AICTE-NITTT e-Content

HIGHER LEVEL MODULE

HM-06
INTELLECTUAL PROPERTY RIGHTS (IPR)

Coordinator: Prof. P.K. Purohit

Co-Coordinator: Prof. C. S. Rajeshwari
Expert
Dr. Mohit Gambhir
Faculty
Prof. Nishith Dubey
Prof. Sharad Pradhan

Unit 2
Patents and Filing of Patents
Lesson 2.2: Filing A Patent in India: From Filling to Grant A Patent in India
Term, Secrecy, Restoration, Surrender And Infringement Of Patent
By
Prof. P.K. Purohit

National Institute of Technical Teachers’ Training and Research (NITTTR)

Shamla Hills, Bhopal (M.P.), India - 462002
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 2.2 Filing A Patent in India: From Filling to Grant A Patent in India 16-26
2.2.1 Filing A Patent in India: From Filling to Grant A Patent in India
2.2.2 Steps involved in obtaining a patent
2.2.3 Abandonment of applications
2.2.4 Patent of addition
2.2.5 Patent Opposition System

2.2.5 Term, Secrecy, Restoration, Surrender And Infringement Of Patent 26-33

2.2.6 Difference Between India And Us Patent System 34-39

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2.2 FILING A PATENT IN INDIA: FROM FILLING TO GRANT A PATENT IN INDIA
2.2.1 Filing A Patent in India: From Filling to Grant A Patent In India
The entire patent process in India takes anywhere from 3 to 5 years and entails a series of steps
that must be completed within specific time frames in order to obtain a patent in India. Failure
to meet such deadlines may result in the rejection of your patent application. The process for
obtaining a patent in India, as well as the estimated durations involved in the patent process,
will be covered in detail in this unit number two. To provide fast and improved procedural
efficiency Patent Office has been equipped with IT enabled devices.
A complete procedural guide for practitioners can be found in the manual of patent office
practise and procedure contains a detailed procedural guidance for practitioners and other
users of the Indian patent system is available on the website
(https://ipindia.gov.in/writereaddata/Portal/News/505_1_Draft_Manual_Of_Patent_Office_Pr
actice_And_Procedure_01-03-2019.Pdf). Before you begin the patent application process, you
must decide whether you will seek the help of a patent professional or complete the process on
your own.
There are two aspects to consider when it comes to the cost of acquiring a patent:
• Forms and renewal costs charged by the government
• If you decide to hire an agent, you will be responsible for the professional fees.

2.2.2 STEPS INVOLVED IN OBTAINING A PATENT:

STEP 01: INVENTION DISCLOSURE
Obtaining a patent through a registered agent/firm is always advised. If you opt to hire a
professional, make sure you sign a Non-Disclosure Agreement (NDA) with the patent specialist /
firm before telling them about your idea. It's a good idea to keep all of your communications
with third parties discreet and to sign NDAs with each of them.

STEP 02: PATENTABILITY SEARCH

Now the next step is how to check that my invention is patentable or not. Here we have to
check the patentability search for similar technologies. At this stage, a professional usually costs

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a fee (about INR 10,000 to INR 20,000). At this point, your expert does a thorough search of all
available databases for earlier evidence. He or she also creates a patentability report based on
your invention. People may readily check to see if an invention has already been patented. The
United States Patent and Trademark Office (USPTO) compare your idea against existing and
pending patents. If your patent is too close to an existing invention, it will most likely be
refused, and you will lose your application money.

STEP 03: DECISION TO FILE AN APPLICATION FOR PATENT

This is when the real work starts. You can decide whether to proceed with the patent
application submission after conducting thorough research into (any) existing history of your
innovation. To be eligible for a patent, your innovation must have a ‘inventive step' as
compared to existing prior art works. It must be superior to any existing work of art in terms of
either "technical advanced" or "economically significant," or both.

STEP 04: PATENT DRAFTING

Patent drafting is the process of deciding whether or not to proceed with the filing procedure
by writing an application. You can either draught the application yourself or hire an expert to
assist you. If you opt to seek assistance, expect to pay between INR 20,000 and INR 30,000. This
is one of the most important steps in the whole procedure. It necessitates both technical and
legal knowledge. All of your efforts will be wasted if the document is not written correctly. As a
result, it's a good idea to seek professional assistance.
The patent draft is your representation before the patent office, and the patent office will
decide whether or not to grant the patent based on the draft. As a result, failing to correctly
draft a patent draft may result in a patent application that is denied. It's preferable to work
with a patent agent who knows how to work with and prosecute patent applications in your
field of technology.

