or
any documents submitted by the applicant for protection in support
of and at the same time as that application but no account shall be
taken of any disclosure effected by any such document unless a
copy of the documents is filed at the patent office with the
convention application or within such period as may be prescribed
after the filing of that application.
54
application could have been made under the provisions of this Act.
55
claiming fee reduction in transmittal and priority document fees.
57
Fees payable to the receiving Office (RO)
59
Examining Authority (IPEA) at the meeting of the General
Assemblies of WIPO held in September – October, 2007.
Signature
Effect of Withdrawal
62
have no effect in any designated or elected Office where the
processing or examination of the international application has
already started under Article 23(2) or Article 40(2).
64
Office, the applicant shall:
a. pay the prescribed national fee; and
b. file a duly verified translation of basic application, if
necessary.
3. International filing date is the deemed date of filing in India if the
applicant enters the national phase in India by filing a national
phase application within thirty one months from the date of
priority.
65
5. The applicant may make a request to the Controller
for amendment of the complete specification which was filed
with the national phase application, as a separate request in
Form-13, along with the application. The fee payable in respect
of a national phase application is calculated as per the number
of pages and claims as they stand in the PCT international
application on the date of filing in India.
66
may request for the same from the applicant. If the applicant filed
a priority document through WIPO-DAS in such case, the
applicant shall provide the code for accessing the priority
document.
10. However, if the applicant has not complied with the requirements
of rule 17.1 paragraph(a) or paragraph (b)of the regulations made
under the PCT, he shall submit the priority document to the office
before the expiry of thirty one months from the date of priority.
11. Where the applicant does not comply with the requirements of
(10) above, the Controller shall invite the applicant to file the
priority document or the translation thereof within three months
from the date of such invitation. If the applicant fails to do so, the
claim of the applicant for the priority shall be disregarded for the
purposes of the Act.
12. All other formalities that are required for filing and processing
an ordinary patent application shall apply to a national phase
application.
67
Chapter - 8: Indian International Searching Authority and Indian International
Preliminary Examination Authority
68
08.03 Indian International Searching Authority Rule 19-A
69
notifies the applicant and International Bureau that no international
search report shall be established.
7. Any applicant may pay the additional fees under protest, that is,
accompanied by a reasoned statement to the effect that the
international application complies with the requirement of unity of
invention or that the amount of the required additional fees is
excessive.
70
9. The Review Committee constituted under sub-rule (8) examines the
extent to which the protest is justified and, accordingly, orders for
the total or partial reimbursement of the additional fee to the
applicant.
10. Where the applicant has not paid fees for the protest in accordance
with clause (b) of sub-rule (5), the protest is considered not to have
been made and the same is declared by the Searching Authority.
71
accordance with an agreement between the Indian Patent Office and
the International Bureau.
72
2. In case where the Examining Authority is not competent to conduct the
international preliminary examination of the international application, it
transmits the demand promptly to the International Bureau.
08.13 International Preliminary Examination Report Rule 19-K
1. Notwithstanding anything contained in the proviso to item (i) of
sub-rule (2) of rule 24B, the Examining Authority refers the
international application, in accordance with the provisions
contained in the Treaty and the regulations under the Treaty, in the
order in which the demand was received in the Examining Authority
to an examiner or any other officer appointed under sub-section (2)
of section 73 of the Act for preparing an International Preliminary
Examination Report ordinarily within a period of three months but
not exceeding four months from the date of such reference.
73
5. Where the Examining Authority finds that the international
application does not comply with the requirement of unity of
invention, in accordance with the provisions contained in Rule 13 of
the regulations under the Treaty and chooses to invite the applicant,
at his option, to restrict the claims or to pay additional fees, it issues
a notice to the applicant:
a. specifying at least one possibility of restriction which. in the
opinion of the Examining Authority. would be in compliance
with the applicable requirement;
b. specifying the reasons for which the international application
is not considered as complying with the requirement of unity
of invention;
c. inviting the applicant to comply with the invitation within one
month from the date of such notice;
d. indicating the amount of the required additional fees to be
paid in case the applicant so chooses; and
e. inviting the applicant to pay, the protest fee within one month
from the date of such notice, and indicate the amount to be
paid, as specified in the Fifth Schedule.
6. Any applicant may pay the additional fees under protest, that is,
accompanied by a reasoned statement to the effect that the
international application complies with the requirement of unity of
invention or that the amount of the required additional fees is
excessive.
74
Report shall be:
a. twenty eight months from the priority date; or
b. six months from the period specified under Rule 69.1 of the
regulations under the Treaty for the start of the international
preliminary examination; or
c. six months from the date of receipt by the Examining
Authority of the translation furnished under Rule 55.2 of the
regulations under the Treaty, whichever expires last.
08.15 Transmittal of International Preliminary Examination Report Rule 19M
75
Chapter- 9: Examination & Grant
1. An Application for a Patent shall not be examined unless the 11B, 35.
applicant or any other person interested makes a request for Rule 20(2),
examination. The request is to be filed in Form 18 or Form 18A (as 20(4)(ii),
the case may be) along with the fee as prescribed in First Schedule. 24B, 24C.
In a case where secrecy direction has been issued under Section 35,
the request for examination may be made within six months from
the date of revocation of the secrecy direction, or within forty-eight
months from the date of filing or priority, whichever is later.4. The
request for examination of application as filed according to the
'Explanation' under sub-section (3) of section 16 (Divisional
application) shall be made within forty-eight months from the date
of filing of the application or from the date of priority of the first
mentioned application or within six months from the date of filing
of the further application, whichever is later.
77
the Government; or
(g) that the applicant is a Government company as defined in
clause (45) of section 2 of the Companies Act, 2013 (18 of
2013); or
(h) that the applicant is an institution wholly or substantially
financed by the Government;
Explanation:- For the purpose of this clause, the term
‗substantially financed‘ shall have the same meaning as in the
Explanation to sub-section (1) of section 14 of the
Comptroller and Auditor General‘s (Duties, Powers and
Conditions of Service) Act, 1971(56 of 1971); or
(i) that the application pertains to a sector which is notified by
the Central Government on the basis of a request from the
head of a department of the Central Government.:
Provided that public comments are invited before any such
notification; or
(j) that the applicant is eligible under an arrangement for
processing a patent application pursuant to an agreement
between Indian Patent Office and a foreign Patent Office.
Explanation:- The patentability of patent applications filed
under clause (j) above will be in accordance with the
relevant provisions of the Act.‖.
2. A request for examination filed under rule 24B may be converted
to a request for expedited examination under sub-rule (1) of rule
24C by paying the relevant fees and submitting requisite documents
as prescribed.
4. If the request for expedited examination does not comply with the
requirements of this rule, such a request shall be processed as
normal request for examination , with an intimation to the
applicant, and shall be deemed to have been filed on the date on
which the request for expedited examination was filed.
78
along with the application and specification and other documents
to the examiner, in respect of the applications where the request
for expedited examination has been received, in the order of filing
of such requests.
