This article kicks off a three-part article series which the author becomes a reference for patent applicants, in-house counsel, foreign patent attorneys, or anyone interested in filing, prosecuting and managing patents in India. Part I focuses on filing and preliminary stages of prosecution of an international application, that is a patent application filed in India in accordance with the Patent Cooperation Treaty (“PCT”).
I. Deadline for entry, preferred office and type of entity
For international applications the deadline for entering India is 31 months from the date of earliest priority, provided that, India has been designated while filing of the PCT application.
An international application can be filed at any of four patent offices’ in India, which are located in Mumbai, New Delhi, Chennai and Kolkata. The appropriate office for filing is based on the address for service of the applicant or that of its patent agent. Furthermore, since an international application filed at one patent office cannot be transferred to another patent office, and that each patent office functions independently of another, it may be prudent to take such issues into consideration or consult an Indian patent expert prior to deciding which office to file before.
Prior to filing an international application, it is required that the applicant choose an entity type to file under. The different entity types that can file an international application in India include a natural person, or a startup, or a small entity, or a large entity.
In order to claim start-up status, an applicant should provide sufficient proof that it is registered as a private limited company, or a partnership firm, or a limited liability partnership firm in India, where more than five years have not lapsed from the date of the incorporation or registration thereof, the turnover for any of the five financial years did not exceed two hundred and fifty million Indian rupees, and it is working towards innovation, development, deployment, or commercialization of new products, processes or services driven by technology or intellectual property.
In order to claim small entity status, an applicant shall provide sufficient proof that it is an enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed one hundred million Indian rupees; or is an enterprise engaged in providing or rendering services, where the investment in equipment does not exceed fifty million Indian rupees.
Any applicant that cannot provide sufficient proof to claim entity status of a natural person, a start-up or a small entity, must claim large entity status.
Choosing the right entity status is important, since the official fees applicable at each stage, from filing until maintenance differ based on the type of entity status claimed. However, since the patent office requires sufficient evidence in order to claim a particular entity status, gathering and submitting such proof could be a daunting task, not to mention risky and costly. Therefore, it may be wise to weigh the pros and cons of choosing a particular entity status.
II. Required documents for making application
The documents required for filing an international application include –
- Original application form duly executed by the applicant(s) and the Inventor(s). Where applicable, there shall be furnished with application a proof of right to make such application, such as an assignment deed, employment agreement, etc.
- International publication (in case the international publication is not in English, a translation of the same into English along with a verification of such translation).
- Amendments, if any, filed under Article 19 or Article 34 at PCT.
- Information and undertaking listing the number, filing date and current status of each foreign patent application in Form 3 within six months from the date of filing.
- Declaration of inventor-ship in Form 5.
- Original Power of Attorney executed in favour of a registered Patent Agent within three months from the date of filing.
All the required documents are to be filed electronically in English or Hindi. It is advisable to submit scanned copies of documents electronically and originals physically to the patent office within fifteen days from the date of electronic filing.
III. Statutory non-allowable subject-matter
Prior to filing an international application, an applicant must be aware of objections relating to non-patentable subject-matter. Indian patent law provides “What are not inventions”, and objections viz. non-patentable subject-matter are raised accordingly. Common objections include -
For inventions in chemistry and life sciences
- A scientific principle;
- Living thing or non-living substance occurring in nature;
- New form of a known substance which does not result in the enhancement of the known efficacy of that substance;
- New use of a known substance;
- An admixture or process for producing an admixture;
- Method of agriculture or horticulture;
- Process for surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
- Plants and animals in whole or in part thereof including seeds, varieties and species and biological processes for production or propagation of plants and animals;
- Traditional knowledge.
For inventions in mechanical engineering and electronics
- An invention which is frivolous or which claims anything obviously contrary to well established natural laws.
- Use of a known machine or apparatus.
- Mere arrangement or rearrangement or duplication of known devices functioning in a known manner.
- Topography of integrated circuits.
For computer related inventions
- A mathematical or business method or a computer programme per se or algorithms.
- A mere scheme or rule or method of performing mental act or method of playing game.
- A presentation of information.
Indian patent law permits the carriage of voluntary and involuntary amendments. At the time of filing an international application, an applicant can delete claims from the specification. Other voluntary amendments, which can be carried out at any time include minor amendments such as name, address and address for service of the applicant. All such voluntary amendments attract a small official fee. On the other hand, involuntary amendments can be made only after issuance of the first statement of objections called the First Examination Report (“FER”) for the purpose of complying with the objections therein. No official fee is imposed for such amendments. The mode of carrying out an amendment to a specification is only by way of disclaimer, correction or explanation. It is important to note that no amendment, whether voluntary or involuntary, is allowed which will claim or describe matter not in substance disclosed or shown in the specification before carriage of such amendment.
V. Publication and Early publication
An international application filed in India is not published until eighteen months from the date of filing such application. Accordingly, during this period the international application shall not be open to public scrutiny. Ordinarily, the Controller shall publish an international application within one month of the expiry of the eighteen month period. However, if desired, an applicant may request for early publication, i.e. publication prior to the expiry of the eighteen months. The date of publication of an international application is significant, as, on and from the date of publication, and until the date of grant, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on such date. On the flip side, since the publication of an application opens it for public scrutiny, the same may attract third party observation and thus, it could be useful to wait until the Controller publishes the application himself.
