HIMACHAL PRADESH NATIONAL LAW UNIVERSITY, SHIMLA

(INTELLECTUAL PROPERTY RIGHTS-2)

FILING, PROCESSING AND GRANT OF PATENTS UNDER INDIAN REGIME

COURSE-IN- CHARGE: SUBMITTED BY:

DR. CHANDRIKA SUMESH SHARMA
ASSISTANT PROFESSOR OF LAW 1120202175
8TH SEMESTER
B.B.A LLB(HONS.)

HIMACHAL PRADESH NATIONAL LAW UNIVERSITY, SHIMLA

16 MILE, SHIMLA-MANDI NATIONAL HIGHWAY, GHANDAL DISTRICT SHIMLA,
HIMACHAL PRADESH-171014
Ph. 0177-2779802, 0177-2779803, Fax: 0177-2779802

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 DECLARATION

I, Sumesh, hereby declare that the work presented in this assignment is entirely my own and
has not been plagiarized or copied from any other sources. I have provided all sources of
information used in the preparation of this assignment through proper citations and references.
I have read and understood the policies on academic integrity and plagiarism of HPNLU and
have adhered to them while preparing this assignment.

I also want to express my gratitude to my teacher Dr. Chandrika for her guidance and support
in the preparation of this assignment. Their invaluable feedback and suggestions have helped
me to improve the quality of my work. I am grateful for her encouragement and mentorship
throughout the course.

I understand that any form of academic dishonesty or plagiarism is a serious offense and may
result in disciplinary action, including a failing grade for this assignment or even expulsion
from the institution. I confirm that I have not received any unauthorized assistance in the
preparation of this assignment

Name of student:

SUMESH

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 ACKNOWLEDGEMENT

I would like to express my sincere gratitude to DR. CHANDRIKA for taking regular classes
and explaining me the contents of IPR-2 with great enthusiasm. It is in his light of guidance
and motivation that I have undertaken to complete this project. I would also like to thank my
parents for believing in me and providing me their support and encouragement. I am also
grateful to HPNLU for providing us access to various research websites, those have truly come
in handy in the completion of this assignment.

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 TABLE OF CONTENT
1. DECLARATION
2. ACKNOWLEDGEMENT
3. STATEMENT OF PROBLEM
4. RESEARCH METHODOLGY
5. OBJECTIVES
6. RESEARCH QUESTIONS
7. INTRODUCTION
8. PATENTS
9. PATENTABILITY CRITERIA
10. HOW TO APPLY FOR A PATENT IN INDIA
I. Patent Search
II. Drafting of Application
III. Filing of Patent Application
IV. Publication of Patent Application
V. Examination of the Application
VI. Response
VII. Opposition to the Patent
VIII. Grant of Patent
11. RENEWAL AND RIGHTS OF PATENT HOLDER
12. CONCLUSION
13. REFERENCES

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 STATEMENT OF PROBLEM
The process of filing patents in India is intricate and involves multiple steps, legal
requirements, and procedural nuances. Understanding this process is essential for inventors,
researchers, entrepreneurs, and professionals in innovation-driven fields who seek to protect
their intellectual property. However, navigating the Indian patent system can be challenging
due to the complexity of the Indian Patents Act, 1970, the detailed criteria for patentability, and
the procedural requirements set by the Indian Patent Office. This complexity often leads to
confusion and inefficiencies in securing patent protection, thereby hindering innovation and
technological advancements. This assignment aims to provide a detailed and comprehensive
guide to the patent filing process in India, elucidating each critical aspect and step involved to
aid stakeholders in effectively navigating the system.

RESEARCH METHODOLGY
The methodology which is followed while making this assignment is strictly doctrinal.
Therefore, all the material which are referred in due course are secondary sources namely,
books, case laws research papers and articles published in books, journals, online
database/libraries, newsletters etc.

OBJECTIVES

To understand the:

Understand the patent filing process and criteria in India.

Outline types of patent applications and filing procedures.

Explain the examination process and protection duration.

Highlight key case laws and provide practical navigation guidance.