STEP 05: FILING THE PATENT APPLICATION

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Once you've decided to proceed with the patent application process, you'll need to draft an
Indian patent application (form 1). A patent specification is required to accompany every patent
application (form 2). If you want to patent your idea, there are a few things you should know.
You can file a provisional or a complete patent application (in some countries also known as
Non-provisional) depending on the state of the invention.
If the invention is still in development and tests are underway, it is a good idea to file a
provisional application as soon as possible to get early filing date. You have 12 months from the
time you file the provisional application to test and finalize your innovation before filing the
entire complete application. You can register a patent application using the correct forms and
fees in the prescribed manner. When filing a patent application to the patent office, you have
to pay fees of INR 1,600, 4,000, or 8,000 (depending on the type of application). If you do not
seek early publication, the patent application will be published when the 18-month period has
passed. In India, all forms and fee information related to patent can be found on the website
https://ipindia.gov.in/form-and-fees.htm.
Any person, even if he or she is a minor, can apply for a patent on his or her own or in
collaboration with others. The inventor, or his assignee or legal representative in the case of an
ordinary application, or the applicant in the convention nation, or his assignee or legal
representative in the case of a priority application. It is not possible to name a corporation as an
inventor. For this purpose, foreigners and nationals who do not live in India require an address
in India. They can select a registered agent or representative, whose service address can be in
India. In the first instance, a priority application must be filed with a complete specification, but
a non-priority application can be filed with either a provisional or a complete specification.

PATENT FILING IN INDIA CAN HAPPEN IN THE FOLLOWING SCENARIOS:

First filing in India – After drafting of the patent application, the next step is to file the patent
application in India and obtain a filing date. If you file a provisional application first, you have 12
months from the provisional filing date to file the complete application. A patent application
must be filed with the Patent Office branch in whose geographical jurisdiction the applicant

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resides, has his major place of business, or has his domicile. A foreign applicant must submit
with the Patent Office branch responsible for the location of his or her address for service.

Foreign filing decision – If you want to protect your innovation in a foreign jurisdiction, you
have 12 months from the date of your first filing to do so. You can file a convention application
in each of the countries where you want to protect your idea individually, depending on which
countries you want to protect your innovation in. You can also reserve your claim in 153-
member nations by using the Patent Cooperation Treaty (PCT) system.

FOREIGN APPLICATIONS ENTERING INDIA

The Paris Convention for the Protection of Industrial Property, 1883, and the Patent
Cooperation Treaty (PCT), 1970, are both signed by India. If the patent application was
originally submitted in a foreign country and the patent applicant desires to file a patent
application in India utilizing the Paris Convention route or the PCT route, the time limit to enter
India is 12 months and 31 months, respectively. In this situation, the priority date is the date on
which the basic application was submitted in the convention nation, i.e. the home country.

The following forms must be submitted with each patent application to the Indian Patent
Office:
➢ Form 1 – Application for grant of a patent
➢ Form 2 – Provisional/Complete specification
➢ Form 3 – Statement and undertaking regarding foreign application under section 8 (only
required if a corresponding patent application is filed in another country)
➢ Form 5 – Declaration as to inventorship (only to be filed along with the complete application)
➢ Form 26 – Form for authorization of a patent agent (Only if you hire a patent attorney/agent
to assist you in filing your application this information is essential.)
➢ Form 28 – To be submitted by startup or small entity (Only if you're claiming startup or small
business status this information is required.)

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➢ Priority documents – If you are entering India and claiming priority from a foreign patent
application, you may be asked to present the priority document as well.

STEP 6 – PUBLICATION OF PATENT APPLICATION

When is it published? – Patent applications are usually published after 18 months at the Indian
Patent Office. Until it is published in the official patent journal, every patent application filed
with the Indian patent office is kept confidential. This is a one-time event for which you do not
need to make a request. If you want your application to be published sooner, you can submit a
request for early publication (Form 9) and it will usually be published within one month of your
request. The advantage of publication – The date of publication is significant since your
privileges and rights begin on that date, however you won't be able to enforce them through
infringement action until your patent is granted. When not published – It's also important to
understand that a patent application may not be disclosed and kept confidential in certain
circumstances:

Under the patent legislation, secrecy orders have been imposed. If the invention falls into a
category where its dissemination would be detrimental to the nation's interests, secrecy orders
are issued. A complete application was not filed within 12 months of the provisional
application's filing date. A withdrawal request was submitted. A withdrawal request must be
made at least three months before publication. In a conventional patent application process, it
takes 15 months from the date of priority to receive a patent.

STEP 07: REQUEST FOR EXAMINATION

Every patent application which is filed for protection has to be substantively examined before a
patent is finally granted. The examination process is where your patent application will finally
be examined on merits of the invention as described and claimed in the patent specification.
The examination process begins with the submission of a request for examination. This is not an
automatic procedure, unlike publication. The controller transfers the patent application to the
patent examiner only after receiving the Request for Examination (RFE). The applicant has to

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specifically make a request for examining their patent application (Form 18). The application
will be queued for inspection after a request for examination (RFE) is received. As a result, the
sooner you submit an RFE request, the sooner the examiner will be able to review your
application. If you want to speed up the evaluation of your patent application you can file a
request for early examination (Form 18A).

