Patent Law In India: An Overview

What is a Patent ?

A patent is a form of intellectual property right granted by the government to inventors giving them exclusive rights to their invention. These exclusive rights typically allow the patent holder to prevent others from making, using, selling, or importing the patented invention without their permission. Patents are granted for inventions that are novel, non-obvious (involving an inventive step) and are industrially applicable. Patent law in India is governed primarily by the Patents Act, 1970, which has been amended several times to align with international standards and evolving technological landscapes.

Types of Patents

1. Utility Patent: These are the most common type of patents and cover new and useful processes, machines, manufactures, or compositions of matter. Utility patents protect the functional aspects of inventions and are granted for a wide range of innovations, including mechanical devices, chemical compounds, software algorithms, and industrial processes.
2. Design Patent: Design patents protect the ornamental or aesthetic appearance of an article of manufacture. Unlike utility patents, which focus on functionality, design patents safeguard the visual or decorative features of a product. Design patents are commonly sought for consumer products, such as furniture, electronics, footwear, and packaging.
3. Plant Patent: Plant patents are granted for new and distinct varieties of asexually reproduced plants, such as those produced through cutting, grafting, or budding. These patents protect the unique characteristics of the plant, including its genotype and phenotype. Plant patents are commonly obtained for new cultivars of agricultural crops, ornamental plants, and fruit trees.

Types of patent applications

1. Ordinary Application: This is the standard patent application filed with the Indian Patent Office (IPO) to seek protection for an invention. A regular patent application must include a complete specification describing the invention in detail, along with any necessary drawings, claims, and other supporting documents.
2. Provisional Application: A provisional patent application serves as a placeholder or interim application that provides a priority date for an invention without requiring a fully developed specification. It allows inventors to establish an early filing date while they continue to refine their invention and prepare a complete specification. A provisional application must include a description of the invention but does not require formal claims. Within 12 months of filing a provisional application, the inventor must file a corresponding non-provisional application to claim the benefit of the earlier priority date.
3. Conventional Application: Under the Paris Convention for the Protection of Industrial Property, inventors from member countries can claim priority for their patent applications filed in one member country when filing subsequent applications in other member countries, including India. A convention patent application in India is filed within 12 months of the first filing in a convention country and allows the applicant to claim the priority date of the earlier application.
4. PCT International Application: An Application filed in India as Receiving Office under the Patent Cooperation Treaty. Under the PCT framework, this application can be filed in more than 150 countries through a single application. In the leading case of Puneet Kaushik vs U.O.I, it was held that a PCT application requires prior foreign filing license as Indian Patent Office is merely a receiving office.
5. PCT National Phase Application: International patent applications filed under the Patent Cooperation Treaty (PCT) enter the national phase in individual countries, including India, if the applicant wishes to pursue patent protection in those countries. An applicant can file the national phase application in India within 31 months from the international filing date or the priority date, whichever is earlier.
6. Patent of Addition: A patent of addition is filed to protect improvements or modifications made to an invention disclosed in a previously filed patent application (the main application). The patent of addition shares the priority date of the main application and is examined along with the main application.
7. Divisional Application: If a patent application contains multiple inventions or claims that are distinct from each other, the applicant may file a divisional application to pursue separate protection for each invention. Divisional applications are filed during the pendency of the original application and inherit the filing date of the parent application.

How to apply for a patent in India?

The patent registration process in India involves the following steps:

1. Preparation of Invention: The process begins with the inventor(s) documenting the invention in detail, including its technical description, drawings (if applicable), and any supporting information.
2. Conducting a Patent Search (Optional): While not mandatory, conducting a patent search can help determine the novelty of the invention and assess the likelihood of obtaining a patent.
3. Drafting the Patent Application: The next step involves preparing the patent application, which includes a complete specification describing the invention in detail, along with claims that define the scope of protection sought.
4. Filing the Patent Application: The patent application is filed with the Indian Patent Office either electronically or in physical form, along with the required fees.
5. Publication of the Application: After filing, the patent application is published in the official journal of the IPO after 18 months from the filing date or priority date, whichever is earlier.
6. Request for Examination: Within 48 months from the priority date (for regular applications) or within 31 months from the priority date (for PCT national phase applications), the applicant must request an examination of the patent application.
7. Examination by the Patent Office: The patent application is examined by a patent examiner to assess its patentability. The examiner reviews the application to determine whether the invention meets the criteria of novelty, inventive step, and industrial applicability.
8. Reply to Objections (if any): On receiving of the First Examination Report, the Applicant is required to submit a response within 6 months from the date of receipt of the report.
9. Hearing: If the examiner is not satisfied with the response submitted, the Applicant is called for a hearing to resolve the objections.
10. Pre-Grant Opposition (if any): On publication of the patent application, it is open for third parties to present any opposition.
11. Grant of Patent: If the patent application satisfies all the requirements and overcomes any objections raised by the examiner, the IPO issues a patent grant. The patent grant confers exclusive rights to the inventor(s) for the invention described in the patent specification for a period of 20 years from the filing date of the application.
12. Publication of Granted Patent: Once the patent is granted, the details of the granted patent are published in the official journal of the IPO. The patentee is required to pay annual renewal fees to maintain the validity of the patent for the entire duration of the patent term.
13. Post-Grant Opposition (Optional): After the patent is granted, any person interested can file a post-grant opposition within one year from the date of publication of the grant. The Controller of Patents conducts proceedings based on the opposition, and if the opposition is successful, the patent may be revoked.