7. The period within which the examiner shall make the report under
sub-section (2) of section 12, shall ordinarily be one month but not
exceeding two months from the date of reference of the
application to him by the Controller.
8. The period within which the Controller shall dispose of the report
of the examiner shall be one month from the date of receipt of
such report by the Controller.
11. The time for putting an application in order for grant under section
21 shall be six months from the date on which the first statement
of objections is issued to the applicant.
12. The time for putting an application in order for grant under section
21, as prescribed in sub-rule (10) may be further extended for a
period of three months on a request for extension made in Form 4
along with the prescribed fee, made to the Controller before the
expiry of the period specified under sub-rule (10).
79
statement of objections or within a period of three months from
the last date to put the application in order for grant under section
21 of the Act, whichever is earlier: Provided that this time limit
shall not be applicable in case of pre-grant opposition.
14. Notwithstanding anything contained this rule, the Controller may
limit the number of requests for expedited examination to be
received during the year by way of a notice to be published in the
official journal.
09.02 Reference for Examination Section
1. Once a request for examination is received, and the application is 11A, 12.
published under section 11A, the application is taken up for Rule
Examination in the chronological order of filing of request for 24B(2)(i)
examination.
2. Accordingly, the Controller shall refer the application, specification
and other documents related thereto to the examiner and such
reference shall be made in the order in which the request is filed.
3. Provided that in case of a further application filed under section
16, the order of reference of such further application shall be the
same as that of the first mentioned application.
4. Provided further that in case the first mentioned application has
already been referred for examination, the further application shall
have to be accompanied by a request for examination, and such
further application shall be published within one month and be
referred to the examiner within one month from the date of such
publication.
5. The patent application is referred to an Examiner by the
Controller for conducting the formal as well as substantive
examination as per the subject matter of the invention vis-à-vis the
area of specialization of the Examiner. At present, the Patent
Office has four examination groups based on the broad area of
specialization viz.:
a. Chemistry and allied subjects.
b. Biotechnology, Microbiology and allied subjects.
c. Electrical, Electronics & related subject
d. Mechanical and other subjects.
80
6. The reference to the Examiner is made ordinarily within one month
from the date of publication or one month from the date of
request for examination, whichever is later, and is made in order in
which the request is filed.
8. The period within which the Controller shall dispose of the report
of the Examiner shall ordinarily one month from the date of the
receipt of the report by the Controller.
10. Provided that where the request for examination was filed by a
person interested, only an intimation of such examination may be
sent to such person interested.
09.03 Examination of application
09.03.01 Search for Anticipation by previous publication and Prior Section 13
Claiming:
81
that date.
4. The search is conducted with respect to the date of filing of
complete specification.
82
the same subject matter.
8. A generic disclosure in the prior art may not necessarily take away
the novelty of a specific disclosure. For instance, a metal spring
may not take away the novelty of a copper spring.
83
09.03.03.02 Determination of Inventive Step
85
to see that if the said document which is prior patent if placed in the
hands of the said person skilled in art whether he will be able to
work upon the same in the workshop and achieve the desired result
leading to patent which is under challenge. If the answer comes in
affirmative, then certainly the said invention under challenge is
anticipated by the prior art or in other words, obvious to the person
skilled in art as a mere workshop result and otherwise it is not. The
said view propounded by Hon'ble Supreme Court in Biswanath
Prasad (supra) holds the field till date and has been followed from
time to time by this Court till recently without any variance…..
Therefore, it is proper and legally warranted to apply the same very
test for testing the patent; be it any kind of patent. It would be
improper to import any further doctrinal approach by making the
test modified or qualified what has been laid down by the Hon'ble
Supreme Court in of Biswanath Prasad (supra).”
iv. Identify what, if any, differences exist between the matter cited
as forming part of the "state of the art" and the inventive
concept of the claim or the claim as construed;
87
A machine purporting to produce perpetual motion.
A machine alleged to be giving output without any input.
A machine allegedly giving 100% efficiency.
09.03.05.02 An invention, the primary or intended use or commercial Section 3(b)
exploitation of which would be contrary to public order or
morality or which causes serious prejudice to human, animal or
plant life or health or to the environment is not an invention.
Some examples are:
a) Any device, apparatus or machine or method for committing
theft/burglary.
b) Any machine or method for counterfeiting of currency notes.
c) Any device or method for gambling.
d) An invention the use of which can cause serious prejudice to
human beings, plants and animals.
e) Inventions, the intended use or commercial exploitation of which
is found to be injurious to public, animal or plant life or health,
such as, a method of adulteration of food.
f) An invention, the primary or intended use of which is likely to
violate the well accepted and settled social, cultural, legal norms
of morality, e.g. a method for cloning of humans.
g) An invention, the primary or proposed use of which would
disturb the public orders e.g. a device for house-breaking.
h) However, if the primary or intended purpose or commercial
exploitation of a claimed invention is not causing serious
prejudice to human, animal or plant life or health or to the
environment, such subject matter may be considered to be an
invention and may be patentable, for instance, a pesticide.
09.03.05.03 The mere discovery of a scientific principle or the formulation of Section 3(c)
an abstract theory or discovery of any living thing or non-living
substance occurring in nature is not an invention.
88
an invention.
89
mere discovery of a new form of a known substance which does
not result in the enhancement of the known efficacy of that
substance;
the mere discovery of any new property of a known substance;
the mere discovery of new use for a known substance;
the mere discovery of use of a known process, machine or
apparatus unless such known process results in a new product or
employs at least one new reactant.
90
It was further held by the Apex Court –
"in the case of medicines, efficacy means ―therapeutic efficacy‖ and
physico-chemical properties of substances do not meet the
requirement of ―therapeutic efficacy‖.
It was also held that patent applicants must prove the increase in
therapeutic efficacy and just increased bioavailability alone may not
necessarily lead to an enhancement of therapeutic efficacy, and in any
given case, enhanced efficacy must be specifically claimed and
established by research data.
91
way of comparison at the time of filing of the Application itself. The
subsequent submissions regarding synergism can be accepted in a
reply to the office action as a further support of synergy.
However, where the old integers when placed together have some
92
working interrelation, producing a new or improved result, then there
could be a patentable subject matter in the working interrelation
brought about by the collection of the integers.
93
specified phosphorathioates.
c) A method of producing mushrooms.
d) A method for cultivation of algae.
e) A method for removal of weeds.
09.03.05.08 Any process for the medicinal, surgical, curative, prophylactic, Section 3(i)
diagnostic, therapeutic or other treatment of human beings or
any process for a similar treatment of animals to render them free
of disease or to increase their economic value or that of their
products is not an invention.
94
treatment, the termination of pregnancy, castration, sterilization,
artificial insemination, embryo transplants, treatments for
experimental and research purposes and the removal of organs,
skin or bone marrow from a living donor, any therapy or diagnosis
practiced on the human or animal body and further includes
methods of abortion, induction of labour, control of estrus or
menstrual regulation.
i) Application of substances to the body for purely cosmetic
purposes is not therapy.
j) Patent may however be obtained for surgical, therapeutic or
diagnostic instrument or apparatus.
k) Also the manufacture of prostheses or artificial limbs and taking
measurements thereof on the human body are patentable.