An early examination is only available to the applicant if the applicant is either a startup; or the
applicant chose the Indian Patent Office as the International Search Authority (ISA) or
International Preliminary Examining Authority (IPEA) during their international application (PCT
application). You may sometimes not want to get your application examined early for strategic
reasons. Deferring the request could be for a variety of reasons, including prolonging the
patents pending life, waiting for funds, and so on.

EXAMINATION PROCESS (OBJECTIONS BY EXAMINER & RESPONDING TO OBJECTIONS)

Once the Request for Examination has been submitted, it will be forwarded to an examiner
with a relevant technology background for review. The examiner will study the application
during the examination process to ensure that it complies with the patent legislation and
guidelines. The examiner also does research to learn about related technologies in order to
determine whether the invention meets the patentability requirements. The examiner will issue
an Examination Report to the applicant after reviewing the application and noting the grounds
for objections. The First Examination Report is the first of these examination reports (FER).

After receiving the FER, the patent applicant must overcome the objections in order to secure a
patent grant. Responding to examination reports, attending for hearings, and so on are all
possible parts of the process. From the day the FER is provided to the applicant, the total period
required to prepare an application for the grant is 6 months (formerly 12 months). The
applicant can request a three-month extension of this six-month period by making a request for
an extension of time (Form 4).

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STEP 08: RESPONDING TO OBJECTIONS (IF ANY)
At this stage, the draft and report presented to the patent office personnel are fully inspected.
At this point in the evaluation, the inventor has the option to describe his novelty or inventive
step in comparison to any other piece of art discovered. If everything is clear and solved, the
patent application is almost ready to be implemented.

STEP 09: GRANT OF PATENT

The application is placed in order for the grant if it meets all of the requirements. The
application for the grant of patent is found to be in order when: -

➢ The Controller has not refused the application because of any power conferred with him by
this act.; or
➢ None of the provisions of this legislation have been found to be violated by the application.
A patent will be awarded to the applicant or, in the case of a joint application, to both
applicants jointly, with the seal of the patent office, and the date of grant will be recorded
in the register. Usually, the final grant of the application is notified through a journal that is
published. Once, the patent application overcomes all the objections, the patent will be
granted and published in the patent gazette.

STEP 10: RENEWAL OF PATENT

The patent must be renewed every year by paying the renewal cost once it has been granted. A
patent in India can be renewed for up to 20 years from the date of filing.

2.2.3 ABANDONMENT OF APPLICATIONS:

After the application or complete specification has been referred to the applicant by the
controller, together with the statement of objections, and the applicant fails to comply with the
requirements within a period of twelve months, the patent application is deemed abandoned.
If an appeal is pending, the Intellectual Property Appellate Board can set a new deadline for
compliance with the Controller's requirements, beyond which it will be considered abandoned.

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2.2.4 PATENT OF ADDITION:
After the creation of an invention, it is common for the invention to be improved or modified.
Improvements or changes might happen naturally as part of the innovation process or as a
result of market or industry input. In such circumstances, where the invention is already
protected by a patent, a “patent of addition” in India may be used to protect the improvement
or modification over the original patented product or procedure.
Patent of addition is a patent granted for the improvement or modification of patent or an
invention. As a result, anyone who has applied for a patent or who has previously secured a
patent can apply to the Controller for any improvement or modification to an invention. So,
patent of addition protects the improvements or modifications of the invention in an already
filed patent application or to the patent granted. Term of patent of addition shall be equal to
that of the main patent or to the remaining period of the main patent and ends with the main
patent. Every patent of addition is a separate patent that must be registered in the same way as
the original patent. Patent of addition will be granted or will not be revoked or invalidated even
though invention in the main patent does not involve any inventive step. A patent of addition
shall have the same term as the main application, remain in effect for the same period as the
main application, and expire at the same time as the main application. A patent of addition
does not require a separate renewal cost. Every patent of addition is an independent patent
and all the procedure of registration of main patent is followed. Patent of addition will be
granted or will not be revoked or invalidated even though invention in the main patent
application does not involve any inventive step.

