In brief: patent prosecution in India

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Although section 2(1)(j) of the Act states that any new product or process involving an inventive step and capable of industrial application is patentable, sections 3 and 4 (under chapter 2) of the Act define inventions that are not patentable. Section 3 includes:

• an invention that is frivolous or that is contrary to well- established laws;
• an invention of which the primary or intended use or commercial exploitation would be contrary to public policy or morality or that would cause serious prejudice to human, animal or plant life or health, or to the environment;
• the mere discovery of a scientific principle or the formulation of an abstract theory or the discovery of any living or non-living substance occurring in nature;
• the mere discovery of a new form of a known substance that does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant (according to the explanation to this clause, ‘salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy’);
• a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
• the mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way;
• a method of agriculture or horticulture;
• any process for medical, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to keep them free of disease or to increase their economic value or that of their product;
• plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for the production or propagation of plants and animals;
• a mathematical or business method or a computer program per se or algorithms;
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
• a mere scheme or rule or method of performing mental acts or method of playing games;
• a presentation of information;
• topography of integrated circuits; and
• an invention that, in effect, is traditional knowledge or that is an aggregation or duplication of known properties of a traditionally known component or components.

Section 4 includes inventions relating to atomic energy. In 2016, in a decision given by the Kolkata Patent Office, a patent application by Merck Eprova AG was refused for falling within the ambit of section 4 (relating to the field of atomic energy as prescribed by section 20 of the Atomic Energy Act) of the Patents Act. The Controller of Patents refused the application based on a letter from the Department of Atomic Energy, which stated that the invention relates to atomic energy and should be refused.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

A company employee or an independent contractor’s right to apply for and own a patent is governed by the terms of the agreement between employee and employer or contractor and the contracting party.

A patent may be owned by an individual, a group of individuals or a legal entity (eg, a company). A firm may also apply for a patent as an assignee (Shinning Industries v Shri Krishna Industries, AIR 1975 ALL 231).

A patent may be jointly filed and owned by two or more parties. An application may be filed by the inventor or assignee, or a legal representative of deceased persons who were entitled to make such an application, immediately before their death. A patent applicant may be a legal entity and need not necessarily be a natural person.

In the case of jointly owned rights in a patent, unless there is an agreement to the contrary, each of the co-owners shall exercise his or her rights to his or her own benefit without accounting to the other owners. A licence under the patent shall not be granted and a share in the patent shall not be assigned by a co-owner without the consent of the other co-owners (section 50 of the Act).

The rights in the invention can be assigned to any person or legal entity either during the pendency of the application or after the patent is granted. Section 68 of the Act states that assignment, mortgage, licence or creation of any other interest in the patent shall not be valid unless it is in writing, outlining the terms and conditions governing the rights and obligations of each party.

Where persons become entitled by assignment, transmission or operation of law to a patent or to a share in a patent, they have to apply to the controller for the registration of their title in the register of patents (section 69 of the Act).

The Patent Office maintains a register wherein all information pertaining to a patent, including names and addresses of the grantees, their assignees, notifications of such assignments and of transmissions of patents, licences under patents and amendments, extension and revocation of patents, is recorded (section 67 of the Act).

In Order No. 252 of 2013 in NTT DoCoMo Inc v Controller of Patents, the IPAB clearly held that the applicant for a patent has to substantiate or establish the proof of right to make an application irrespective of the nature of the application, namely, convention, non-convention, national phase or a divisional application.

Section 7 of the Indian Patents Act read with Rule 10 of the Indian Patent Rule, 2003 requires an Applicant to submit ‘Proof of Right’ for filing of the application. The Applicant can file a Form 1 executed by the inventors or a worldwide assignment, confirmatory assignment or employment contract etc. The IPAB in Dow Agrosciences LLC vs Controller of Patents, order dated 17 October 2021, OA/63/2020/PT/DEL concluded that the legal requirement of filing of the proof of right is met by filing declaration under Rule 4.17(ii) in respect of national phase applications.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

A basic overview of the timeline of the patenting process is as follows:

The period for the grant of a patent in India is about five to seven years.

A revised fee structure has been provided for filing of patent application as well as other proceedings before the Patent Office by the recently amended Patent Rules. A third category of applicant for patent has been introduced in the form of ‘small entity’, and the fees charged to them have been fixed in between the fees for a natural person and for all persons other than natural persons (except a small entity). The amended rules also provide for a 10 per cent additional fee when the applications for patent and other documents are filed through the physical mode, ie, in hard copy format as opposed to the online mode.

Are there any procedures to expedite patent prosecution?

The Indian Patent Office is in the process of modernising and expanding and has recruited a large number of examiners. This is expected to reduce the period for the grant of a patent from about five to seven years to an average of two to five years.

The application is published after the expiry of 18 months from the date of filing or priority date, whichever is earlier. The publication of the application can be accelerated by filing a request to the controller with the requisite fee.