RESEARCH QUESTIONS

What are the key steps and criteria for filing patents in India?
What types of patent applications and filing procedures are there?
How are patent applications examined and protected?
What are the significant case laws and navigation strategies?

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 INTRODUCTION
The process of filing patents in India is a critical and multifaceted procedure that plays a
fundamental role in protecting and promoting innovation and technological advancements.
Patents serve as exclusive rights granted to inventors, allowing them to safeguard their
inventions from unauthorized use, manufacture, sale, or importation by others. In India, the
filing of patents is regulated by the Indian Patents Act, 1970, which outlines the legal
framework and requirements for securing patent protection.

This assignment aims to provide a comprehensive understanding of the process of filing patents
in India, covering various aspects such as the patentability criteria, patent search, types of
applications, filing procedures, examination process, grant of patents, duration of protection,
and enforcement of patent rights. By delving into each of these aspects, we will explore the
essential steps and considerations involved in filing patents under the Indian regime.

Throughout the assignment, we will examine relevant provisions of the Indian Patents Act and
discuss significant case law to illustrate the practical implications and interpretations of the
law. We will also highlight the role of the Indian Patent Office in processing and examining
patent applications, ensuring compliance with legal requirements, and facilitating the grant of
patents.

Understanding the intricacies of the patent filing process in India is crucial for inventors,
researchers, entrepreneurs, and anyone involved in innovation-driven fields. It enables them to
navigate the legal landscape, protect their intellectual property rights, and leverage the benefits
that patents offer in terms of exclusivity, commercialization, and market advantage.

By exploring the various stages and requirements involved in filing patents in India, this
assignment aims to equip readers with valuable insights and knowledge to effectively navigate
the patent system and harness the potential of their inventions.

PATENTS

Under Indian law, a patent is a legal document that grants exclusive rights to an inventor or
assignee for a certain period of time to prevent others from making, using, selling, importing
or offering for sale the invention without their permission. The Patents Act, 1970, governs
the grant of patents in India. The Act provides for the following types of patents:1

1
https://ssrana.in/ip-laws/patents/patent-assignment-cost-india-inr-1600/.

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 • Product Patents: These patents are granted for new products that are capable of
being made or used in an industry.

• Process Patents: These patents are granted for new processes that can be used in an
industry.

• Pharmaceutical Patents: These patents are granted for new chemical entities or
new medicinal uses of known substances.

Biotech Patents: These patents are granted for inventions that involve the use of living
organisms or their parts.

PATENTABILITY CRITERIA

The following three criteria are to be met for an invention to qualify as patentable:

• Novelty: An invention is considered novel if it does not form part of the state of the
art, which means that it is not disclosed anywhere in the world before the date of filing
of the patent application. This means that the invention should not have been publicly
disclosed or made available to the public before the filing date of the patent
application.

• Inventive Step: An invention is considered to have an inventive step if it is not

obvious to a person skilled in the art. This means that the invention should not be a
mere aggregation or combination of known features, and should involve some non-
obvious technical advancement.

• Industrial Applicability: An invention is considered to have industrial applicability

if it can be made or used in any kind of industry, including agriculture. This means
that the invention should have practical utility and should be capable of being
manufactured or used in some kind of industry.

Some inventions cannot be patented. Inventions that are contrary to public order or morality,
methods of agriculture or horticulture, and mere discoveries or scientific theories are not
patentable.2

2
https://www.tradecommissioner.gc.ca/india-inde/patent_protection-protection_brevets.aspx?lang=eng

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 HOW TO APPLY FOR A PATENT IN INDIA

A patent can be filed either physically, by submitting the necessary documents to a patent
registry present in the jurisdiction or near such jurisdiction, or it can be filed electronically
through the intellectual property e-filing portal. Each invention is permitted to correspond with
one application that is required to be filed under the prescribed form as provided under the
Patent Act and the Patent Rules.

The procedure for filing, processing and grant of patents is3

1. Patent Search: Assess the invention to ensure it meets the patentability criteria,

2. Drafting Application: Prepare a detailed patent application

3. Filing: Submit the patent application along with the prescribed forms, fees, and
supporting documents to the Indian Patent Office.

