This article is the second of the three-part series which the author began writing with the hope that it would become a reference for Applicants, in-house counsel, foreign attorneys, or anyone interested in filing, prosecuting and managing patents in India. Part I focused on the filing and preliminary stages of prosecution of an international patent application (i.e. an application filed vide the PCT route in India), while Part II focuses on the below.
I. Typical objections in an office action
Once a request for examining the patent is filed, and the application is published, the same is taken up for examination in the order of the date on which such request was filed. Once taken up, the application is referred to an examiner for conducting a formal and substantive examination as per the technical field of the subject matter. Thereafter, the examiner prepares a report on the patentability of the claimed subject matter and other formal issues as well as substantive requirements of the law. This report is called the First Examination Report (“FER”) and is dispatched to the address for service of the Applicant in India.
Typically, the FER includes objections relating to the novelty and inventive step of the claimed subject matter, apart from the patent eligibility requirements in India.
Further, the application may also be objected on grounds of industrial applicability and the examiner may assess if the claimed invention is capable of use in any industry or of being made using an industrial process.
Additionally, the claimed subject matter may also be objected for insufficiency of disclosure. In this regard, the examiner may assess whether the patent specification is properly titled; the subject matter is fully and particularly described in the specification; the claims define the scope of the invention properly; the specification describes the best method of performing the invention or not; the source and geographical origin, in case of inventions related to biological materials, has been disclosed; the approval obtained from the National Biodiversity Authority, wherever applicable; and whether the accession number and other details of the depository (i.e. as per the obligations under the Budapest Treaty) are given, wherever applicable.
The application may also be objected for lack of unity of invention. In this regard, the examiner may check if the claims relate to a single inventive concept. In case, he finds that the claims include a plurality of inventive concepts, the examiner shall raise an objection and to remedy the same, the applicant may choose to divide the patent application.
II. Typical reasons for refusals
If the response to the FER and amendment filed by the Applicant does not satisfy the requirements, the office may issue one or more examination reports i.e. a Second Examination Report. If the amendments and submission does not satisfy the requirement of the first and/or second examination report, the Controller may offer an opportunity of hearing to the Applicant and decide the same on merits. If still not satisfied, the Controller may choose to refuse the patent application. If at all a refusal order is issued, the same will be a speaking order.
In India, patents are typically refused on the grounds of lack of novelty, lack of inventive step, patent ineligibility or statutory non-allowable subject matter.
III. Remedies against refusals
When a patent application is refused, an applicant may either choose to correct such refusal by exercising the review jurisdiction of the patent office, or by appealing before the higher forum i.e. the Intellectual Property Appellate Board (“IPAB”).
A review is maintainable either when new evidence which was not within the knowledge of the applicant or could not be produced at the time the refusal decision was being issued has come to light, or when there is an error apparent on the face of the record. A review petition must be filed within one month of the refusal being communicated to the applicant, or within a further period not exceeding one month. The review petition must be accompanied by a statement setting forth the grounds for review.
On the other hand, an appeal lies when the refusal decision was erroneous. Each appeal should include names of the parties and grounds of appeal. The appeal must be filed along with the evidence in support thereof, and a certified copy of the refusal decision. In case an appeal is filed by a person other than the applicant, the appeal should include an authorization to file the same i.e. an affidavit which shows competency of the deponent, or a power of attorney (in case filed by an authorized representative), or a vakalatnama (in case filed by a lawyer/patent attorney). Once filed, the appeal is scrutinized and if found to be in order, the same is registered and accorded a serial number. In case a defect is found, the appeal is not registered until such defect is rectified. The time-period for rectifying defects is 15 days from the same being identified, failing which, the appeal is deemed to have been abandoned, subject to an application for condonation of delay or for an extension of time not exceeding 30 days. Once an appeal is filed, the respondent may file a counter-statement within 2 months from date of service of the appeal. Upon receipt of the counter-statement, a reply may be filed by the appellant thereto within 2 months of receipt thereof. Thereafter, the case shall proceed for hearing. The language of the IPAB is English or Hindi and all proceedings and orders are communicated accordingly.
IV. Post Grant Oppositions
In India, only a “person interested” (a person engaged in, or promoting research in the same field as that to which the invention relates, including an organization that has a manufacturing or trading interest in the goods connected with the patented article or a financial interest in manufacturing such goods or which possesses patents relating to the same subject) may file a notice of opposition against the grant of a patent within twelve months from the date of publication of the grant. As opposed to a pre-grant opposition, the opponent shall state the nature of his interest in the proceeding.
The notice of opposition is filed before the patent office where the patent has been granted on various grounds, including inter alia that the invention was wrongfully obtained; lacks novelty; lacks inventive step; suffers from prior use; insufficiency of disclosure; and/or non-compliance of mandatory procedures. The notice must be filed along with a statement of opposition and evidence in support thereof. A copy of the statement and evidence, if any, shall be delivered to the patentee by the opponent. Upon receipt of the opposition, the Controller shall notify the patentee of receipt thereof. Upon receipt, the patentee may file a response and supporting evidence within two months, failing which the patent shall be deemed to have been revoked and the Controller shall issue the order of revocation and record the same in the register of patents.
Within one month from the receipt of the patentee’s reply, the opponent may submit the rejoinder and supporting evidence. The opponent shall deliver a copy of rejoinder and evidence to the patentee as well. Thereafter, no further evidence shall be delivered by either party, except with the direction of Controller.