PROCEDURE FOR GRANT OF A PATENT IN INDIA

The following flow chart might help you understand the patent award procedure in India:

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 PROCEDURE FOR THE GRANT OF PATENT

Filling of Application With Provisional Specification Complete Specification not Filed

With Complete Specification Abandoned

18 Months Publication Request for Examination First Examination Report (FER)

Pre-Grant opposition Hearing Opposition allowed/rejected Reply to FER & Refilling of

Amended documents

Objections not complied with in 12 months Re examination and issue of further objections

Abandoned Hearing by Controller Complete With All Objections

Specification
Appeal to IPAB Refused Order/Decisions

Refused Appeal Allowed Patent Grant

No Opposition Grant Publication

Constitution of Opposition Board Post grant Opposition

Demand of Renewal Fees

Opposition
Submission of Hearing By Controller

Dismissed
report to
Renewal Fees not paid Renewal Fees paid Controller Opposition Allowed
Patent ceased Patent continues Appeal to
Appeal allowed
till 20 yrs IPAB

2.2.5 PATENT OPPOSITION SYSTEM

There are two alternatives for submitting an opposition under the Indian Patent Act, depending
on the status of the patent: pre-grant objection or post-grant opposition. The Indian Patent
System was transformed on January 1, 2005, when India signed the Trade Related Aspects
Intellectual Property Rights (TRIPS) agreement, which required Section 25 of the Act to be
amended in light of the TRIPS agreement to introduce a "integrated" system of both pre-grant
and post-grant opposition in India.

PRE-GRANT OPPOSITION
Any person or any third party or Government may file a representation for pre-grant opposition
under Section 11A of the Patents Act, 1970, as amended (the "Patents Act"), within six months
of the date of publication of the application, or before the grant of the patent. The grounds for
filing a representation are specified in Section 25(1) of the Patents Act. Filing pre-grant

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opposition representation is free of charge. A representation for pre-grant opposition can be
lodged even though no request for examination has been made. However, if a request for
examination is received within the time limit, the representation will be considered.

POST-GRANT OPPOSITION
Any interested party has twelve months from the date of publication of the patent grant in the
patent office's official journal to file a post-grant opposition.

GROUNDS FOR OPPOSITION

The following are some of the reasons for filing pre- and post-grant opposition:
➢ A patent that was obtained incorrectly;
➢ Previous publication;
➢ Prior to the priority date of such claim, the invention was already in the public domain
or had been publicly used in India,
➢ The invention is self-evident and does not involve any inventive step,
➢ The subject of any claim is not an invention as defined by this Act or patentable as
defined by this Act.
➢ Inadequate disclosure of the invention or the method for carrying it out
➢ That the application for a patent granted on a convention application was not made
within twelve months of the date of the first application for protection for the invention
made in a convention country or in India
➢ That the full specification fails to reveal or the source and geographical origin of
biological material used in the invention are wrongly stated.
➢ That the innovation was foreseen based on oral or written knowledge available in any
local or indigenous population in India or abroad.

PROCEDURAL DIFFERENCES BETWEEN PRE GRANT AND POST GRANT PATENT OPPOSITION IN
INDIA
Both pre-grant and post-grant oppositions are nearly similar grounds for preceding. Despite
their similarities, there are a number of procedural differences between the two types of

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opposition. The most significant distinction between pre-grant and post-grant opposition is that
pre-grant procedures may be launched by "any person," whereas post-grant opposition can
only be brought by a "person interested”. Infringement proceedings can only be started in post
grant opposition, 25(1) of the Act does not openly allow the patent applicant an opportunity to
be heard in a pre-grant opposition. The right to be heard by the opponent is only up to the
Controller's discretion; the rules are also unclear as to whether the opponent will be heard in
the presence of the applicant. In a post-grant opposition, however, the opponent can proceed
with the case regardless of the merits of the notice of opposition. Pre-grant opposition, is more
cost-effective and results in a faster disposition of cases on the merits, lowering the expense of
post-grant litigation.

2.2.5 TERM, SECRECY, RESTORATION, SURRENDER AND INFRINGEMENT OF PATENT

TERM OF PATENT
Every patent in India is valid for twenty years from the date of filing, whether it is filed with a
provisional or complete specification. The term of twenty years commences from the
international filing date in the case of applications filed under the Patent Cooperative Treaty
(PCT). It's worth noting that a patentee must renew their patent every year by paying a renewal
fee, which can be paid annually or in one lump sum.

RESTORATION OF PATENT
A request for patent restoration, along with the requisite fee, must be submitted within
eighteen months after the patent's expiration date. After it is received, the item is notified in
the official journal for further processing of the request.

WORKING OF PATENTS:
Every patentee and licensee must provide, within three months of the end of the calendar year
in which the patent is granted, a declaration detailing the extent to which the innovation was
worked on a commercial scale in India during the prior year. It is a criminal offence to fail to file
this statement. An interested person may apply to the Controller for a compulsory license after

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three years from the date of the patent's sealing, claiming that the invention does not meet the
reasonable requirements of the public or that it is not available at a reasonable price. An
interested party may request the granting of a compulsory license from the Controller three
years after the patent's sealing date, arguing that the invention does not meet the reasonable
requirements of the public or is not available at a reasonable price.