Ordinary vs Expedited Examination

Under ordinary examination, the patent application undergoes examination by the Indian Patent Office (IPO) in the regular course of processing whereas expedited examination offers accelerated processing of patent applications, resulting in quicker examination and potentially faster grant of patents.

Under Rule 24C of the Patent Rules, 2003 a request for expedited examination can be filed on the following grounds:

• When the Applicant is a startup.
• When the Applicant is a small entity.
• When one of the Applicants is female.
• When the Applicant is a government department.
• When the Applicant is an institute established by the Central, Provincial or State Act, which is owned or controlled by the Government.
• When the Applicant is a government company.
• When the Applicant is an institution wholly or substantially financed by the government.
• When the application pertains to a sector which has been notified by the Central Government, on the basis of a request from the head of department of the Central Government.
• When 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.
• When India has been authorised as the International Searching Authority or elected as an International Preliminary Examining Authority.

Rights of Patentee

As the holder of a granted patent, a patentee enjoys several exclusive rights, which are legally protected under patent law such as:

• Exclusive Right to Use: The patentee has the exclusive right to use the patented invention for the duration of the patent term. This means that no one else can make, use, sell, offer for sale, or import the patented invention without the patentee's permission.
• Right to License: The patentee has the right to license or grant permission to others to use the patented invention.
• Right to Assign or Transfer: The patentee has the right to assign or transfer their patent rights to another party through an assignment agreement.
• Right to Derive Income: The patentee has the right to derive income from their patent rights through licensing, royalties, or other commercialization strategies.

Patent infringement

Patent infringement occurs when someone without authorization uses, makes, sells, offers for sale, or imports a patented invention, violating the exclusive rights granted to the patent holder. Infringement can occur directly, when someone directly engages in infringing activities, or indirectly, when someone contributes to or induces infringement by others. Patent holders can seek remedies through legal action, including injunctions to stop infringement, monetary damages, and other relief.

In the leading case of Shogun Organics Ltd. v. Gaur Hari Guchhait and Ors., the issue revolved around patent infringement in India. This case serves as a significant precedent in Indian patent law, highlighting the importance of protecting patent rights and the consequences of patent infringement. It underscores the need for thorough examination of patent claims and evidence in cases involving alleged infringement, ensuring that patent holders are adequately protected against unauthorized use of their inventions.

Conclusion

Patents are a vital component of the intellectual property system, providing inventors with the protection needed to encourage innovation and creativity. Understanding the different types of patents, the application process, and the rights and responsibilities of patentees is essential for navigating the complex landscape of patent law. Through proper protection and enforcement of patents, inventors can ensure that their innovations receive the recognition and commercial success they deserve.

References:

1. The Patents Act, 1970 (39 of 1970)
2. The Patent Rules, 2003
3. Shogun Organics Ltd. v. Gaur Hari Guchhait and Ors. [2019 SCC Online Del 9653, (2019) 263 DLT 516, (2019) 80 PTC 578], https://brieflaws.com/case-briefs/shogun-organics-ltd-v-gaur-hari-guchhait-and-others
4. Puneet Kaushik vs U.O.I [2014 SCC Online Del 7255], https://brieflaws.com/case-briefs/puneet-kaushik-and-anr-v-union-of-india-and-ors
5. Frequently asked questions-Patents, Office of CGPDTM, India 2020 https://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf
6. Deepak Kumar Dash, Riya Vaiswade, Gayatri Gupta- A Review on the Indian Patent System and Its Implication on the Pharmaceutical Industry, 41(3) JHSMR, 1-9, 2023, https://www.jhsmr.org/index.php/jhsmr/article/view/926