PATENT LAW AND APPLICATION

Introduction to Patent Protection and Filing Process in India

A patent is a legal monopoly granted to an inventor by the government for a limited period. The patent allows the inventor to prevent others from making, using, selling, or importing the invention without permission. However, having a patent does not automatically grant the right to exploit the invention, as other regulations, like health and safety laws, might still apply. A patent is a form of intellectual property that can be sold, transferred, licensed, or even abandoned. In some instances, the government has the authority to revoke a patent, even after it has been granted.

A patent protects a new, useful invention, such as a novel product, process, or improvement to an existing product. This exclusive right lasts for a fixed term, generally 20 years in India and most other countries. Patents are territorial, meaning an Indian patent is valid only within India unless specific steps are taken to extend protection internationally. To protect an invention, the inventor needs to file an application with the Indian Patent Office or with relevant authorities in other jurisdictions.

Legal Basis

In India, patents are governed by the Patents Act, 1970 (amended in 2005) and the Patents Rules, 2003 (amended in 2006).

Steps for Filing a Patent Application in India

1. Eligibility to File an Application:

   • Individuals (including minors), legal representatives, and corporate bodies can file for a patent. Non-residents and foreigners must appoint a registered agent in India to file the application on their behalf.
   • The application must be filed in the jurisdiction where the applicant resides or has their principal place of business. Foreign applicants must file in the jurisdiction where their address for service in India is located.

2. Priority and Specifications:

   • An applicant may claim priority from an earlier corresponding application filed in a convention country (within 12 months).
   • Applications can be filed with a provisional specification (providing a brief description of the invention) or a complete specification (providing a detailed description). A complete specification must be filed within 12 months if a provisional specification is used.

3. Patent Examination:

   • Patent applications undergo formal and substantive examinations conducted by the Indian Patent Office. The applicant must respond to any objections within 12 months from the first examination report.
   • Amendments can be made to the application by the applicant or at the examiner’s request, and divisional applications can be filed for separate inventions.

4. Patent Publication:

   • A patent application is published 18 months from the filing date. If an applicant desires faster publication, they can request urgent publication for an additional fee.
   • Following publication, the applicant gains rights similar to those of a granted patent until the patent is officially granted.

5. Pre-Grant Opposition:

   • Once the application is published, anyone can oppose the grant of a patent. This opposition must be filed before the grant of the patent.

6. Post-Grant Opposition:

   • After the patent is granted, it can be challenged within one year of the grant through a post-grant opposition proceeding.

Working of Patents

• Renewal Fees: To maintain the validity of a patent, the patentee must pay annual renewal fees. If the renewal fee is not paid, the patent may lapse, but it can be restored within a year upon demonstrating that the lapse was unintentional.
• Form 27: Every patentee must file Form 27 annually, stating how the patented invention is being commercially worked in India. Failure to file this statement could result in penalties.

Compulsory Licensing

After three years of a patent’s sealing, an application for compulsory licensing can be made if it is found that the invention is not meeting the reasonable needs of the public or is not available at a reasonable price.

Infringement and Enforcement

• Infringement: A patent owner can initiate legal proceedings against any infringement of their patent. The court can issue an injunction or award damages.
• Defenses Against Infringement: The defendant may argue various grounds for revocation, such as the patent being invalid or not meeting patentability criteria.
• Groundless Threats: If a party falsely claims patent infringement, the defendant can file a suit for declaring non-infringement.

Patents and Computer Software

Software patents in India are allowed if the program results in a “technical effect” when executed, such as improvements in technology. A software that does not produce such effects is generally not patentable. For instance, a program that speeds up image processing may be patentable due to its technological improvement, while a translation software would not be.

International Patent Protection

To protect an invention globally, the applicant can:

1. File separate applications in multiple countries.
2. Claim priority under the Paris Convention by filing the initial application in one Convention country and then filing in other countries within 12 months.
3. Use the Patent Cooperation Treaty (PCT), which simplifies the process of filing international patent applications by allowing the applicant to file a single application that is recognized in over 140 countries.

The PCT allows an international patent application to be filed through the World Intellectual Property Organization (WIPO). The application undergoes an international search, and the applicant can later enter the “national phase” by filing with individual patent offices.

India, as a member of the PCT, allows applicants to leverage the PCT system for international patent protection. The process of patent filing in India is detailed under the Patents Act, 1970, and Patents Rules, 2003. It’s essential for applicants to work with a registered patent agent to navigate this complex process effectively. The steps outlined ensure that patents are granted for inventions that are novel, useful, and non-obvious, while also providing mechanisms for protection and enforcement.