COMPULSORY LICENSE
If the Controller finds that the public's reasonable requirements for the patented innovation
have not been met, or that the patented innovation is not available to the public at a
reasonable price, he may compel the patentee to grant a license under any terms he deems
appropriate. However, the Controller of Patents must consider the following conditions before
issuing a compulsory license:
➢ The nature of invention;
➢ The amount of time since the patent was sealed;
➢ The steps taken so far by the patentee or licensee to fully utilize the innovation;
➢ The applicant's ability to use the invention for the benefit of the public.
➢ Whether or not the applicant attempted to obtain a license from the patentee on acceptable
terms and conditions;
➢ National emergency or other circumstances of extreme urgency;
➢ Public noncommercial use;
➢ Establishment of a ground for the patentee if the compulsory license application is granted;

Compulsory licenses are not available on a first-come, first-served basis because they are
subject to the aforementioned conditions as well as the Controller of Patents' judgment. Any
arbitrary or illegal order for the issuance of a compelled license by the Controller of Patents can
be challenged in court.

MARKING:

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It is not required, but it is recommended because otherwise, damages in cases of infringement
may be difficult to recover. The term "Patent" may be written on the invention, together with
the patent number and year.

INFRINGEMENT:
A patentee or his exclusive licensee can file an infringement lawsuit. In infringement
proceedings, any reason for revocation is offered as a defense, and revocation can be
counterclaimed. Even if one or more other claims in the suit are found to be invalid, the Court
may provide relief in respect of a valid claim or claims. Damages and expenses may be granted
by the court as part of the relief. A prohibitory order and damages may be sought in cases
where threats have been made that are unjustified. A suit for declaration of non-infringement
of a patent may be filed by anyone. The burden of proof is on the defendant to show that there
is no violation. In India, patent infringement procedures can only be started after the patent has
been granted, but they can include a claim that dates back to the date of publication of the
patent application. When a patented invention is created, imported, used, offered for sale, or
sold without permission within India, it is called patent infringement. The (Indian) Patents Act,
1970 allows only a civil action to be launched in a court of law.

PATENTS AND COMPUTER SOFTWARE

It is possible to patent computer programmes that generate a "technical effect or contain
hardware" when run on a computer. A programme that does not have a technical impact when
performed on a computer, on the other hand, is unlikely to be patentable. A technical impact is
usually a technological advancement, and it must be in a patentable field of technology. For
example, enhanced software for translating between Japanese and English, is not patentable
because linguistics is a mental process rather than a technological area. A programme that
speeds up image enhancement, may be patentable since it results in a technical improvement
in a technological domain. Countries like USA, have a more liberal approach to software
patenting and often grant patents for software, which would be excluded in India and other

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countries. It is difficult to decide a particular computer program is patentable or not. Patent
Agent may help to determine the most effective form of protection available is.

PATENT OF BIOLOGICAL MATERIAL

It is important to deposit a novel biological material with the International Depository Authority
("IDA") prior to filing the application in India so that the description can be enhanced. It is not
necessary to deposit biological materials if such materials are already known. Institute of
Microbial Technology is the name of the IDA in Chandigarh, India (IMTECH).

RIGHTS GRANTED BY PATENT

If a product receives a patent, the patentee has the legal right to ban others in India from
manufacturing, using, offering for sale, selling, or importing the patented product. If the patent
covers a process, the patentee has the right to restrict others from using the process or the
product that results from it. It's crucial to know "What isn't Patentable in India" before filing a
patent application in India. In unit one of this module we have already studied about the non-
patentable inventions in India. In India, an Invention that is frivolous, obvious, violates well-
established natural rules, or is harmful to public health is not patentable. Atomic energy-related
inventions are likewise prohibited.

MAINTAINABILITY OF SECRECY BY THE INDIAN PATENT OFFICE (IPO)

All patent applications are kept confidential for eighteen months from the date of filing or
priority date, whichever comes first, before being published in the Patent Office's Official
Journal, which is published weekly. Following the publication of the patent application, the
public is entitled to see the documents and obtain a photocopy for a charge.

SURRENDER OF PATENT:
The patentee may offer to renounce his patent at any moment by filing an application on plain
paper. When the Controller receives such an offer, he or she publishes it in the Official Journal
and notifies everyone whose name appears in the register as having an interest in the patent

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(excluding the patentee). Any individual interested may file an opposition to the offer to
surrender the patent in Form 14 (in duplicate) within three months after the date of publication
of the offer in the Official Journal. On receipt of such notice, the Controller shall notify the
Patentee.If the Controller accepts the patentee's offer to surrender the patent, he may direct
the patentee to return the patent, which the Controller will cancel by order and publish in the
official journal upon receipt. The method for filing a written statement, responding to the
written statement with evidence, and hearing the objection is similar to that for opposing the
award of patents under Rules 57-63.