09.03.05.09 Plants and animals in whole or any part thereof other than Section 3(j)
micro-organisms but including seeds, varieties and species and
essentially biological processes for production or propagation of
plants and animals are not inventions.
95
patentable subject matter.
For the purpose of this clause, refer the Revised Guidelines for
Examination of Computer-related Inventions (CRIs), 2017.
However, a brief of the Guidelines is given as under:
96
carrying out business/trade/financial activity/transaction and/or a
method of buying/selling goods through web (e.g. providing web
service functionality), the same should be treated as business
method and shall not be patentable.
3) Claims directed as “Algorithm”: Algorithms in all forms
including but not limited to, a set of rules or procedures or any
sequence of steps or any method expressed by way of a finite list of
defined instructions, whether for solving a problem or otherwise,
and whether employing a logical, arithmetical or computational
method, recursive or otherwise, are excluded from patentability.
97
illustrations, maps, plans, sketches, topography, translations,
adaptations, etc. are not patentable. Such works fall within the domain
of the Copyright Act, 1957.
09.03.05.12 A mere scheme or rule or method of performing mental act or Section
method of playing game is not an invention. 3(m)
98
Digital Library (TKDL) and other resources to decide as to whether
the claimed subject matter falls within the purview of this provision.
09.03.06 Information and undertaking regarding foreign applications Section 8,
One of the requirement for the grant of a patent application and Rule 12
continuation of a patent is to provide information and
undertaking regarding foreign applications in Form 3, in
accordance with Section 8 of the Patents Act, 1970 and Rule 12 of
the Patents (Amendment) Rule, 2003.
No fee has been prescribed in the Act or Rules if submission is in
accordance to the timelines as prescribed in rule 12.
Similar provision, which is in accordance with TRIPS Agreement,
is available in the laws of other countries like USA, China, EPO,
Mexico, Phillipines etc.
(1) The applicant shall file along with his application or within six
months from the date of filing the application-
(a) a statement setting out the name of the country where the
application is being prosecuted, the serial number and date of
filing of the application and such other particulars as may be
prescribed; and
99
period of six months shall be reckoned from the date of
filing of the said corresponding foreign application.
(2) The Controller may also require the applicant to furnish, as far as
may be available to the applicant, details relating to the objections,
if any, taken to any such application as is referred to in sub-section
(1) on the ground that the invention is lacking in novelty or
patentability, the amendments effected in the specifications, the
claims allowed in respect thereof and such other particulars as he
may require, within six months from the date of such
communication from the Controller.
100
can share their dossier information either directly through the
WIPO CASE system or through the IP5 One Portal Dossier
linkage system.
The rationale of joining WIPO CASE is based on the fact that the
same patent applications are filed in multiple offices, patent
examiners can increase the efficiency and quality of their work by
sharing their examination results.
Legal jurisprudence:
101
Appeal to the CS (OS) No. 2206 of 2012 (Single judge order) ,07.11.2014
and (iv) FRESENIUS KABI ONCOLOGY LIMITED V. GLAXO GROUP
LIMITED &ANR (IPAB-ORA 17 of 2012/PT/KOL & M.P. Nos. 4 of
2013, 9 of 2013, 10 of 2013 & 49 of 2013; 27.07.2013)]
102
outside India, including but not limited to, Search and/or
examination reports, Claims of application allowed/ disallowed,
Amendments made, if any, etc. n other Patent offices.
103
application may be divided in order to meet the objection of
plurality of distinct inventions.
104
such antibody/ sequence.
2) The examiner prepares the report after conducting a prior art search
to ascertain the novelty, and examining as to whether the invention
disclosed in the specification is inventive and industrially applicable.
1) The Controller considers the report of the examiner ordinarily 21, Rule
within one month from the date of the receipt of such report and a 24B, 28, 28
2) The FER is sent to the applicant, even when the request for
examination has been filed by a person interested. An intimation
105
regarding the issue of FER is given to such person interested.
106
9) In all cases of hearing, written submissions and the relevant
documents, if any, shall be filed by the applicant within fifteen days
from the date of hearing.
10) After hearing the applicant, the Controller may specify or permit
such amendment as he thinks fit and grant the patent.
11) If the requirements of the Act and Rules are not complied with,
the application is refused by the controller under Section 15 of the
Act. A decision by the Controller for refusal of patent shall be a
speaking order.
1) The application for patent may be post-dated to a date not later Section
than six months from the date of filing of application for patent 9(3), 9(4),
on a request made by the applicant at any time before the grant of 15, 17
patent along with the prescribed fee[Section 17 (1)].
107
the date of filing of such specification and documents.
iii) After filing the complete specification, the applicant may cancel
the provisional specification [i.e. the one filed directly under
Section 9(1) or the one converted from a complete specification
under Section 9(3)], and may request the Controller to post-date
the application to the date of filing of the complete specification.
In this case, the date of application will be the date on
which such complete specification is filed [Section 9(4)].
108
09.06 Pre-Grant Opposition Section
11A, 25(1).
1) Any person may file an opposition by way of representation (Pre-
Rule 55.
Grant Opposition)to the Controller in Form 7A against the grant
of Patent, at the appropriate office, at any time after publication of
patent application u/s 11A but before the grant of Patent on any
of the grounds mentioned in Section 25(1) with a copy to the
applicant.
4) A patent is not granted before the expiry of six months from the
date of publication under Section 11A. Therefore, a person may
file a pre-grant opposition within the assured period of six months
from the date of Publication, to make sure that the pre-grant
opposition is filed before the grant of patent.
109
of his application within three months from the date of the notice,
with a copy to the opponent.
The date of grant of patent is the date on which the patent is granted by
the Controller. The date on which the patent is granted shall be entered
in the register. The fact that the patent has been granted is published in
the official journal of the Patent Office.
110
official website on real time basis. The patent certificate is also made
available in the website.
09.07.02 Consequences of grant Section 43,
1) On the grant of patent, every patent is allotted a serial number by 45, 146 (2)
the electronic system. A Certificate of Patent is generated in the Rule 74-A,
prescribed format and an entry in the e-register is made 131(Form-
simultaneously. In the present electronic system, the date of recordal 27)
of Patent in the Register of Patents is the same as the date of grant
of Patent by the Controller.
111
application, the applicant shall have the like privileges and rights as
if a patent for the invention had been granted on the date of
publication of the application.
09.07.04 Conditions subject to which Patent is granted Section 47
1) any machine, apparatus or other article in respect of which the
patent is granted or any article made by using a process in respect
of which the patent is granted, may be imported or made by or on
behalf of the government for the purpose merely of its own use;
112
India.
