1. What is a Patent?
A Patent is a statutory
right for an invention granted for a limited period of time to the patentee by
the Government, in exchange of full disclosure of his invention for excluding
others, from making, using, selling, importing the patented product or process
for producing that product for those purposes without his consent.
2. Does Indian
Patent give protection worldwide?
Patent protection is territorial
right and therefore it is effective only within the territory of India. However,
filing an application in India enables the applicant to file a corresponding
application for same invention in convention countries, within or before expiry
of twelve months from the filing date in India. Therefore, separate patents
should be obtained in each country where the applicant requires protection of
his invention in those countries. There is no patent valid worldwide.
3. Is it possible
to file international application under Patent Cooperation Treaty (PCT) in
India?
It is possible to file an
international application known as PCT application in India in the Patent
Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as
Receiving Office (RO) for International application. The addresses of these
offices are available on the website of CGPDTM i.e.
www.ipindia.nic.in.
4. What can be
patented?
An invention relating either to
a product or process that is new, involving inventive step and capable of
industrial application can be patented. However, it must not fall into the
categories of inventions that are non- patentable under section 3 and 4 of the
Act.
5. Who can apply
for a patent?
A patent application can be
filed either by true and first inventor or his assignee, either alone or jointly
with any other person. However, legal representative of any deceased person can
also make an application for patent.
6. How can I
apply for a patent?
A patent application can be
filed with Indian Patent Office either with complete specification or with
provisional specification along with fee as prescribed in schedule I. In case
the application is filed with provisional specification, then one has to file
complete specification within 12 months from the date of filing of the
application. There is no extension of time to file complete specification after
expiry of said period.
7. Is there
provision for filing patent application electronically by online system?
From 20th July, 2007
the Indian Patent Office has put in place an online filing system for patent
application. More information for filing online application is available on the
website of Patent Office i.e.
www.ipindia.nic.in. This facility is also available for filing trademarks
application.
8. What are the
criteria of patentability?
An invention to become
patentable subject matter must meet the following criteria -
i) It should be novel.
ii) It should have inventive
step or it must be non-obvious
iii) It should be capable of
Industrial application.
iv) It should not fall within
the provisions of section 3 and 4 of the Patents Act 1970.
9. Should
application for patent be filed before or after, publication of the details of
the invention?
The application for patent
should be filed before the publication of the invention and till then it should
not be disclosed or published. Disclosure of invention by publication before
filing of the patent application may be detrimental to novelty of the invention
as it may no longer be considered novel due to such publication. However, under
certain conditions, there is grace period of 12 months for filing application
even after publication.
10. Can any
invention be patented after publication or display in the public exhibition?
Generally, a patent application
for the invention which has been either published or publicly displayed cannot
be filed. However the Patents Act provides a grace period of 12 months for
filing of patent application from the date of its publication in a journal or
its public display in a exhibition organised by the Government or disclosure
before any learned society or published by applicant. The details conditions are
provided under Chapter VI of the Act (Section 29-34).
11. How a Patent
Specification is prepared?
A patent specification can be
prepared by the applicant himself or his registered and authorized agent. The
patent specification generally comprises of the title of the invention
indicating its technical field, prior art, draw backs in the prior art, the
solution provided by the inventor to obviate the drawbacks of the prior art, a
concise but sufficient description of the invention and its usefulness, drawings
(if Any) and details of best method of its working. The complete specification
must contain at least one claim or statement of
claims defining the scope of the invention for which protection is sought for.
12. What is a
provisional specification?
Indian Patent Law follows first
to file system. Provisional specification describes the
nature of the invention to have the priority date of filing of the
application in which the inventive idea has been disclosed. It must be followed
by a complete specification describing the details of the invention along with a
statement of claims within 12 months after filing of the provisional
application. If the complete specification is not filed within the prescribed
period, the application is treated as deemed to have been abandoned
13. Is it necessary
to file a provisional application?
Generally, an application filed
with provisional specification is known as provisional application which is
useful in establishing a priority date for your invention. Moreover, filing of
a provisional application is useful as it gives sufficient time to the applicant
to assess and evaluate the market potential of his invention before filing
complete specification. However, it is not necessary to file an application
with provisional specification and one can file application directly with
complete specification.