REVOCATION OF PATENTS. —
Revocation is cancellation. Revocation of patent means cancelling or putting an end to the term
of patent. Grant of patent is not absolute.
➢ A patent may be cancelled on a petition of any person interested or the Central
Government, or on a counter-claim in a suit for patent infringement by the High Court,
on any of the following grounds,
➢ that the invention was claimed in a valid claim of earlier priority date contained in the
complete specification of another patent granted in India, insofar as claimed in any
claim of the complete specification and
➢ that the patent was obtained in violation of the petitioner's or any person under or
through whom he claims rights; • that the patent was issued on the application of a
person who was not permitted to apply for it under the provisions of this Act;
➢ that the subject of any claim of the complete specification is not an invention as defined
by this Act;
➢ that the invention is not new in the sense that it is claimed in any claim of the complete
specification, in light of what was publicly known or publicly used in India prior to the
priority date of the claim, or what was published in India or elsewhere in any of the
documents referred to in section 13:
➢ Insofar as it is asserted in any claim of the complete specification, the invention is
obvious or does not involve any creative step, having regard to what was publicly known

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 or publicly used in India or what was published in India or abroad before the priority
date of the claim:
➢ that the invention is not useful in the sense that it is claimed in any claim of the full
specification;
➢ The Indian Patent Office has objected to the application for a patent relating to an
invention It said the description of the method and instructions for the working of the
invention were not sufficient to enable a person in India possessing average skill in, and
average knowledge of, the art to which it relates, to work the invention
➢ that the scope of any complete specification claim is not sufficiently and clearly
specified, or that any complete specification claim is not fairly founded on the subject
revealed in the specification;
➢ that the patent was secured by a deceptive representation or suggestion;
➢ that under this Act, the subject of any claim in the full specification is not patentable;
➢ that the invention, insofar as it is claimed in any claim of the full specification, was
secretly employed in India before the priority date of the claim, unless otherwise
specified in sub-section (3);
➢ that the patent applicant omitted to disclose to the Controller the information required
by section 8 or provided information that was untrue to his knowledge in any material
detail;
➢ that the applicant violated any confidentiality order issued under section 35, or that the
applicant submitted or caused to be filed an application for a patent outside India in
violation of section 39;
➢ that the permission to amend the entire specification under section 57 or section 58
was gained via fraud
➢ that the full specification fails to reveal or incorrectly mentions the source or geographic
origin of biological material used in the invention;
➢ that the invention was anticipated in so far as it was claimed in any claim of the full
specification, taking into account any oral or written information available within any
local or indigenous population in India or elsewhere.

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 FOR THE PURPOSES OF CLAUSES (E) AND (F) OF SUB-SECTION (1)—
➢ No personal document, secret trial, or secret use shall be taken into consideration; and
➢ Where the patent is for a process or a product made by a process described or claimed,
the importation into India of a product made abroad by that process on the date of
importation constitutes knowledge or use of the invention in India, unless the importation was
for the purpose of reasonable trial or experiment only.

FOR THE PURPOSE OF CLAUSE (1) OF SUB-SECTION (1), NO ACCOUNT SHALL BE TAKEN OF
ANY USE OF THE INVENTION—
➢ just for the purpose of carrying out a reasonable trial or experiment; or
➢ by the Government or any person authorized by the Government or by a Government
undertaking, as a result of the applicant for the patent or any person from whom he
derives title having communicated or disclosed the invention directly or indirectly to the
Government or any person authorized as aforesaid or to the Government undertaking;
or
➢ by any other person, as a result of the applicant for the patent or any person from
whom he derives title having communicated or disclosed the invention directly or
indirectly to the

On the Central Government's petition, the High Court may cancel a patent, without prejudice to
the terms of sub-section (1), if the High Court is satisfied that the patentee has failed to comply
with the Central Government's request to make, use, or exercise the patented invention for the
purposes of Government within the meaning of section 99 upon reasonable terms. A notice of
any petition for revocation of a patent under this section must be served on all persons
appearing in the register to be the patent's proprietors or to have shares or interests in it, and
no other person must be served.