09.07.06 Rights of co-owners Section 50
1) Where a patent is granted to two or more persons, each of those
persons shall, unless an agreement to the contrary is in force, be
entitled to an equal undivided share in the patent.
2) Subject to the provisions contained in this section and in Section
51, where two or more persons are registered as grantee or
proprietor of a patent, then, unless an agreement to the contrary is
in force, each of those persons shall be entitled, by himself or his
agents, to the rights conferred by Section 48 for his own benefit
without accounting to the other person or persons.
113
respect of all the patents, including those for which the term had not
expired on 20th May, 2003, when the Patent (Amendment) Act, 2002
came into force, provided that the renewal fee is paid every year
before the due date or within the extended period (maximum six
months).
114
Chapter - 10: Post Grant Opposition
2) The opponent shall, along with the notice of opposition, send a Form 7.
written statement setting out the nature of opponent's interest, the
facts upon which he bases his case and relief which he seeks and
evidence, if any.
7) If the patentee does not desire to contest or does not file his reply
and evidence within two months, the patent shall be deemed to
have been abandoned and the Controller shall issue the order of
revocation of Patent and the fact of revocation shall be entered in
the register of patents.
8) After receipt of reply from the patentee, the opponent may file his
evidence in reply within one month from the date of delivery to him
of a copy of the patentee‗s reply statement and evidence. The
evidence in reply by the opponent shall be strictly confined to the
matters in the patentee‘s evidence. The opponent shall also deliver a
115
copy of his reply evidence to the patentee.
10) Further evidence can be filed by either party if the same is prayed
before the hearing is fixed by the Controller under rule 62,
whereupon the Controller shall dispose of the petition by either
allowing or rejecting it.
4. The Board shall submit the report with reasons on each ground taken
in the notice of opposition, after examining the notice along with
all statements, documents and evidence submitted by the parties as a
joint recommendation within three months from the date on which
all such documents were forwarded to them.
5. A copy of the recommendation of opposition board should be
provided to the parties to the proceedings by the Controller along
with the hearing notice.
116
10.03 Hearing Rule 62
117
Chapter 11: Post-grant procedures
vi. Annual renewal fee can be paid for more than one year in advance.
11.02 Restoration of Lapsed Patents Section 60.
Rule 84,
1) When a Patent has ceased to have effect due to non-
payment of renewal fees within the prescribed time, the Patent may 94. Form-
15.
be restored by filing an application for restoration in Form-15
118
within eighteen months from the date on which the patent ceased
to have effect. Such application for restoration can be made by the
patentee/assignee, or his legal representative and in case of joint
applicants, then, with the leave of the Controller, any one or more
of them without joining the others.
2) The applicant has to state, the circumstances which led to the
failure of payment of renewal fees. The application must include a
statement fully setting out such circumstances that led to
the failure to pay the renewal fee. This statement is to be supported
by evidence along with copies of relevant documents.
3) The evidence must support the patentee's claim that the failure to
pay was unintentional and there has been no undue delay in
applying for the restoration.
4) The Controller may call for further evidence to justify that the
failure to pay was unintentional and that there has been no undue
delay for making the application.
2) If the Controller is satisfied that prima facie case for restoration has
not been made, the Controller may issue a notice to the applicant to
that effect. Within one month from the date of notice, if the
applicant makes a request to be heard on the matter, a hearing shall
be given and the restoration application may be disposed. If no
request for hearing is received within one month from the date of
119
notice by the Controller, the application for restoration will be
refused. In case of rejection of the application for restoration, a
speaking order shall be issued.
7) The fact that a patent has been restored shall be published in the
official journal.
120
Patent ceased to have effect and the date of the Publication of the
Application for restoration of the patent.
11.03 Registration of Assignments/Transfer of Right Section 68,
4) If there is any dispute between the parties, the Controller may refuse
to take any action to make an entry in the register until the rights of
the parties have been determined by a competent court.
121
reasons to be recorded in writing, otherwise directs.
122
fullest extent that is reasonably practicable without undue delay. Form-27
2) The Controller has the power to call for the information such as
periodical statements as to the extent to which the patented
invention has been commercially worked in India, as may be
specified in the notice issued to that effect at any time during the
continuance of the Patent.
3) A patentee or a licensee shall furnish such information within two
months from the date of such notice or within such further time as
the Controller may allow.
4) The patentee and every licensee shall furnish a statement as to the
extent to which the patented invention has been worked on a
commercial scale in India, in Form 27, in respect of every calendar
year, within three months of the end of each year.
11.06 Amendments after the grant of patents Section 57,
1) After the grant of patent, the patentee may apply for an amendment 59.
of the application for patent, complete specification or any Rules 57-
document relating thereto subject to such conditions, if 63and 81-
any, and as the Controller thinks fit. Such a request may be filed in 83. Form-
Form-13 with the prescribed fee. 13, 14.
2) An amendment of a complete specification may be, or include, an
amendment of the priority date of a claim, as per Section 57 (5).
3) The request shall state the nature of the proposed
amendment, highlighted in an annexed copy along with the reasons.
The amendments are allowable only by way of disclaimer, correction
or explanation. Such amendments shall be for the purpose of
incorporation of actual fact only. Further, no amendment of a
complete specification shall be allowed the effect of which would be
that the specification as amended would claim or describe matter
not in substance disclosed or shown in the specification
before the amendment, or the amended claim(s) do not fall wholly
within the scope of claim(s) of the specification before the
amendment.
4) If the nature of proposed amendment is substantive, the application
for amendment shall be published. For instance, any application for
amending the complete specification or the claims or the application
123
for patent shall be published.
5) The amended pages have to be filed by the applicant.
6) Any person interested may give a notice of opposition in Form-14
within three months from the date of publication of the application
for amendment. Where such a notice of opposition is filed, the
Controller shall notify the applicant for amendment.
7) After giving an opportunity to the applicant and opponent, if any,
the Controller shall dispose of the case. The procedure specified in
rules 57 to 63 for post grant opposition for filing of written
statement, reply statement, reply evidence, hearing and costs shall
apply in this case, except the procedural part related to Opposition
Board included under rule 62 (1) and 62 (5).
8) Amendments allowed after the grant of patent shall be published.
9) A leave to amend the complete specification obtained by fraud is a
ground for revocation of patent under Section 64(1)(o).
10) If any suit for infringement is pending before a Court or any
proceeding for revocation of the Patent is pending before the High
Court, the Controller shall not pass any order allowing or refusing
the application for amendment.
11.07 Amendment of patent granted to deceased applicant/ceased body Section 44
corporate.
Rule 75.
1) Where, at any time after a patent has been granted in pursuance of
Form-10,.
an application under this Act, the Controller is satisfied that the
person to whom the patent was granted had died before the patent
was granted, the Controller may amend the patent by substituting
for the name of that person the name of the person to whom the
patent ought to have been granted, and the patent shall have effect,
and shall be deemed always to have had effect, accordingly.
2) Similar procedure is to be followed in case of a body corporate
ceases to exist.