4. Request for Examination: File a request for examination

5. Examination and Examination Report: The patent application undergoes examination

by the Patent Office, and an Examination Report is issued, stating any objections or
rejections.

6. Response to Examination Report: Address the objections or rejections raised in the

Examination Report

7. Grant of Patent: Patent is granted on satisfaction of all objections

1. PATENT SEARCH

Conducting a patent search is an important step in the process of patenting an invention. A

patent search helps in determining the novelty of the invention and identifying potential
patentability issues. It also helps in avoiding infringement of existing patents and can save time
and resources by avoiding the filing of a patent application for an invention that is not
patentable. Therefore, it is crucial for an inventor or applicant to conduct a patent search before
filing a patent application.

There are several methods available for conducting a patent search, such as:

3
https://www.ipindia.gov.in/writereaddata/images/pdf/oatent-office-procedures.pdf

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 • Online databases: Online databases such as the Indian Patent Office (IPO) website,
Google Patents, and the World Intellectual Property Organization (WIPO) database
provide access to patent documents from around the world.

• Professional patent search services: Professional patent search services are available
that can conduct a comprehensive search of patent databases and provide a report on
the relevant patents.

• Manual search: Manual search involves visiting patent libraries and conducting a
search for relevant patents manually.

The Indian Patent Office plays an important role in conducting and verifying patent searches.
The IPO conducts a search of its own database to check if any prior patent applications exist
that are similar to the invention. The IPO also verifies the patentability of the invention based
on the criteria of novelty, inventive step, and industrial applicability.

In India, a patent application can be filed with or without conducting a patent search. However,
it is recommended to conduct a patent search to ensure that the invention is novel and non-
obvious. The IPO provides a search and examination facility where applicants can request a
search report from the IPO to assess the patentability of their invention. The IPO also provides
a pre-grant opposition mechanism that allows third parties to challenge the grant of a patent if
they believe that the patent is not novel, lacks inventive step, or is not capable of industrial
application.

2. DRAFTING OF APPLICATION

This is the most important step in the process of patent registration. As has been mentioned
above, an application for grant of patent is accompanied by Form 2, which requires the inventor
to provide specifications as regards their invention. It is advisable that the specification be as
detailed as possible and include the various parts of the invention (if divided in stages);
drawings and diagrams to showcase the mechanism of the inventions; background of the
invention; a detailed description of what the invention entails, the purpose for which it is being
created and how it would serve the particular industry it would potentially belong to; an abstract
of the description as well as a summary of the invention.

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 3. FILING OF PATENT APPLICATION

In India, a patent application can be filed as a provisional application or as a complete

application.

A provisional patent application is filed to secure a priority date for your invention. A priority
date is the date on which the first patent application for your invention is filed. This date is
important because, knowledge available in public domain before the priority date is referred to
as “prior art”, and this prior art is considered by the patent office to decide if a patent has to be
granted to your invention. If you delay filing of the patent application, then naturally, more
knowledge in the public domain gets added to the prior art, hence decreasing the probability of
patent grant to your invention.

A complete application is a formal application that contains all the necessary information and
claims for the patent. For a complete application, the application must include a complete
specification that provides a detailed description of the invention, including its operation or
use, and at least one claim that defines the scope of the invention. If you are able to secure your
invention from public knowledge until its completion, you may file a complete application.

It shall be noted that, a complete patent application has to be filed within 12 months from the
date of filing the provisional application. Failure to do so will be considered as abandoning the
provisional application. Once abandoned, the advantages of filing the provisional application
cannot be availed.

An application can be filed either electronically or physically. Electronic filing is preferred as

it is faster and more convenient. The Indian Patent Office provides an online filing facility
where the application can be filed electronically.

The application must be submitted along with the prescribed fee. The application should be
filed in the appropriate office of the Indian Patent Office based on the jurisdiction of the
applicant.