The Patents Rules 2003 were amended in 2016 and have been effective since 16 May 2016. The new Rules brought major procedural changes in patent prosecution, for expediting the prosecution of patent applications, some of which are as follows:

• Examination of applications: the reply to the Examination Report has to be filed within six months (instead of 12 months) from the date of issuance of the first statement of objections. This period can be extended by three months provided the request for extension is filed before the expiry of the six-month period.
• Expedited examinations of application provision are available. 
• Hearings: hearing submissions have to be filed within 15 days of the date of the hearing. A hearing adjournment request should be made at least three days before the date of hearing. No party will be given more than two adjournments and each adjournment shall not be for more than 30 days.

The Ministry of Commerce and Industry, Department of Promotion of Industry and Internal Trade published the Patent (Amendment) Rules 2019, which came into force on 17 September 2019. The rules were amended to expand the eligibility criteria for expedited examination. The expedited examination was earlier available for applicants who had selected India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in the corresponding international application, or if the applicant is a start-up. The definition has been expanded to also include applications from the following: 

1. a small entity;
2.  a natural person or in the case of joint applicants, where all the applicants are natural persons, if the applicant or at least one of the applicants is female;
3. a government department;
4. an institution established by a central, provincial or state Act, which is owned or controlled by the government;
5. a government company as defined in clause (45) of section 2 of the Companies Act 2013 (18 of 2013);
6. an institution wholly or substantially financed by the government;
7. an applicant whose application pertains to a sector that is notified by the central government on the basis of a request from the head of a department of the central government; and
8. an applicant whose application is eligible under an arrangement for processing a patent application pursuant to an agreement between the Indian Patent Office and a foreign patent office and in this regard the patentability of patent applications filed under this clause will be in accordance with the relevant provisions of the Act.

For point 8 above, the cabinet has approved the PPH (Patent Prosecution Highway) programme and the Indian Patent Office has initially started accepting requests under the PPH pilot programme in relation to the Japan Patent Office.

The PPH programme commenced on 5 December 2019, as notified on 4 December 2019. After scrutiny of 100 requests received, 56 requests were accepted by the Indian Patent Office (IPO) and the applicants were allowed to file a request for expedited examination on Form 18A.

Thereafter the IPO has twice notified acceptance of Form 5-1 under Chapter 5 of the PPH Guidelines from 9 March 2020 and 10 August for remaining slots. After scrutiny of requests received in response, 39 requests had been accepted by IPO and the applicants were allowed to file a request for expedited examination on Form 18A. Further, IPO will again start accepting the PPH request for the remaining five slots from 2 November 2020.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

Under section 10 of the Indian Patents Act, every complete specification should fully and particularly describe the invention and its operation or use and the method by which it is to be performed. It should also disclose the best method of performing the invention that is known to the applicant and for which he or she is entitled to claim protection.

Finally, the specification should end with a claim or claims defining the scope of the invention for which protection is claimed and be accompanied with an abstract to provide technical information on the invention.

With regard to the disclosure of prior art under section 10(4) of the Indian Patents Act in the patent specification, the Patent Office and the Intellectual Property Appellate Board (IPAB) in the Novartis case did recognise that under the law (section 10(4)) disclosure of prior art is not mandatory, but held that, despite there not being any specific provision under Indian law, the relevant prior art including the closest one ought to be disclosed in the patent specification, and the applicant cannot be considered to have discharged his or her duty or obligation unless the prior art is disclosed so that the invention can be sufficiently distinguished over the prior art.

Must an inventor disclose prior art to the patent office examiner?

The Act contains no provision that makes it mandatory for an inventor to disclose prior art, although to meet the requirement of sufficiency of description, it is important to distinguish the invention over prior art as was also held by the IPAB in Novartis v Ranbaxy and Others. It is, however, mandatory to provide information of the corresponding applications filed in other countries under section 8 of the Act within six months of their filing; and to provide search and examination reports in the corresponding application to the Patent Office examiner. Failure to do so is a ground for pre-grant opposition, post-grant opposition and revocation of the patent. Patents have recently been revoked by the IPAB on grounds of non-compliance with obligations under section 8 (Uniroyal v VRC Ltd, Hindustan Unilever v Tata Chemicals, etc).

A recent order by the Division Bench of the DHC has helped elucidate the legislative intent behind section 8 of the Indian Patents Act. The Division Bench held that:

• the power to revoke a patent under section 64(1) is discretionary and not automatic;
• the court is to first examine whether omission to furnish information is deliberate, intentional, accidental, clerical or on account of bona fide error;
• the court will have to examine the evidence for wilful suppression of information and cannot revoke a patent immediately on the grounds of non-compliance with section 8; and
• it will also have to be determined if the omission of the information or part of the information was material to the grant of the patent, which can be answered only at the conclusion of the trial.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

A patent applicant can file either a divisional application under section 16 of the Patents Act or a patent of addition under section 54 to pursue additional claims. There is no limitation on the number of claims. However, the fee for each claim in excess of 10 is US$20 or US$5 per claim.