Upon receipt of the notice of opposition, an Opposition Board, consisting of three members is constituted by the Controller. The Board examines the notice including all documents filed by the opponent and the patentee. After examination, the Board issues a joint recommendation within three months from the date of receipt of all documents. Based on the recommendation of the Board, the Controller fixes a hearing. Either party wishing to attend the hearing should inform the Controller in writing. After the hearing, the party desirous of being heard, or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of Board, the Controller shall decide the opposition, i.e., the Controller may revoke the patent, or order amendments in the patent or refuse the opposition.
In India, a “person interested” (a person engaged in, or promoting research in the same field as that to which the invention relates, including an organization that has a manufacturing or trading interest in the goods connected with the patented article or a financial interest in manufacturing such goods or which possesses patents relating to the same subject) or the Central Government may file a revocation petition before the IPAB. Alternatively, a defendant may file a counter claim for revocation of a patent in a suit for infringement before the Court of first instance. However, once such a counter claim is filed before a District Court, the matter shall be necessarily transferred to the High Court. Grounds for revocation before the IPAB or the Court include inter alia include non-entitlement, wrongful obtainment, non-patentability, industrial applicability, insufficiency of disclosure, false representation, non-compliance of mandatory procedural requirements, failure to furnish certain information, and non-working of the patented invention.
Additionally, the Central Government may initiate suo motu revocation proceedings through the Controller if it is satisfied that a patent is for an invention relates to atomic energy. A patent may also be revoked in public interest by publishing such revocation in the gazette, if the Central Government feels the patent is mischievous to the State or generally prejudicial to the public. A patent for which a compulsory license has been granted can also be revoked by the Controller upon application by the Central Government or a person interested before the Controller for non-working of the invention, or that the reasonable requirements cannot be met, or that the same is not available to the public at a reasonably affordable price.
VI. Rights of patentees
Where the subject matter of a patent is a product or a process, the patentee has the exclusive right to prevent unauthorized third parties, from the act of making, using, offering for sale, selling or importing for such purposes, that product, or product obtained directly by that process in India.
Where a patent is co-owned or jointly owned, unless an agreement provides to the contrary, each owner is entitled to an equal undivided share in the patent, and each owner is entitled to the aforementioned exclusive rights by himself.
In India, an assignment of a patent is not valid unless the same is reduced to the form of a duly executed written agreement between the parties involving the exchange of some form of consideration. It is also advisable to have the agreement registered for it to be admissible as evidence in a judicial/quasi-judicial proceeding.
As outlined in Part I, an assignment deed is useful in establishing a proof of right to make a patent application. Moreover, the patent office maintains a register of patents wherein inter alia the names and addresses of grantees, notification of assignments, and other particulars which affect the validity and ownership of patents are recorded. As such, once a person becomes entitled to a patent by virtue of an assignment, or other transmission, such person can apply for registration of his title in such patent. Upon application for registration of such title, the Controller shall upon proof of title being furnished to his satisfaction, register such applicant in the register of patents and enter the particulars of the ownership of the title, along with details of the instrument from where the applicant derives title.
In India, once a patent is granted, the patentee must pay a renewal fee at the expiration of the second year from the date of the patent to keep it in force. Upon grant, the first renewal payment, which may be referred to as accumulated annuities, should be paid within three months from the date of recording of the patent in the register. Typically, accumulated annuities may be calculated after two years from the date of filing of the patent application till the time of grant thereof. Further, the patent office follows a practice in which the renewal fee must be paid in advance. For example, the renewal fee for the seventh year must be paid before the expiration of the sixth year and so on.
Further, there is also a provision in which a renewal date of a patent may be extended up to six months by filing a request for extension before the expiry of the renewal date. Also, where a patentee wishes to make advance payment for renewal, the same can be done for two or more years in advance.
It must be noted that a failure to make an annual renewal payment within the prescribed period may lead to a lapse of the patent. If the patent lapses due to non-payment of the annual renewal fee, such lapsed patent may be restored by filing an application for restoration within eighteen months from the date on which the patent ceased to have effect. However, the patentee may have to provide the circumstances, which led to the failure of payment of renewal fee, in the restoration application.
IX. Requests for permissions to file applications abroad
An Indian resident is prohibited from filing a patent for an invention outside India, unless, either the authority for filing such patent application outside India is sought and received from the patent office, or an application for a patent for the same invention is made in India and six weeks have lapsed ever since. Typically, this authority is received within 21 days from the date of applying for such authority, unless secrecy provisions are in force. However, if any person makes a patent application outside India without receipt of the authority to do so, any corresponding patent application filed in India shall be deemed to have been abandoned, and in case a patent is granted, shall be liable to be revoked. Furthermore, such an act is punishable with imprisonment for a term which may extend to two years, or with fine, or both. Thus, adhering to this requirement is critical when filing applications that include an inventor having Indian residency, which is quite common in the current scenario.
X. Post-dating of applications
Post-dating can be very useful for an applicant who has filed the priority application in India but needs additional time to meet the sufficiency of disclosure requirement to suitably enable his invention. In such circumstances, an applicant may request post-dating of the priority application by up to a maximum of six months from the date of filing. Such request for post-dating can be made at any time prior to the grant of the patent. However, it is important to remember that if the request is allowed, the examination of the patent application shall be carried out based on the new date, and in case the request is filed after issuance of the examination report, and the same is allowed, a fresh examination shall be carried out as per the new date.