14. Does the Patent
Office Keep information of the invention Secret?
Yes. All the patent
applications are kept secret upto 18 months from the date of filing or priority
date whichever is earlier and thereafter they are published in the Official
Journal of the Patent Office which is published every week and also available on
the IPO website. After its publication, public can inspect the documents and
also may take the photocopy thereof on payment of the fee as prescribed.
15. When an
application for patent is published?
Every application for patent is
published after 18 months from the date of its filing or priority date whichever
is earlier. However, following applications are not published.
A)
Application in which secrecy direction
is imposed
B)
Application which has been abandoned
u/s 9(1) and
C)
Application which has been withdrawn 3
months prior to 18 months
16. Is there any
provision in the law for early publication?
Yes, the applicant can make a
request for early publication in Form 9 along with the prescribed fee. After
receiving such request the Patent Office publishes such application within a
period of one month provided the invention contained thereon does not relate to
atomic energy or defence purpose.
17. Is patent
application once filed is examined automatically?
The patent application is not
examined automatically after its filing. The examination is done only after
receipt of the request of examination either from the applicant or from third
party.
18. When the
request for examination can be filed?
The request for examination can
be filed within a period of 48 months from the date of priority or date of
filing of the application whichever is earlier. For more details kindly refer
to rule 24B of the Patents Rules 2003 as amended upto 2006.
19. Is there any
provision for early examination?
There is no provision for filing
a request for early examination. The applications are examined in the order in
which requests for examination are filed. However, an express request for
examination before expiry of 31 months can be made in respect of the
applications filed under Patent Cooperation Treaty known as National Phase
applications by payment of the prescribed fee.
20. What happens to
a patent application once it is examined?
After examination, the Patent
office issues an examination report to the applicant which is generally known as
First Examination Report (FER). Thereafter the applicant is required to comply
with the requirements within a period of twelve months from the date of FER. In
case, the application is found to be in order for grant, the patent is granted,
provided there is no pre-grant opposition is filed or pending. A letter patent
is issued to the applicant. However, in case a pre-grant opposition is pending,
the further action is taken after disposition of the pre-grant opposition.
21. What happens
when applicant is not able to meet the requirement within the prescribed time?
If the applicant is not able to
comply with or meet the requirement within 12 months, or does not submit the
documents which were sent to him for compliance within the said period, the
application is deemed to have been abandoned.
22. Is there
provision for extension beyond time limit of 12 months?
There is no provision for
extension of time beyond the period of 12 months.
23. Does applicant
get an opportunity of being heard before his application is refused?
If applicant has not complied
with the requirements within the prescribed time, and no request for hearing has
been made by the applicant, the controller may not provide the opportunity of
being heard. However the Controller shall provide an opportunity of being heard
to the applicant before refusing his application if a request for such hearing
has been made by the applicant at least 10 days in advance before expiry of the
statutory period.
24. What are the
various stages involved in the grant of patent?
After filing the application for
the grant of patent, a request for examination is required to be made by the
applicant or by third party and thereafter it is taken up for examination by the
Patent office.
Usually,
the
First Examination Report is issued and the applicant is given an opportunity to
correct the deficiencies in order to meet the objections raised in the said
report. The applicant must comply with the requirements within the prescribed
time otherwise his application would be treated as deemed to have been
abandoned. When all the requirements are met, the patent is granted and
notified in the Patent office Journal. However before the grant of patent and
after the publication of application, any person can make a representation for
pre-grant opposition.
25. What is time
limit for filing the representation for pre-grant opposition?
A representation for pre-grant
opposition can be filed within six months from the date of publication of the
application u/s 11A or before the grant of patent. The grounds on which the
representation can be filed are provided u/s 25(1) of the Patents Act 1970.
26. Is there any
fee for filing such representation for pre-grant opposition?
There is no fee for filing
representation for pre-grant opposition? This can be filed by any person.
27. What are the
grounds for filing representation for pre-grant opposition?
The grounds for filing
post-grant opposition are contained in section 25(1) of the Patents Act 1970.
28. Is it possible
to file pre-grant opposition even though there is no request for examination
filed?
Yes, it is possible to file
representation for pre-grant opposition even though there is no request for
examination has been filed. However, the representation will be considered only
when a request for examination is received within the prescribed period.