An application for above said amendment of a patent is to be made
in Form 10 along with substantiating evidence. Upon such
application, the Controller may amend the patent with the name of
such claimant by substituting the name of the deceased
applicant/the ceased body corporate.
124
11.08 Register of Patents Section 67.
1) Patent Office maintains the Register of Patents in electronic form, Rule 88,
which is under the control and management of the Controller of 93, 94.
Patents and the same is also available on the office website as e-
Register of Patents.
4) Upon the grant of a patent, the Controller shall enter in the register
of patents, the name, address and nationality of the grantee as the
patentee thereof, the title of the invention (including the categories
to which the invention relates), the date of the patent and the date
of grant thereof together with the address for service of the
patentee. The fact of payment of renewal fee shall also be entered
in the E-register. The Register of patents also contains particulars
regarding proceedings under the Act, before the Controller or in
the Courts in respect of every patent.
7) Entries in the register for each patent are available to the public on
the official website through e-Register of Patents.
125
11.09 Rectification of Register of Patents Section 71
1) An application for rectification of register of patents may be made
to the Intellectual Property Appellate Board (IPAB) by any person
aggrieved:
126
Chapter-12: Appeals
b. Every appeal should be made within three months from the date of
the decision, order or direction of the Controller or of the Central
Government, as the case may be, or within such further time as the
IPAB may allow in accordance with the Rules.
127
ii. in any appeal to the IPAB from an order of the Controller on
an application for patent—
128
Chapter-13: Revocation of Patent
b. Grounds for revocation of the patent before the IPAB as well as the
High Court are elaborated in Section 64.
129
the public, it may, after giving the patentee an opportunity to be heard,
make a declaration to that effect in the Official Gazette and thereupon
the patent shall be deemed to be revoked.
13.01.04 Revocation by Controller for non-working Section 85
130
Chapter 14: Compulsory Licensing
131
years from the date of grant of the patent on the following grounds:
132
I. if, by reason of the refusal of the patentee to grant a licence or
licences on reasonable terms,—
i. an existing trade or industry or the development thereof or
the establishment of any new trade or industry in India or the
trade or industry in India or the trade or industry of any person
or class of persons trading or manufacturing in India is
prejudiced; or
ii. the demand for the patented article has not been met to an
adequate extent or on reasonable terms; or
iii. a market for export of the patented article manufactured in
India is not being supplied or developed; or
iv. the establishment or development of commercial activities
in India is prejudiced; or
II. if, by reason of conditions imposed by the patentee upon the grant of
licences under the patent or upon the purchase, hire or use of the
patented article or process, the manufacture, use or sale of
materials not protected by the patent, or the establishment or
development of any trade or industry in India, is prejudiced; or
III. if the patentee imposes a condition upon the grant of licences under
the patent to provide exclusive grant back, prevention to challenges
to the validity of patent or coercive package licensing; or
IV. if the patented invention is not being worked in the territory of India
on a commercial scale to an adequate extent or is not being so
worked to the fullest extent that is reasonably practicable; or
133
14.02.01.03 Adjournment of application for compulsory licence in certain Section 86
cases:
(1) Where an application under section 84 or section 85, as the case may
be, is made on the grounds that the patented invention has not been
worked in the territory of India or on the ground mentioned in clause
(d) of sub-section (7) of section 84 and the Controller is satisfied that
the time which has elapsed since the sealing of the patent has for any
reason been insufficient to enable the invention to be worked on a
commercial scale to an adequate extent or to enable the invention to
be so worked to the fullest extent that is reasonably practicable, he
may, by order, adjourn the further hearing of the application for such
period not exceeding twelve months in the aggregate as appears to
him to be sufficient for the invention to be so worked:
Provided that in any case where the patentee establishes that the
reason why a patented invention could not be worked as aforesaid
before the date of the application was due to any State or Central Act
or any rule or regulation made thereunder or any order of the
Government imposed otherwise than by way of a condition for the
working of the invention in the territory of India or for the disposal
of the patented articles or of the articles made, by the process or by
the use of the patented plant, machinery, or apparatus, then, the
period of adjournment ordered under this sub-section shall be
reckoned from the date on which the period during which the
working of the invention was prevented by such Act, rule or
regulation or order of Government as computed from the date of the
application, expires.
(2) No adjournment under sub-section (1) shall be ordered unless the
Controller is satisfied that the patentee has taken with promptitude
adequate or reasonable steps to start the working of the invention in
the territory of India on a commercial scale and to an adequate
extent.
14.02.01.04 Procedure for dealing with application for Compulsory Licence: Section 87,
f. The Controller shall forthwith fix a date and time for the hearing of
the case and shall give the parties not less than ten days notice of
such hearing.
g. The procedure specified in sub-rules (2) to (5) of rule 62, shall, so far
as may be, apply to the procedure for hearing under this rule as they
apply to the hearing in opposition proceedings.
i. If the applicant requests for a hearing within the time allowed, the
Controller shall, after giving the applicant an opportunity of being
heard, determine whether the application may be proceeded with or
whether it shall be refused and issue a speaking order on the matter
as expeditiously as possible.
135
14.02.01.04 Terms and Conditions Section 90
136
14.02.01.05 Application by licensee Section 88
Where two or more patents are held by the same patentee and an
applicant for a compulsory license establishes that the reasonable
requirements of the public have not been satisfied with respect to some
only of the said patents, then, if the Controller is satisfied that the
applicant cannot efficiently or satisfactorily work the license granted to
him under those patents without infringing the other patents held by the
patentee and if those patents involve important technical advancement
or considerable economic significance in relation to the other patents, he
may, by order, direct the grant of a license in respect of the other patents
also to enable the licensee to work the patent or patents in regard to
which a license is granted under section 84.
14.02.02 License for related patents Section 91
a. At any time after the grant of a patent, any person who has the right Form-17
to work any other patented invention, either as patentee or as
licensee thereof, exclusive or otherwise, may apply to the
Controller for the grant of a license of the first mentioned patent on
the ground that he is prevented or hindered without such license
from working the other invention efficiently or to the best
137
advantage possible.
i. that the applicant is able and willing to grant, or procure the grant
to the patentee and his licensees if they so desire, of a license in
respect of the other invention on reasonable terms; and
ii. that the other invention has made a substantial contribution to the
establishment or development of commercial or industrial
activities in the territory of India.
138
deriving a reasonable advantage from their patent rights.
which may arise or is required, as the case may be, including public
health crisis relating to Acquired Immuno-Deficiency Syndrome,
Human Immune Deficiency Virus, Tuberculosis, Malaria or other
epidemics, the procedure as mentioned in Section 87 shall not apply;
provided the Controller shall, as soon as may be practicable, inform
the patentee of the patent relating to the application for such non-
application of Section 87.