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 TYPES OF PATENT
APPLICATIONS

Provisional Non-Provisional
Application Application

Conventional PCT PCT National Application Divisional

Application International Application for Patent Application
Application of Addition

TERRITORIAL JURISDICTIONS ARE AS UNDER: PATENT OFFICE

Patent Office Territorial Jurisdiction

Mumbai The States of Gujarat, Maharashtra, Madhya Pradesh, Goa,
Chhattisgarh, the Union Territories of Daman & Diu and
Dadra & Nagar Haveli
Delhi The States of Haryana, Himachal Pradesh, Jammu and
Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand,
National Capital Territory of Delhi and the Union Territory of
Chandigarh.
Chennai The States of Andhra Pradesh, Karnataka, Kerala, Tamil
Nadu, Telangana and the Union Territories of Pondicherry
and Lakshadweep.
Kolkata Rest of India (States of Bihar, Jharkhand, Orissa, West
Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura,
Nagaland, Arunachal Pradesh and Union Territory of
Andaman and Nicobar Islands)

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2.2. 6 DIFFERENCE BETWEEN INDIA AND US PATENT SYSTEM
The United States adopts a more demonstrative approach, stating what CAN be patented. On
the other hand, India's patent regulations specify what cannot be patented. Minor adjustments
or extensions to patents that have already been awarded are not permitted under Indian law.
The patent laws in the United States, on the other hand, provide for this flexibility. The Indian
Patent Law is based on the first-to-file system. An inventor who files an application with the US
Patent Office receives a US patent, whereas an inventor who files an application with the Indian
Patent Office receives an Indian patent.

A patent issued by a patent office is only valid within the country's geographical boundaries.
If the same inventor of the US patent has not submitted an application for patent award in
India, the US patent is solely valid in the United States and has no effect in India. If the
invention became publicly available in any way before the patent application was filed in the EU
(Article 54 EPC) or in India (Sections 2(l), 29, 30, and 31 of the Patents (amendment) Act, 2005),
the application will be denied.

The United States Patent and Trademark Office (USPTO or Office) is a department of Commerce
of the United States government. The USPTO's main function is to grant patents and register
trademarks in order to protect inventions. It protects inventors' and businesses' interests when
it comes to their inventions, company products, and service identifications.

What all patents have in common is that they hand over all of a product's rights to the
patentee, allowing him or her to profit from their device or product for a certain duration of
time. The distinctions occur in terms of what can be patented and how the process is carried
out. The biggest distinction between the two countries' legal systems stems from the manner
the laws are expressed.

The Utility patent is a type of patent used in the United States. This provides for the patenting
of a process or machine discovery as long as it is unique, valuable, and unobvious. In India,
however, this is not the case. The simple discovery of a process, machine, or product is not

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patentable under Indian law. India also prohibits the sole patenting of software. For software to
be patented, it must be accompanied by hardware or computer innovations. This is not the case
in the United States. Software patents are granted in the United States.

Compulsory Licensing (CL) allows an individual or company to use another's intellectual

property without first obtaining the rights holder's permission and paying a specified charge to
the rights holder. Both the United States and India allow compulsory licencing. Plant Patents
allow one to patent the discovery or invention of a novel plant in the United States. There is no
similar provision in India.

In the United States, new and creative business models can be patented. This is also not
permitted in India.

The above comparison shows that the patent laws in the United States are more flexible than
those in India. This is due to country-specific restrictions on what can be patented. This is where
the definition of 'non-obviousness' comes into play. The term "non-obviousness" refers to the
fact that the invention is unfamiliar to anyone else with the same expertise. Naturally, because
perceptions differ from person to person, the definition of such a phrase must adhere to well-
defined principles.

An invention is considered non-obvious under Indian patent laws if it is a new product or

technique involving an inventive step and capable of industrial application. Patenting anything
that is already well-known is impossible. If an invention is not part of the state-of-the-art, or the
public domain knowledge, it is regarded new on the priority date. Previous written or oral
disclosure of the invention, or any other method of thinking about the knowledge available in
the public domain before the date of filing of the patent application, qualifies the invention as
prior art or state of the art.

If an invention has an industrial application, it is patentable. While the two definitions are close,
they are not the same. In the United States, one of the key requirements for patentability is

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that the patented invention is not obvious, which means that a "person of ordinary skill in the
art" would not know how to solve the problem addressed by the invention using the same
technique. In the United States, the testing technique is much different. It begins by compiling a
list of all earlier inventions that are similar. The programme then compares the two and
highlights the differences. Then there are the secondary features, which may or may not be
visible. Even if the device itself is obvious, if the secondary features added are non-obvious, the
device can be patented.2.7.1 How to File a Patent in USA

1. SEARCH THE UNITED STATES PATENT AND TRADEMARK OFFICE. Use this search engine to
make sure your concept hasn't already been patented before you spend another dime or
minute of your time. Using the USPTO's resource, make sure your idea is patentable.

2. FIND A PATENT ATTORNEY. With the guidance of an expert attorney, the application process
may be made much easier, and you can avoid making costly mistakes in the future.

3. DETERMINE WHAT TYPE OF PATENT YOU NEED. Do you require a patent for a utility, design,
or plant? This will help you through the patent application procedure.