29. What is the
time limit for filing post-grant opposition in the patent office?
The time for filing post-grant
opposition is 12 months from the date of publication of the grant of patent in
the official journal of the patent office.
30. Is there any
fee for filing post-grant opposition?
The post grant opposition has to
be filed in the prescribed form 7 along with prescribed fees of Rs.1500 for
natural person and Rs.6000 for person other than natural person. The post grant
opposition has to be filed by the person interested and not by any other person.
31. What are the grounds for filing the post grant opposition?
The grounds for filing
post-grant opposition are contained in section 25(2) of the Patents Act 1970.
32. Is it
necessary to go to the Indian Patent Office to transact any business relating to
patent application?
No, normally all the
communications with the office are done through written correspondence. However,
interviews relating to patent application can be had with examiners with prior
appointment on any working day during prosecution stage.
33. Where the
information relating to patent application is notified?
The information relating to the
patent application is published in the Patent office Journal issued on every
Friday. This is also available in electronic form on the website of the Patent
Office
34. What are the
contents of the Patent office Journal?
The Patent office Journal
contains information relating to patent applications which are published u/s
11A, post grant publication, restoration of patent, notifications , indexes,
list of non-working patents and notices Issued by the Patent Office relating to
Patents, etc..
35. Can one
subscribe a copy of the Patent office Journal?
The Patent office Journal can be
subscribed by making payment of Rs 400/- in cash or by DD/cheque in favour of
the Controller of Patents. This is also available in CD form. However, the
journal can be downloaded from the website free of charge.
36. Where could one
find a copy of the
Patent office Journal
without
purchasing the publication?
The Patent office Journal is
freely available on patent office site i.e. www.ipindia.nic.in.This is also
available in the technical libraries maintained by the Patent Offices. The
library facilities are available to the public free of charge from Monday to
Friday on working days except holidays.
37. Can one use the
words "Patent Pending" or "Patent Applied For"?
These words are normally used by
the patent applicant to their products after filing his application for patent
so that the public is made aware that a patent application has been filed in
respect of that invention. Use of these words where no application has been made
is prohibited under the Patent law. However, use of such words by the patent
applicant does not prohibit the third party to plead as innocent unless the
patent number is indicated.
38. How useful is
the marking of a product with "patent pending" or "patent applied for" before
the grant?
Marking of a product with the
words “patent pending” or “Patent applied for” after filing of the application
for patent serve as a notice to the public that an application for patent is
pending with the Patent Office but there is no legal significance of these
words. The infringement action can be initiated only after the patent is
granted.
39. Does patent
office help in finding users
for
patent?
The Patent Office has no role in
the commercialization of patent. However, the information relating to patent is
published in the Patent Office journal and also published on the Patent Office
website which is accessible to the public worldwide. This certainly helps the
applicant to attract potential user or licensee. The patent office also compiles
a list of patents which are not commercially worked in India.
40. How can one
find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent
Office website in the Indian patent data base of granted patent or Patent Office
journal published every week or by making search in the documents kept in the
Patent Office Search and Reference Room, which contains Indian patents arranged
according to international patent classification system as well in serial
number. It is open to the general public
from Monday to Friday, except
Gazetted holidays. The public can also conduct search free of charge on
the website of Patent Office. The person concerned can also make a request for
such information under section 153 of the Act
41. What is the
term of patent?
Term of every patent in India is
20 years from the date of filing of patent application, irrespective of whether
it is filed with provisional or complete specification. However, in case of
applications filed under PCT the term of 20 years begins from International
filing date.
42. Is there any
difference in the amount of fees to be paid by an individual or a legal entity
for filing a patent application?
Yes, the application filing fees
for an individual person(natural person) is Rs.1, 000/- and for a legal entity
other than individual is Rs.4, 000/- upto 10 claims and 30 pages. However, in
case, the number of pages exceed beyond 30, then natural person has to pay
Rs.100/- each extra page and person other than natural person has to pay
Rs.400/- per page. Similarly if the number of claims exceed beyond 10, then
natural person has to pay Rs.200/- for each additional claim and person other
than natural person has to pay Rs.800/- for each additional claim.
43. What are
obligations of the patentee after the grant of patent?