14.02.04 Compulsory license for export of patented pharmaceutical Section 92A
products in certain exceptional circumstances Form-17
a) Compulsory license shall be available for manufacture and export of
patented pharmaceutical product to any country having insufficient or
no manufacturing capacity in the pharmaceutical sector for the
concerned product to address public health problems, provided
compulsory license has been granted by such country or such country
has, by notification or otherwise, allowed importation of the patented
pharmaceutical products from India.
c) The provisions of (a) and (b) shall be without prejudice to the extent
to which pharmaceutical products produced under a
compulsory license can be exported under any other provision of
this Act.
139
d) 'Pharmaceutical products' means any patented product, or product
manufactured through a patented process, of the pharmaceutical
sector needed to address public health problems and shall be
inclusive of ingredients necessary for their manufacture and
diagnostic kits required for their use.
14.02.05 Termination of Compulsory License Section 94
140
Chapter 15: Use of inventions for purposes of Government and Acquisition of
inventions by Central Government
In case of any such use of any patent, the patentee shall be paid not
more than adequate remuneration in the circumstances of each case,
taking into account the economic value of the use of the patent.
141
make, use, exercise or vend the invention or import the machine,
apparatus or other article or medicine or drug covered by such patent.
e. The right to make, use, exercise and vend an invention for the
purposes of government shall include the right to sell on non-
commercial basis the goods which have been made in exercise of that
right and a purchaser of goods so sold, and a person claiming
through him, shall have the power to deal with the goods as if the
Central Government or the person authorised by the Central
Government were the patentee of the invention.
142
15.03 Rights of third parties Section 101
a. In relation to any use of a patented invention, or an invention in
respect of which an application for a patent is pending, made for the
purposes of government-
i. by the Central Government or any person authorised by the
Central Government under section 100; or
ii. by the patentee or applicant for the patent to the order made
by the Central Government,
the provisions of any licence, assignment or agreement granted or
made between the patentee or applicant for the patent (or any
person who derives title from him or from whom he derives
title) and any person other than the Central Government, shall be of
no effect so far as those provisions -
i. restrict or regulate the use for the purposes of
government of the invention, or of any model,
document or information relating thereto, or
ii. provide for the making of payments in respect of any use of
the invention or of the model, document or information
relating thereto for the purposes of government,
and the reproduction or publication of any model or document in
connection with the said use for the purposes of government shall
not been deemed to be an infringement of any copyright subsisting
in the model or document.
b. Where the patent, or the right to apply for or obtain the patent, has
been assigned to the patentee in consideration of royalties or other
benefits determined by reference to the use of the invention then, in
relation to any use of the invention made for the purposes of
government by the patentee to the order of the Central Government,
sub-section (3) of section 100 shall have effect as if that use were
made by virtue of an authority given under that section, and any
use of the invention for the purposes of government by virtue of
sub-section (3) of that section shall have effect as if the reference to
the patentee included a reference to the assignor of the patent, and
any sum payable by virtue of that sub-section shall be divided
between the patentee and the assignor in such proportion as may be
143
agreed upon between them or as may in default of agreement be
determined by the High Court on a reference under Section103.
c. The Central Government shall pay to the applicant, or as the case may
be, the patentee and other persons appearing on the register as
having an interest in the patent such other compensation as may be
agreed upon between the Central Government and the applicant
or the patentee and other persons; or, as may, in default of
agreement, be determined by the High Court on a reference under
144
section 103 to be just having regard to the expenditure incurred in
connection with the invention and, in the case of a patent, the term
thereof, the period during which and the manner in which it has
already been worked (including the profits made during such period
by the patentee or by his licensee whether exclusive or otherwise) and
other relevant factors.
15.05 Reference of disputes to High Court regarding use/acquisition Section
102, 103
a. Any dispute as to the exercise by the Central Government or a person
authorised by it of the powers conferred by section 100, or as to terms
for the use of an invention for the purposes of government
thereunder or as to the right of any person to receive any part of
a payment made in pursuance of sub-section (3) of that section or as
to the amount of compensation payable for the acquisition of an
invention or a patent under section102, may be referred to the High
Court by either party to the dispute in such manner as may be
prescribed by the rules of the High Court.
145
regard to any benefit or compensation which that person or any
person from whom he derives title, may have received, or may be
entitled to receive, directly or indirectly in respect of the use of the
invention in question for the purposes of government.
e. In any proceedings under this section, the High Court may at any time
order the whole proceedings or any question or issue of fact arising
therein to be referred to an official referee, commissioner or an
arbitrator on such terms as the High Court may direct, and references
to the High Court in the foregoing provisions of this section shall be
construed accordingly.
146
Chapter 16: Patent Agents
147
3) Register of patent agents shall contain specimen signatures and
photographs of persons registered as patent agents.
148
16.04 Subscription and verification of certain documents by a Patent Section 128
Agent
All applications and communications to the Controller under this Act
may be signed by a patent agent authorized in writing in this behalf by
the person concerned.
16.05 Restrictions on Practice as Patent Agents Section 129
e. any person who neither resides nor has a place of business in India.
16.07 Power of Controller to remove the name of a Patent Agent: Section 130.
a. The name of any person from the Register can be removed if the Rule 116.
Controller is satisfied that:–
149
ii. he/she has been convicted of any offence and sentenced to a
term of imprisonment or has been guilty of misconduct in his
professional capacity which in the opinion of the Controller
renders him unfit to be kept in the register.
b. The Controller shall take such decision after giving that person a
reasonable opportunity of being heard and after any further
inquiry, as he thinks fit to make.
Removal of a name from the Register of patent agents-
1) The Controller may delete from the register of patent agents, the
name of any patent agent-
(a) from whom a request has been received to that effect; or
(b) when he is dead; or
(c) when the Controller has removed the name of a person
under sub-section (1) of section 130; or
(d) if he has defaulted in the payment of fees specified in rule
115, by more than three months after they are due; or
(e) if he ceases to be a citizen of India:
Provided that except under clause(a) and (b), before removing
the name of any person from the register of patent agents
under this rule, such person shall be given a reasonable
opportunity of being heard.
2) The decision of the removal of the name of any person from the
Register of Patent Agents shall be published and shall be
communicated to the person concerned.
16.08 Restoration of names of Patent Agents Rule 117
150
16.09 Alteration of names of Patent Agents Section 125
1) A patent agent may apply for the alteration of his name, address of Rule 118
the principal place of business and branch offices, if any, or the
qualifications entered in the register of patent agents, e-mail address,
telephone number, fax number or any other particulars under sub-
section (1) of section 125. On receipt of such application and the
fee specified therefor in the First Schedule for such request for
alteration of particulars, the Controller shall cause the necessary
alterations to be made in the register of patent agents.
151
Chapter 17: Offences and Penalties
If any person fails to comply with any direction given under section
35 or makes or causes to be made an application for the grant of a
patent in contravention of section 39, he shall be punishable with
imprisonment for a term which may extend to two years, or with
fine, or with both.
17.02 Falsification of entries in register, etc. Section 119
If any person makes, a false entry in any register kept under the
Patents Act or provides any writing or evidence as a result of which
the entry in the register results into a false entry, knowing the entry
or writing to be false, then he is punishable with imprisonment for
a term that may extend to two years or with fine or with both.