The following information is required for filing a patent application in India:

Name, address, and nationality of the applicant(s)

Title of the invention

Description of the invention

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 Claims

Drawings (if any)

Abstract

Declaration of inventorship

Power of attorney (if filed through a patent agent)

Fee

4. PUBLICATION OF PATENT APPLICATION

After the patent application is filed with the Indian Patent Office, the application is published
in the Patent Office Journal after 18 months from the priority date or the filing date, whichever
is earlier. The publication of the application provides public notice of the invention and allows
interested parties to file oppositions or objections against the grant of the patent.

The Patent Act provides for expediting of publication of an application in case the Applicant
does not wish to wait for the entirety of the 18 (eighteen) month period. In such a case, the
applicant can file Form 9 (request for an early publication) along with the prescribed fee. In
furtherance of the request for an early publication, the Controller General will be required to
publish the application within 1 month of filing the request.

Furthermore, from the date of publication to the date of grant of patent, an application is
afforded the same privileges and rights as if a patent for the invention had been granted (from
the date of publication of application).

5. EXAMINATION OF THE APPLICATION

It is pertinent to note that subsequent to publication of the application, a request for examination
has to be filed under Form 18. Unfortunately, the process for examination as regards patent
application is not an automatic process. The request for examination has to be filed within 48
(forty-eight) months from the date of filing or date of priority of the application. Similar to
publication, a request for an early examination can be filed under Form 18A.4 The patent
examiner examines the patent application, and prepares the examination report on the basis of
various patentability criteria like:

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https://cleartax.in/s/patent-registration

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 ✓ Patentable subject matter;

✓ Novelty;

✓ Inventive step;

✓ Industrial application; and

✓ Specification Enablement

The Controller General, subsequent to the filing of request for examination, would refer the
application, specifications, and other related documents to an examiner. The examiner would
formulate the first examination report within 1-month (but not exceeding 3) months from the
date of reference by the Controller General).Other responsibilities of the patent examiner for
examination of a patent application include:

• To conduct comprehensive investigation of an application and prepare a report

under section 12;

• To conduct an inter-office search covering all four patent offices;

6. RESPONSE

Once the patent application is examined, the Patent office issues the First Examination Report
(FER). The Applicant should reply the objections (if any) and place the application in order for
grant within 12 months from the date of issue of the FER. In this case too, if the reply to the
examination report is not made within prescribed time limit, which is 12 months, the
application is deemed to be abandoned.

The following are the options available to the applicant for responding to the examination
report:

• Amend the application: The applicant may choose to amend the claims or other parts of the
application to address the objections or rejections raised in the examination report. The
amendments should be made within the time period specified in the examination report, which
is usually six months from the date of receipt of the report.

• Request Patent Hearing: The applicant may request a hearing before the Controller of Patents
to present arguments in support of the application and to address the objections or rejections
raised in the examination report. The request for a hearing should be made within the time

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period specified in the examination report, which is usually six months from the date of receipt
of the report.

• File a written submission: The applicant may choose to file a written submission in response
to the examination report, addressing the objections or rejections raised in the report. The
submission should be made within the time period specified in the examination report, which
is usually six months from the date of receipt of the report.

The requirements for amending the application include the following:

• The amendments should be filed in writing and should clearly identify the changes made to
the claims or other parts of the application.

• The amendments should not introduce new matter that was not disclosed in the application as
filed.

• The amendments should not extend the scope of the claims beyond the scope of the claims as
originally filed.

The amendments should not result in the claims being unclear or lacking in support in the
specification.

7. OPPOSITION TO THE PATENT

Section 255 of the Act states that any person may object to the application for patent after it has
been published. There are two types of objections:

Pre-grant objection: Section 25(1) states that after the publication of the application and before
the grant of the patent, any person in writing may represent their opposition against the grant
of the patent. These are pre-grant objections which are raised before the grant of the patent.
The grounds on which such objections can be raised are mentioned in Section 25(1) of the Act.

In Novartis vs Cipla, 20116, a patent application was filed by Novartis in 2005, for “Dispersible
tablets comprising Defracirox” against which Cipla filed a pre-grant opposition. The
representation was allowed by the Controller after a hearing and the grant was refused. The
Controller concluded that the invention was hit by prior publication and lack of inventive step.