After the grant of patent, every
patentee has to maintain the patent by paying renewal fee every year as
prescribed in the schedule I. For first two years, there is no renewal fee. The
renewal fee is payable from 3rd year onwards. In case the renewal
fee is not paid the patent will be ceased.
44. Can the patentee pay renewal
fee at a time or has to pay every year?
The patentee has choice to pay the renewal fees every year or he
can pay in lump sum as well.
45. When a patent can be restored
after its cessation ?
A request for restoration of patent can be filed within 18 months
from the date of cessation of patent along with the prescribed fee. After
receipt of the request the matter is notified in the official journal for
further processing of the request.
46. What is meant
by patent agent and what are the eligibility criteria of becoming a patent
agent?
A Patent agent is
a registered person with Indian Patent Office
whose name is entered in the
patent agent register after being declared qualified the patent agent
examination conducted by the patent office and who is entitled—
(a) to practice before the
Controller; and
(b) to prepare all documents,
transact all business and discharge such other functions as may be prescribed in
connection with any proceeding before the Controller under this Act.
Eligibility conditions
for registration as patent agents are below.-
A person shall be qualified to
have his name entered in the register of patent agents if he fulfills the
following conditions, namely—
(a) he is a citizen of India;
(b) he has completed the age of
21 years;
(c) he has obtained a degree in
science, engineering or technology from any university established under law for
the time being in force in the territory of India or possesses such other
equivalent qualifications as the Central Government may specify in this behalf,
and, in addition,—
(i) has passed the qualifying
examination prescribed for the purpose; or
(ii) has, for a total period of
not less than ten years, functioned either as an examiner or discharged the
functions of the Controller under section 73 or both, but ceased to hold any
such capacity.
47. Is it necessary
to engage a registered patent agent for filing an application for patent?
No, it is not necessary under
the patent law to engage a registered patent agent for filing an application for
patent. The applicant is free to file an application by himself or through the
patent agent. However, an applicant who is not a resident of India is required
to file either through the registered patent agent or must give an address for
service in India
48. Does the Patent
Office help to select a patent attorney or agent to make patent search or to
prepare and prosecute patent application?
No, Patent Office does not make
any recommendations regarding selection of a patent agent. However, the
applicant is free to appoint any patent agent from a list of patent agents
maintained by the office. This list can also be viewed at Patent Office
website.
49.
Does the patent office ascertain fees charged by the
patent agents for their services?
No. This is a matter between the
applicant and the patent agent. The Patent Office has no role in ascertaining
or assisting the fee charged by a patent agent.
50.
Is it mandatory to obtain prior permission from the
Patent Office to file application for patent outside India or abroad!
Generally speaking, it is not
necessary to obtain prior permission from the Patent Office to file patent
application abroad under following circumstances.
(a)
Applicant is not Indian resident and
invention is originated abroad about.
(b)
If the applicant is Indian resident, a
patent application has been filed in India and six weeks period is over from
that date.
(c)
The invention does not belong to
Atomic Energy or defence purpose.
In other circumstances, the
prior permission is required. For further details kindly refer to section 39 of
the Patents Act, 1970.
51. Under what
circumstances, it is necessary to obtain a prior permission from the Patent
Office?
The person is required to take
prior permission from the Patent Office under following circumstances.
(a)
The applicant is Indian resident and
invention is originated in India,
(b)
Applicant does not wish to file patent
application in India prior to filing abroad.
(c)
If the applicant is Indian resident, a
patent application has been filed in India and six weeks period is not yet over
from that date
(d)
The invention relates to atomic energy
or defence purpose.
52. Is it
essential to deposit biological material in the international depository
authority!
If the invention uses a
biological material which is new, it is essential to deposit the same in the
International Depository Authority (IDA) prior to the filing of the application
in India in order to supplement the description. The description in the
specification should contain the name and address of the International
Depository Authority and, date and number of deposition of Biological material.
If such biological material is already known, in such case it is not essential
to deposit the same. For more details log on to
www.ipindia.nic.in
53. Is there any
International Depository Authority in India!
Yes, there is an International
Depository Authority in India located at Chandigarh which is known as Institute
of Microbial Technology (IMTECH). The more details about this depository
authority can be had on its website
http://imtech.res.in/ .
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