17.03 Unauthorized Claim of Patent Rights Section 120
If any person falsely represents that any article sold by him is
patented in India or is the subject of an Application for a Patent in
India, he shall be punishable with fine that may extend to rupees
one lakh.
17.04 Wrongful use of words, "Patent Office" Section 121
If any person uses on his place of business or any document issued
by him which would reasonably lead to the belief that either his
place of business is the Patent Office or is officially connected with
the Patent Office, he shall be punishable with imprisonment for a
term that may extend to 6 months, or with fine, or with both.
17.05 Refusal or failure to supply information Section 122
If any person refuses or fails to furnish information as required Form-27
under Sections 100(5) and 146, he shall be punishable with fine
which may go up to rupees ten lakh.
Section 100(5) provides that any person including Government
undertaking using a patented invention for the purpose of
Government has to furnish any information on the use of
invention as required by the Central Government and Section 146
provides that the patentee has to furnish a statement
regarding the working of the patented invention in a commercial
152
scale in India in Form 27. This has to be done annually within 3
months of the end of each calendar year for that calendar year. If
he furnishes false information knowingly he shall be punishable
with imprisonment that may extend to 6 months or with fine or
with both.
17.06 Practice by non-registered persons Section 123
Any person practicing as a Patent Agent without registering himself
as such is liable to be punished with a fine of rupees one lakh for
the first offence and rupees five lakh for subsequent offence.
17.07 Offences by Companies Section 124
a. When an offence is committed by a company, the company as
well as every person in charge of, and responsible to the
company for the conduct of its business at the time of the
commission of the offence, shall be deemed to be guilty and
shall be liable to be proceeded against and punished
accordingly.
153
Chapter 18: General Powers of Controller
Subject to any rules made in this behalf, the Controller in any Section 77
proceedings before him under this Act, have the powers of a Civil Rule 136
Court while trying a suit under the Code of Civil Procedure, 1908 (Act
Order
No. 5 of 1908) in respect of the following matters, namely:
XLVII of
a. Summoning and enforcing the attendance of any person and
CPC, 1908.
examining him on oath;
b. Requiring the discovery and production of any document;
c. Receiving evidence on affidavits;
d. Issuing commissions for the examination of witnesses of
documents;
e. Awarding costs;
f. Reviewing his own decision on application made within the
prescribed time and in the prescribed manner;
g. Setting aside an order passed ex-parte on application made within
the prescribed time and in the prescribed manner;
h. Any other matter which may be prescribed.
a. Any order for costs awarded by the Controller in exercise of the 77(1)(e)
powers conferred upon him is executable as a decree of a civil Rule 63,
court. In all proceedings before the Controller, costs may be 136
awarded by the Controller, as he considers reasonable, having
regard to all the circumstances of the case.
b. However, the amount of costs awarded in respect of any matter set
forth in the Fourth Schedule shall not exceed the amount
specified therein.
c. Notwithstanding anything contained in (a) above, the
Controller may, in his discretion, award a compensatory cost in
any proceeding before him which in his opinion is false or
vexatious.
18.03 Review
a. Any person considering himself aggrieved by any order or decree Section
154
of the Controller from which an appeal is allowed but no appeal 77(1)(f).
has been preferred, or from which no appeal is allowed, and who, Rule 130.
from the discovery of new and important matter or evidence Form-4, 24.
which, after the exercise of due diligence was not within his Section 114
knowledge or could not be produced by him at the time when the & Order
order or decree was passed or order made, or on account of some XLVII of
mistake or error apparent on the face of the record or for CPC, 1908.
any other sufficient reason, desires to obtain a review of the
decree passed or order made against him, may apply for a review
of the order or decree to the Controller.
155
which in the opinion of the Controller may be obviated without Corporation
detriment to the interests of any person, may be corrected if the Vs. Union
Controller thinks fit and upon such terms as he may direct. of India
ii) that the application for the patent is a direct consequence of his
being the inventor,
156
section shall be made before the grant of patent.
157
proceedings under the Act or these rules, the Controller is of the
opinion that it is necessary for a party to such proceedings to
perform an Act, file a document or produce evidence, for which
provision has not been made in the Act or these rules, he may, by
notice in writing, require such party to perform the Act, file the
document or produce the evidence specified in such notice.
b. A party desiring a hearing shall make the request for such hearing
to the Controller at least ten days in advance of the expiry of the
time-limit specified in respect of the proceeding.
158
18.08 Power of Controller to Correct Clerical Errors, etc.
159
whom the request was made, and shall give to him and to the
opponent an opportunity to be heard before he decides the case.
160
Chapter 19: General Services
a. At the request of a person (on plain paper), the Controller provides Section 153.
the following information regarding a Patent or an Application for Rule 134.
a Patent. Separate requests shall be made in respect of each item:
161
xii. as to when any Application is made or action taken
involving an entry in the Register, publication in the
Official Journal or otherwise, if the nature of the
Application or action is specified in the request.
162
h. Certified copies of any entry in the register, or certificates of, or
extracts from patents, specifications and other public documents
in the patent office, or from registers and other records including
records in computer floppies, diskettes or any other electronic
form kept there, may be furnished by the Controller on a request
therefor made to him and on payment of the fee specified
therefor in the First Schedule: Provided that certified copies shall
be issued in the order in which the request is filed.
163
India‖ has been developed and link is available on website for
both android and iOS versions. Android version could also
be downloaded from Google play store.
A link for video conferencing on website.
Feedback system
164
Chapter 20 : Scientific Advisors
(1) The Controller shall maintain a roll of scientific advisers for the 103A
purpose of section 115. The roll shall be updated annually. The
roll shall contain the names, addresses, specimen signatures and
photographs of scientific advisers, their designations,
information regarding their educational qualifications, the
disciplines of their specialisation and their technical, practical
and research experience.
(2) A person shall be qualified to have his name entered in the roll
of scientific advisers, if he-
(i) holds a degree in science, engineering or technology or
equivalent;
(ii) has at least fifteen years' technical, practical or research
experience; and
(iii) he holds or has held a responsible post in a scientific or
technical department of the Central or State Government
or in any organisation.
The panel/list is also accessible / made available on the
official website of the Patent Office at url:
www.ipindia.nic.in.
165
(3) Disqualifications for inclusion in the roll of scientific
advisers
A person shall not be eligible to be included in the roll of scientific
advisors, if he -
(i) has been adjudged by a competent court to be of unsound
mind;
(ii) is an undischarged insolvent;
(iii) being a discharged insolvent, has not obtained from the
court a certificate to the effect that his insolvency was
caused by misfortune without any misconduct on his part;
(iv) has been convicted by a competent court, whether within or
outside India of an offence to undergo a term of
imprisonment, unless the offence of which he has been
convicted has been pardoned or unless on an application
made by him, the Central Government has, by order in this
behalf, removed the disability; or
(v) has been guilty of professional misconduct.
