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PATENT RIGHTS
Frequently Asked Questions
1. WHAT ARE PATENT RIGHTS?
A Patent is an intellectual property right relating to inventions. It is the grant of exclusive right, for a limited period, provided by the government to the patentee, in exchange for full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes
2. WHAT IS THE PURPOSE OF HAVING THE PATENT SYSTEM IN PLACE?
The purpose of this system is to encourage inventions by promoting their protection and utilisation to contribute to the development of industries, which in turn contributes to the promotion of technological innovation and the transfer and dissemination of technology.
Patent rights are property rights, i.e. they provide a legal title to the applicant for the invention for which a patent has been granted and could be extremely valuable.
3. IS A PATENT GRANTED IN INDIA ENFORCEABLE ANYWHERE IN THE WORLD?
Patent right is territorial, and a patent obtained in one country is not enforceable in any other country. Therefore, the inventors/their assignees must file separate patent applications in different countries to get a patent in those countries.
4. WHAT KIND OF PATENT SYSTEM IS EMPLOYED IN INDIA?
The first to file system is employed in India, in which, among persons having filed applications for the same invention, the first one to apply is granted a patent. Therefore, a patent application should be filed promptly after conceiving the invention.
5. WHAT SHOULD BE CONSIDERED AS AN INVENTOR/APPLICANT BEFORE FILING A PATENT APPLICATION?
It is a common experience that through ignorance of patent law, inventors act unknowingly and jeopardise the chance of obtaining patents for their inventions. The most common of these indiscretions is to publish their inventions in newspapers or scientific and technical journals before applying for patents. Publication of an invention, even by the inventor himself, would (except under certain rare circumstances) constitute a bar for its subsequent patenting. Similarly, the use of the invention in public, or the commercial use of the invention, before the date of filing a patent application would be a fatal objection to the grant of a patent for such invention after that. There is, however, no objection to the secret working of the invention by way of reasonable trial or experiment or to the disclosure of the invention to others confidentially. Another mistake that the inventors frequently make is waiting until their inventions are fully developed for commercial work before applying for patents. It is, therefore, advisable to apply for a patent as soon as the inventor's idea of the nature of the invention has taken a definite shape.
It is permissible to apply for a patent accompanied by a "Provisional Specification" describing the invention. The application may, therefore, be made even before the full details of the working of the invention are developed. The filing of an application for a patent disclosing the invention would secure the priority date of the invention and thereby enable the inventor to work out the practical details of the invention and to file a complete specification within 12 months from the date of filing of the provisional specification.
6. WHO MAY APPLY FOR A PATENT?
The inventor may make an application, either alone or jointly with another, or his/their assignee (for example, the employer) or legal representative of any deceased inventor or assignee.
7. WHAT ARE PATENTABLE INVENTIONS?
A new product or process involving an inventive step and capable of being made or used in industry. It means the invention to be patentable should be technical and should meet the following criteria -
Novelty: The matter disclosed in the specification is not published in India or elsewhere before filing the patent application in India.
Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.
Industrially Applicable: Invention should possess the utility to make or use it in an industrial setting.
8.WHAT IS A PRIOR ART SEARCH?
Before proceeding with the process of filing a patent application, it is advisable that a prior art search for the invention may be conducted. A prior art search helps in discovering the current state of the field of technology to which the invention relates and thereby helps in determining the novelty of the invention. This is done by searching through global patent databases and non-patent literature to determine whether the product or process for which a patent application is being considered is already in public use or a patent has been applied for or granted to it in India or any other jurisdiction.
9. WHAT IS A PATENT SPECIFICATION?
A patent application is accompanied by a patent specification which is a technical and legal document. The specification should fully describe the invention with the help of drawings wherever possible. The specification must be written so that a person of ordinary skill in the relevant field to which the invention pertains can understand the invention. The most important part of a patent specification is the claims. Claims define the monopoly that the applicant claims about his or her invention. A claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected. Every complete specification must have at least one claim.
10. WHAT IS A PROVISIONAL PATENT SPECIFICATION?
Where an invention is at the development stage but has not been completely materialised, an application for a patent may be filed accompanied by a provisional specification. This helps secure a patent filing date; therefore, any publication or application for a patent filed beyond this date would not prejudice the invention. A provisional specification should contain the description of the invention with drawings if required. It is not necessary to include claims in a provisional specification. However, the complete specification should be fairly based on the matter disclosed in the provisional specification. It should be filed within 12 months of filing the provisional specification. If the complete specification is not filed within this period, the application is deemed to have been abandoned.
11. WHAT IS PATENT PUBLICATION? WHEN IS THE PATENT PUBLISHED?
All the applications for patent, except the applications prejudicial to the defence of India or abandoned due to non-filing of complete specification within 12 months after filing the provisional or withdrawn within 15 months of applying, are published in the Patent Office Journal just after 18 months from the date of filing of the application or the date of priority whichever is earlier. The patent applications are not open for public inspection before publication. The applicant gets provisional rights in the invention from the date of publication.
12. HOW DOES THE INDIAN PATENT OFFICE EXAMINE A PATENT?
A patent application is examined only if a Request for Examination is made by the applicant or any other interested person within 48 months from the date of priority of the application or from the date of filing of the application, whichever is earlier. Where no request for examination of the patent application has been filed within the prescribed period, the application will be treated as withdrawn. After that, the application cannot be revived.
On examination of the patent application, a First Examination Report (FER) stating the objections/requirements is generated by the Patent Office and communicated to the applicant. The applicant must respond to the objections and satisfy the Patent Office as to the objections within 6 months from the date of FER. The application or complete specification may be amended to meet the objections/requirements if required. No further extension of time is available in this regard. If all the objections are not complied with within 6 months, the application is deemed abandoned. When all the requirements are met, the patent is granted and notified in the Patent Office, Journal.
13. WHAT IS THE TERM OF PATENT?
The term of every patent is 20 years from the date of filing of the patent application, irrespective of whether it is filed with provisional or complete specifications.
14. WHAT IS THE DATE OF THE PATENT?
The date of the patent is the date on which the application for the patent is filed.
15. WHAT RIGHTS DOES A PATENTEE/PATENT HOLDER GET?
Where a patent covers a product, the grant of a patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose.
Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorisation, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.
16. WHAT IS THE RENEWAL FEE? WHEN IS IT REQUIRED TO BE PAID?
To keep the patent in force, a renewal fee must be paid annually. The first renewal fee is payable for the third year and must be paid before the expiration of the second year from the date of the patent. Suppose the patent has not been granted within two years. In that case, the renewal fees may be accumulated and paid immediately after the patent is granted, or within three months of its recordal in the Register of Patents or within an extended period of 9 months by paying extension fees of six months, from the date of recordal. If the renewal fees are not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided the application is made within eighteen months from the date of cessation.
The renewal fee is counted from the date of filing the Patent application. Six months' grace time is available with an extension fee for payment of the renewal fee.
17. WHAT IF I FORGET TO PAY THE RENEWAL FEE?
In that case, you will have an option to restore the patent. Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse.
18. WHEN CAN I FILE FOR PATENT PROTECTION OUTSIDE INDIA?
An application for a patent by an Indian inventor/applicant may be filed in any other country or region 6 (Six) weeks after filing in India. If any application is to be filed abroad without filing in India, it should be made only after taking written permission from the Controller. A summary of the invention must be filed along with necessary forms and fees for this purpose.
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