The divisional application has to be filed any time prior to the grant of a patent on the ground of unity of invention, and a patent of addition can be filed any time during the life of the main patent.

The Intellectual Property Appellant Board has recently, in its judgment in LG Electronics Inc v Controller of Patents, adjudicated on the maintainability of divisional application under section 16 of the Indian Patent Act. In the order, the IPAB held the following with respect to voluntary filing of divisional applications:

• the applicant can file one or more divisional applications if the invention disclosed in the parent application does not relate to a single invention or to a group of inventions forming a single inventive concept; and
• the divisional application should not include any claim already claimed in the parent application (to avoid double patenting).

Further, in a decision dated 17 July 2013, in the matter of Indian Patent Application No. 3273/KOLNP/2008 of Genentech Inc, the Controller held that a divisional application of a divisional would be considered as a divisional of the original parent application provided the same is filed during the pendency of the original application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to appeal an adverse decision by the Patent Office. Under the Act, an appeal against an order or directions of the controller lies before the IPAB. The board, under section 116 of the Act, was constituted on 2 April 2007. Thus, at this time, all such appeals lie to the High Court, as was the case before the Patents Act 1970 was amended by the 2002 amendment.

In a recent decision of the IPAB, it held that the decision of the Controller in a review petition is not appealable and that the appeal is restricted to certain provisions and not available against an order in a review petition passed under section 77(1)(f).

However, although the Indian Patents Act does not provide for an appeal against the order of the Controller in a pre-grant opposition proceeding, a recent decision of the DHC held that an applicant is entitled to file an appeal against the order of a controller in a pre-grant opposition proceeding, as an order under section 25(1) it is to be treated as being an order under section 15 of the Indian Patents Act, which order is appealable.

In two landmark cases, the IPAB treated orders issued under non-appealable provisions of sections 11(B)(4) and 77(f) as appealable.

The first such order was issued under section 11(B)(4) treating an application for patent as ‘deemed withdrawn’ for failure to file the request for examination within the prescribed time period of 48 months from the date of priority of the application. Statutorily, orders passed under section 11(B)(4) are not appealable but the appellant’s attorneys argued that since the applicant had filed the request for examination in a timely fashion, the said order should be taken as an order under section 15 of the Indian Patents Act, which bestows upon the applicant a right to appeal. The IPAB agreed with the submissions of the appellant and allowed the appeal. In the second case, an order issued in a pre-grant opposition, which was treated as a review petition under orders of the DHC to correct a procedural irregularity that had ensued due to a patent being granted without processing of a pre-grant opposition, was treated as appealable by the IPAB. The IPAB held that the order issued in the review petition under section 77(f) was in effect an order in a pre-grant opposition that was being treated as a review petition under directions of the High Court, and since orders in pre-grant oppositions are appealable, the order in this case was also held to be appealable.

Does the patent office provide any mechanism for opposing the grant of a patent?

The Act provides for pre-grant opposition and post-grant opposition.

After the patent application has been published in the official journal, and at any time before the grant of a patent, any person may submit a written opposition to the controller on the grounds listed in section 25(1) of the Act.

Also, post-grant opposition can be filed by any interested person before the expiry of one year from the date of publication of grant of the patent.

The grounds of pre-grant opposition, post-grant opposition and that of revocation are quite similar.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Section 11 of the Act contains the rules for fixing the priority dates. Different priority dates may be allotted to separate claims to settle the disputes between different applicants for the same invention.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

A patent application may be amended by filing an application for amendment to the controller, before or after the grant of the application, insofar as the amendment is within the scope of the disclosure by way of disclaimer, explanation or correction. An amendment may also be effected for change of name, address, nationality or address for service (section 58 of the Act, subject to section 59).

The High Court, in any proceedings before it for revocation of a patent, allows patentees to amend their complete specification, subject to the terms as to costs and so on. Also, instead of revoking a patent, the High Court can allow the specification to be amended.

The nature of amendments that are permissible to the complete specification:

• are those by way of disclaimer, correction or explanation;
• must be for the purpose of correcting an obvious mistake;
• should not claim or describe matter not disclosed in substance in the specification before amendments; and
• should fall wholly within the scope of the specification before the amendment.

There is no provision under the Indian Patents Act for re-examining a patent once granted, except that any person interested may approach the Patent Office in a post-grant opposition or the IPAB in a revocation petition to invalidate the patent.

How is the duration of patent protection determined?

The duration of patent protection is 20 years and it is determined from the date of filing the application. If a provisional application has been filed followed by a complete specification, the term of the patent is counted from the date of filing the provisional application.

In the case of national phase applications under the Patent Cooperation Treaty, the term is calculated from the international filing date. On being granted a patent, the patentee shall have privileges and rights from the date of publication of the application except in the case of postal applications, where the rights and privileges will accrue from the date of grant of a patent.

Law stated date

Give the date on which the information above is accurate.

20 April 2020.