20.03 Qualifications and Procedure for empanelment/enrollment Rule 103,
a. Any person who is qualified to have his/her name entered in the 104,105, 106
panel/list/roll of scientific advisors. However, where the
Controller is of the opinion that it is necessary or expedient to
do so, he may, by order, for reasons to be recorded in writing,
relax any of the qualifications specified above, with respect
to any person, if such person is otherwise well qualified.
b. Any person interested may apply at any time to the
Controller for inclusion of his/her name in the roll of
scientific advisors by furnishing his/her bio-data.
c. The list/roll is updated and published annually.
20.04 Removal from the roll/panel of Scientific Advisor Rule 107
a. The Controller may remove the name of any person from the
roll of scientific advisors, if—
i. such person makes a request for such removal; or
ii. the Controller is satisfied that his/her name has been
entered in the roll by error or account of
misrepresentation or suppression of any material fact; or
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iii. such person has been convicted for an offence and
sentenced to a term of imprisonment or has been
guilty of misconduct in his professional capacity and the
Controller is of the opinion that his/her name should be
removed from the roll:
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Chapter 21: Miscellaneous provisions
21.01 Affidavits
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other proceeding, a copy or impression of each exhibit shall be
supplied to the other party at his request and expense; if copies or
impressions of the exhibits cannot conveniently be furnished, the
originals shall be left with the Controller for inspection by the person
interested by prior appointment. The exhibits in original, if not already
left with Controller, shall be produced at the hearing.
21.03 Officers and employees of Patent Office – Duties Section 76
Where the hearing is held before the Controller in respect of any dispute
between two or more parties relating to an application for a patent
or to any matter in connection with a patent after the date of the
publication of the complete specification, the hearing of the dispute
shall be in public unless the Controller, after consultation with the
parties to the dispute who appear in person or are represented at the
hearing, otherwise directs.
a) Authorisation of an agent for the purposes of the Act and the rules Form-26.
shall be made in Form 26 or in the form of a Power of Attorney
within a period of 3 months from the date of filing of such
application or document, failing which no action shall be taken on
such application or documents for further processing, till such
deficiency is removed.
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upon the person so authorising and all communications directed to
be made to a person in respect of the proceeding or matter may be
addressed to such agent, and all appearances before the Controller
relating thereto may be made by or through such agent.
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Chapter 22: Time Limits
(1) Except for the time prescribed in clause (i) of sub-rule (4) of rule 20,
sub-rule (6) of rule 20, rule 21, sub-rules (1), (5) and (6) of rule 24B,
sub-rules (10) and (11) of rule 24C, sub-rule (4) of rule 55, sub-rule
(1A) of rule 80 and sub-rules (1) and (2) of rule 130, the time
prescribed by these rules for doing of any act or the taking of any
proceeding thereunder may be extended by the Controller for a
period of one month, if he thinks it fit to do so and upon such
terms as he may direct.
(2) Any request for extension of time prescribed by these rules for
doing of any act or the taking of any proceeding thereunder shall be
made before the expiry of such time prescribed in these rules.
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22.03: Time limits prescribed by the Patents Act, 1970 and Patents Rules, 2003
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15. Request for examination Forty eight months from the date of Section 11-B
filing or priority, whichever is earlier Rule 24-B
16. Request for examination, where Forty eight months from the date of Rule 24-
secrecy direction imposed filing or priority or within sixth months B(1)(iii)
from the date of revocation of secrecy
direction, whichever expires later
17. Request for examination Forty eight months from date Rule 24-
(Divisional Application) of filing or priority of first mentioned B(1)(iv)
application, or within six months
from date of filing of further
application, which ever expires later.
18. Time within which Examiner Ordinarily within one month but not Rule 24-
makes report to Controller exceeding three months from the date B(2)(ii)
of such reference
19. Controller disposes off the Ordinarily within one month from the Rule 24-B(2)
report of Examiner date of receipt of report (iii)
20. First Examination Report (FER) Within one month from the date of Rule 24-B(3)
to be sent by the Controller to disposal of the report of examiner by
applicant the Controller
21. Time for complying with all Six months from the date Of issuance Section 21(1)
requirements imposed by the of the FER Rule 24-B(5)
Act
22 Extension Time for complying Maximum extension up to three months Section 21(1)
with all requirements can be availed only once, on a request Rule 24-B(6)
made in Form 4 , if requested before
the expiry of prescribed time under Rule
24B(5)
23. Time, after publication, before Six months from the date of Rule 55(1A)
Expiry of which no patent is publication
granted
24 Pre-grant opposition Any time before the grant of patent Section 25(1)
25. Reply statement and evidence by Three months from the date Of notice Rule 55(4)
applicant (pre-grant opposition) of the Controller
26. Decision by Controller upon Ordinarily within one month Rule 55(5)
pre-grant opposition from completion of the proceedings
27. Notice of opposition (post-grant Before the expiry of one year from the Section 25(2)
opposition) date of publication of grant of patent
28. Reply statement by patentee Two months from receipt of Rule 58(1)
opponent‗s written statement
29. Reply evidence by opponent One month from date of delivery of Rule 59
patentee‗s reply statement
30. Opposition Board submits Three months from the date on which Rule 56(4)
report documents were forwarded to the Board
31. Periodical review of secrecy Every six months Section 36(1)
directions
32. Controller disposes permission Within a period of twenty-one days Section 39
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for filing abroad from the date of filing of such request Rule 71
33. Time after which no permission Six weeks after filing the Section 39(1)
is required for filing abroad application in India, where no direction
for secrecy is imposed or application
has not been referred to Department
of Atomic Energy (DAE)
34. Payment of due renewal fee, Three months from the date Section 142(4)
where patent has been granted of recordal in Register of Patents
after the expiry of two years
from date of filing
35. Extension in time for payment Extendable by maximum six Section 142(4)
of renewal fee, where patent has months
been granted after expiry of two
years from date of filing
36. Time for payment of the Before expiry of the nth year from Rule 80(1)
renewal fee date of patent in respect of the (n+1)
th year
37. Extension in time for payment Maximum six months Rule 80(1A)
of renewal fee
38. Application for restoration of Eighteen months from the date of Section 60
patent cessation of the patent
39. Request for hearing by an One month from date of intimation by Rule 84(2)
applicant for restoration, where the Controller
prima facie case has not been
made out
40. Notice of Opposition against One month from date of publication Rule 85(1)
restoration of application for restoration
41. Payment of the unpaid renewal One month from date of order Rule 86(1)
fee and additional fee when
restoration allowed
42. Notice of Opposition against an Three months from the date Of Rule 87(2)
offer to surrender a patent publication of offer
43. Notice of Opposition against Three months from the date of Rule 81(3)(b)
application for post-grant publication of such application
amendment
44. Furnishing information relating Three months from the end of Section
to working of patent in respect each calendar year 146(2),
of the calendar year Rule 131 (2)
45. Furnishing information relating Two months from the date of notice Section 146(1)
to working of patent, upon
notice of Controller
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