Top ten things you must know about Indian patent system

  1. Unlike US, India has four different patent offices which have specific territorial jurisdiction.  Selection of a patent office is either on the basis of principal place of business of the applicant  or the address for service provided by the foreign applicants’ Indian agent.
  2. India is both a Paris convention signatory and a PCT contracting state. An application claiming  the priority from a convention country needs to be filed in India within 12 months. Unlike most  countries, the time period to enter national phase in India is 31 months from the date of earliest  priority.
  3. For filing a patent application outside India in respect of an invention developed in India,  there is a requirement to seek permission from the Controller of Patents in India (Foreign Filing  License). Alternatively, the application can be filed in India first and after six weeks the  corresponding application can be filed in other countries.
  4. Contrary to popular belief, new forms and new combinations of known substances; isolated protein  and gene sequences and modified microorganisms are patentable in India. However, new properties and  new use of known substances; pure software algorithms and applications; naturally occurring genes  and methods of doing business are generally NOT patentable.
  5. Like US, duty of candour (the section 8 requirement) is an uncompromising requirement in India.  Though, not expressly stated in the law, any information which is material to the determination of  patentability of the invention and is known to the applicant needs to be shared with the office.  The requirement is met by keeping the office informed of the status of each related (corresponding)  application filed in other countries and examination reports issued in respect thereof.  Non-compliance is a ground for revocation.
  6. Like US, a patent in India is granted on a single inventive concept. Hence, if an application is  determined to cover more than one inventive concept, the applicant is called by the examiner to  select one and delete/withdraw claims which cover other inventions which could be claimed in  separate (divisional) applications.
  7. Patent applications are examined only after specific request is made for examination and  applicable fee is paid either by the applicant or an interested person. Request for examination  needs to be made within 48 months of first application and failure to do so will result in dismissal of the patent application.
  8. Unlike US, any person can make a representation and oppose the application once it is published and anytime before grant. Patents can also be opposed post grant within a year at the  patent office or revoked at the Intellectual Property Appellate Board after one year of grant.
  9. There is no special court to decide matters of patent infringement which are heard by Civil  courts. In addition, appeals from the decision of the patent office lie at the Intellectual  Property Appellate Board- a specialised quasi judicial body with certain powers of a High court.
  10. Term of patent in India is twenty years and unlike US, there are no term adjustments/extensions  available. Working of patent is a statutory requirement in India and a statement to this effect  needs to be submitted every year with the patent office after three years of grant. Non working of  a patented invention is a ground for issuing compulsory license and revocation in India.