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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.
A patent application can be filed with Indian Patent Office either with complete
specification or with provisional specification along with fee as prescribed. In case the
application is filed with provisional specification then the Applicant needs to file
complete specification within 12 months from the date of filing of the application.
A new product or process, involving an inventive step and capable of being made or
used in an industry can get Patent protection. It means the invention to be patentable
should be technical in nature and should meet the following criteria i) Novelty: The matter disclosed in the specification is not published in India or
elsewhere before the date of filing of the patent application in India.
ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light
of the prior publication/knowledge/ document.
iii) Industrially applicable: Invention should possess utility, so that it can be made or
used in an industry.
Where a patent covers a product, the grant of 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.
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SINGH&ASSOCIATES
AdvocatesandSolicitors
Registration of Patent for an invention, gives legal protection to the invention enabling
the Patentee to take legal actions against the person so infringing (using) the patent
without the authorization of the Patentee. If the invention is not protected as a patent
then the inventor or right-holder to such invention has no recourse against infringers.
Hence the inventor or the right holder must seek patent protection over the invention
in order to have exclusivity over the invention and to commercially gain from the
invention. In simple words having a patent over the invention is like Government of
India acknowledging the invention and providing exclusive rights to the inventor or the
assignee over the said invention/patent.
It is advisable that the application for patent shall be made the moment the invention
takes a workable shape which imparts certainty to the complete invention. The
application can be made with provisional specifications (details) and the enabling
disclosure or complete specification or full details of working of the invention can be
filed afterwards but before 12 months from the date of filing. Patent Application with
provisional specification secures priority date for the Patent; i.e. upon registration, the
Patentee is conferred upon with this right to challenge or counter any unauthorized use
or commercial performance of his invention/patent from the date of filing of the
application for Patent.
Anticipation of the invention either by publication or knowledge in the public domain
or enabling disclosure to any other person leads to refusal of grant of patent over the
invention. Therefore the invention must be kept under strict confidentiality before
applying for patent. Any enabling 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.
1. Application for patent registration shall be filed in prescribed Form with applicable
government fee. The applicable fee depends upon the nature of applicant (whether
natural person or legal entity), number of claims and number of pages of complete
specification. The Application shall be made with following documents:
a) Provisional or complete specification and drawings (if any) in duplicate;
b) Statement and undertaking regarding foreign filing details in respect of
the same invention;
c) Declaration as to Inventor ship;
d) Priority document (if it is a convention application);
e) Power of attorney (if the application is made through a patent agent);
f) Proof of right if the application is made by the assignee;
2. Applications are then published in the Patent Office Journal not before the
exhaustion of 18 months from the date of filing of the application or the date of
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AdvocatesandSolicitors
GRANT OF PATENT
When all the requirements of the FER are met or in case of opposition under section
25(1), if the opposition is decided in favour of the applicant, the patent is granted,
after 6 months from the date of publication under section 11 A, the letter patent is
issued, entry is made in the register of patents and it is notified in the Patent Office,
Journal, thereafter opening the application, specification and other related documents
for public inspection on payment of prescribed fee.
Term of every patent will be 20 years from the date of filing of patent application,
irrespective of whether it is filed with provisional or complete specification. Date of
patent is the date on which the application for patent is filed.
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AdvocatesandSolicitors
MAINTENANCE OF PATENT
To keep the patent in force, Renewal fee is to be paid every year. 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 patent. If the patent has not been granted within two years the
renewal fees may be accumulated and paid immediately after the patent is granted, or
within three months of its recordal in Register of Patents which may be extended by
six months upon request made in prescribe form along with applicable fee. If the
renewal fee is not paid within the prescribed time, the patent will cease to have
effect. However, provision to restore the patent is possible provided that the
application for restoration is made within eighteen months from the date of cessation
of patent.
WORKING OF PATENT
Indian Patent legislation mandates every Patent holder to work the patent in India.
Every Patentee or his Assignee is required to submit a statement of working of the
Patent in India, the deadline for the same is 31st March each year. The Act also
stipulates a penalty in case of submitting a wrong, false or abstinence from submitting
such statement within prescribed time. In case the Patentee or the right holder has not
worked the patent in India for continuous period of 3 years, the patent is open for
grant of compulsory license, which can be applied by any interested party who wish to
commercialize or work the patent in India.
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AdvocatesandSolicitors
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AdvocatesandSolicitors
FAQs
1. 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.
2. 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.
3. 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.
4. 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.
5. 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 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.
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AdvocatesandSolicitors
However before the grant of patent and after the publication of application, any person
can make a representation for pre-grant opposition.
6. 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. It is pertinent to mention here that the infringement action can only be initiated
after the patent is granted.
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SINGH&ASSOCIATES
AdvocatesandSolicitors