4. FILE A PROVISIONAL PATENT APPLICATION. This offers a layer of protection in case someone
later claims they had the idea before you did. The United States patent system is based on the
first-to-file system, not the first-to-invent approach.

5. BECOME A REGISTERED E-FILER. You can file your patent application by mail or fax, however
the USPTO website is the most convenient way to do so. Get your e-filer account set up and
familiarize yourself with their most recent filing materials to ensure you understand what is
expected of your application.

6. GATHER INFORMATION FOR YOUR FORMAL APPLICATION. You'll need to write a

specification that comprises an abstract, background information, a summary, a full description,
and your conclusion, which should contain the implications and scope. You'll also need to

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specify the legal scope of your patent, and unless you're quite certain you have the abilities and
knowledge to handle this on your own, hiring an experienced patent attorney is always
advisable.

7. COMPLETE AND REVIEW YOUR FORMAL APPLICATION. A patent application typically takes
one to three years to process. If you don't want it to be rejected due to little mistakes, so try to
make it perfect in first time.

8. Participate in the patent process. Your case will be assigned to one patent examiner.
Respond as soon as possible if you receive letters or requests from them. USPTO will
communicate directly with your attorney. To expedite the process one can, contact to patent
examiner proactively to schedule an interview to address any of doubt or questions of
examiner. It can be done through video conferencing. You can submit an appeal with the Patent
Trial and Appeal Board if your application is refused twice.

FOREIGN FILING OF PATENT APPLICATION (International Patent Filling)

Patent applications must be filed in India or get Foreign Filing Permission (FFP) from the Indian
Patent Office under section 39 of the Patent Act 1970. However, if a patent application is filed
in India, international filing must be completed within 12 months of the priority date.
There are two types of foreign application filings:
• Convention application
• PCT application.

CONVENTION APPLICATION
A convention application is one that is filed directly in a country that is a member of the Paris
Convention. It must be filed within 12 months of the priority date. If you apply in India first and
then directly in the USPTO, the application filed in the USPTO is known as a Convention
Application.

PCT APPLICATION

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Patent Laws differ from country to country and there is nothing like ‘World Patent’ or ‘Global
Patent’. However, there is an International Patent Filing system known as the PCT (Patent Co-
operation Treaty) system that allows you to file for a patent in many nations, and the
application is known as a PCT application or International Application.PCT is a filing platform
that allows applicants to file for a patent in various countries, but it does not grant patents.
Patents are exclusively given by national patent offices.

The PCT is an international treaty involving more than 150 Paris Convention countries that is
maintained by the World Intellectual Property Organization (WIPO). By filing a single
"international" patent application rather than many national or regional patent applications,
the PCT allows you to seek patent protection for an invention in a large number of nations at
the same time. The ‘national phase' of an international application refers to the control of
national or regional patent office’s over the grant of patents. A brief outline of the PCT
procedure includes the following steps:

Filing application in national office: The application is typically filed in national office. Within 12
months of filing in national office, PCT application may be filed either online with International
Bureau or at the receiving office (national office).

Filing PCT application: Filing an international application (or PCT application), complying with
the PCT formality requirements with prescribed fees.

International Search: An authorized International Searching Authority (ISA) conducts a search

or international search to discover the most relevant prior art documents relating to the
claimed subject matter. The results of the search are published in an International Search
Report (ISR), together with a written opinion on patentability. The ISR is normally provided by
the ISA to the applicant after nine months of filing of the application in the case of a first filing
and 16 months after the priority date in the case of a subsequent filing (claiming the priority of
a first filing). The substance of an international application is published by the International

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Bureau at WIPO after the expiration of 18 months from the filing date or priority date (World
Intellectual Property Organization).

INTERNATIONAL PRELIMINARY EXAMINATION: On request, an IPEA (International Preliminary

Examining Authority) conducts a further patentability investigation.

NATIONAL PHASE APPLICATION: After the PCT procedure is completed, the patent application
is submitted to the national (or regional) patent offices of the countries in which you wish to
get a patent, such as the United States, the United Kingdom, and others. PCT is simpler, easier
and more cost-effective way to protect invention is large number of countries.
PCT objective
The main objective of PCT is to simplify the international filling of patent applications in wider
interest of contracting states.
Stages of PCT application : The following stages of procedure are followed in filling and
processing the international patent application
1.Filling of application
2.International search and examination
3.Sending the application with search and examination report to the national offices of the
countries
4.Opposition
5.Grant of patent
The 1,2,3 stages above i.e. the filling of application, conducting of search and examination are
done internationally under the supervision of International Bureau of WIPO. Then the 3,4,5
stages are done by national offices of the respective countries in which the application is
intended to get the patent.

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