5
S.25,Patent Act, 1970.
6
I.A. No.24863/2014 IN CS(OS) 3812/2014.

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Post-grant objection: Post-grant objections are raised after the grant of the patent to the
applicant. These objections are supposed to be raised within one year of the publication of the
notice of grant of patent by way of giving notice of opposition to the Controller. The grounds
on which such objections can be raised are mentioned in Section 25(2) of the Act. Upon
receiving the notice of opposition, the Controller shall notify the patentee of such objection
after giving the patentee a reasonable opportunity to be heard, may maintain, amend or revoke
the patent.

In F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2015)7, Roche filed a post-grant opposition against
Cipla's patent for a pharmaceutical product. The opposition was based on various grounds,
including lack of novelty and inventive step. The Delhi High Court held that Cipla's patent was
not valid and revoked it, concluding that it lacked inventive step and was obvious in light of
prior art.

8. GRANT OF PATENT

After passing the scrutiny of the examination report and meeting all specifications required,
the patent is eligible for grant. The patent shall be advertised in the Official Gazette and the
applicant shall receive benefits of the grant except being entitled to institute infringement
proceeding until the patent is granted.

A notice of opposition by any person who is interested is allowed within 12 months from the
date of publication in the Official Gazette. A copy of the notice of opposition shall be forwarded
by the Controller to the applicant. The applicant may file a reply statement within a month from
the date of receipt of the copy. Then the process of providing evidences and hearing goes on.
The matter is heard and decided. When the application is accepted without opposition the patent
will be granted.

RENEWAL AND RIGHTS OF PATENT HOLDER

After the patent has been granted, it has to be renewed every year by paying the renewal fee. A
patent in India can be renewed for a maximum period of 20 years from the patent filing date.
After the expiry of the term, the invention falls into the public domain and anyone can use it
without the permission of the patent holder.

7
RFA(OS) 92/2012.

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During the term of the patent, the patent holder has the exclusive right to make, use, sell, import
or offer for sale the patented invention in India. This means that no one else can commercially
exploit the invention without the permission of the patent holder. In case of any infringement
of the patent, the patent holder has the right to take legal action to enforce their rights and seek
damages.

There are several options available for enforcing the patent rights in case of infringement,
including:

• Cease and Desist Notice: The first step in enforcing patent rights is to send a cease-
and- desist notice to the alleged infringer, demanding that they stop using the patented
invention. This can be done through a legal notice sent by a lawyer or through an
online platform provided by the Indian Patent Office.

• Injunction: If the infringer does not comply with the cease and desist notice, the patent
holder can file a suit for an injunction to restrain the infringer from using the invention.
The court may grant a temporary injunction to immediately stop the infringing activity
until the matter is resolved.

• Damages: The patent holder can claim damages for any loss suffered due to the
infringement of their patent. The damages can include lost profits, reasonable royalty,
and any other expenses incurred as a result of the infringement.

Criminal Action: In case of intentional and commercial infringement, the patent holder can file
a criminal complaint against the infringer, which may lead to imprisonment and fine.

CONCLUSION

The process of patent processing, filing and grant of patents under the Indian regime involves
several steps, starting from determining the patentability criteria of the invention to enforcing
the patent rights in case of infringement. It is important for inventors and businesses to
understand these steps and follow the procedures correctly to obtain and protect their patent
rights.

The patentability criteria, including novelty, inventive step, and industrial applicability, form
the basis for determining whether an invention is eligible for a patent. Conducting a patent
search is a crucial step in the process, as it helps identify prior art and assess the novelty of the
invention.

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In conclusion, obtaining and protecting a patent requires careful consideration and adherence
to the legal and procedural requirements. It is crucial to work with a qualified patent attorney
or agent to navigate the process and ensure the best possible outcome for the patent application.

REFERENCES

1. https://www.wipo.int/patent-judicial-guide/en/full-guide/india
2. https://www.tradecommissioner.gc.ca/india-inde/patent_protection-
protection_brevets.aspx?lang=eng
3. https://ssrana.in/ip-laws/patents/patent-assignment-cost-india-inr-1600/
4. https://blog.ipleaders.in/patent-law/

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