VI. Examination, Express Examination and Expedited Examination
Any patent application filed in India undergoes examination only once a request for examination is filed. All patent applications are examined based on the date of filing such requests and not based on the date of filing of the application. Therefore, it is advisable to file a request for examination at the earliest.
An applicant filing an international application can file (i) a request for examination, or (ii) an express request for examination, or (iii) an expedited request for examination. In either case, the request must be filed within forty eight months from the date of earliest priority, failing which; the international application shall be treated as withdrawn by the applicant.
An applicant may choose to file an express request for examination before expiry of the 31 month entry deadline. However, this type of request is generally useful only where the international application, and the express request for examination is filed much before the 31 month deadline (i.e. in the 19th month or so) as ideally the examination upon such request should be carried out before the 31st month. Since filing such a request involves an additional fee, and the examination of the case prior to the 31 month deadline is left to the Controller’s discretion, filing such a request may not be very beneficial to an applicant.
An applicant may instead choose to file a request for expedited examination, in this case, a request is maintainable only if the applicant classifies as a start-up, as set out hereinabove, or has elected India as the International Search Authority or the International Preliminary Examination Authority.
Regardless of the route availed of by an applicant; upon examination, a FER is issued. Upon issuance, the time for putting the international application in order for grant is six months from the date thereof. However, a one-time request for extension of three months can be filed, provided that, such request is filed prior to expiry of the initial six-month period. After expiry of the aforementioned time periods, there are no provisions for further extensions, and consequently an application shall be treated as abandoned. It is important to note that there are no provisions for avoiding such abandonment.
After submission of the response to the FER, as per general practice, a hearing is scheduled, and only thereafter the international application is accepted or rejected by the Controller. Usually, the hearing is scheduled within a year from the date of filing the response. After the hearing, the applicant shall file written submissions, within fifteen days thereof.
VII. Withdrawal of applications
An international application filed in India can be withdrawn at any time after filing of the application but before the grant of a patent, by making a request for withdrawal. With respect to withdrawal of an international application where a request for examination has been filed but FER has not been issued, ninety percent of the examination fee shall be refunded.
VIII. Divisional applications
Indian patent law subscribes to the unity of invention concept. As such, during the substantive examination process, objections regarding lack of clarity or lack of unity may be raised. In such circumstances, where the applicant is alleged to have violated the rule of unity, the examiner may direct the filing of a divisional application(s). Regardless of such an objection/direction, the applicant can file a divisional application(s) voluntarily. In either case, the divisional application(s) must be filed before the grant of the parent application. Furthermore, the term thereof is calculated from the date of filing the parent and not that of the divisional.
While drafting a divisional application, it is important to remember that it cannot contain claims relating to the invention disclosed in the parent application. And also, it is pertinent to note that in India one or more divisional applications can be filed for each distinct inventive concept, but, a divisional cannot be sub-divided.
IX. Detailed particulars of corresponding applications
In India, it is mandatory for an applicant, who is prosecuting in respect of the same or substantially the same invention a patent application(s) in any country outside India, to provide detailed particulars such as name of the country, date of application, application number, status of the application, date of publication, date of grant, etc. regarding all such patent application(s), at the time of filing a patent application in India. In addition, it is mandatory for the applicant to undertake to keep the Indian patent office informed of the aforementioned details up to the grant of the patent in India. Accordingly, each time there is a change in the status of any such patent application(s) being prosecuted outside India, the applicant should provide the aforementioned details to the Indian patent office. A failure to abide by such requirements can be a ground to oppose the grant of or invalidate a patent in India.
Furthermore, the Indian patent office may request for details regarding the processing of the patent application(s) outside India, in the FER, and upon such request being made, the applicant must furnish the requested details. Details requested could include office actions or granted claims of the priority application. Where the same are in not in English, an English translation thereof must be provided.
X. Pre-grant oppositions
In India, after the publication of a patent application, and until the grant thereof, any person may file an opposition against the grant of the patent. An opposition is filed before the Controller on various grounds, including inter alia that the invention was wrongfully obtained, lacks novelty, lacks inventive step, the application suffers from prior use, insufficiency of disclosure, and/or non-compliance of mandatory procedures.
Representation for a pre-grant opposition must be filed at the patent office where the patent application has been filed, along with a statement of opposition and evidence, if any, in support of the opposition, and a request for hearing if desired. Upon receipt of such notice of opposition, if the Controller feels that the opposition is maintainable, the Controller shall notify the applicant of such opposition having been filed. On receipt of the notice of opposition, the applicant may file a response within three months thereof. Thereafter, the Controller shall hold a hearing prior to passing any orders rejecting or directing amendment of the patent application.
Initially, the provision for a pre-grant opposition was introduced for third party observation and for filtering frivolous patents. However, ever since the introduction thereof, the pre-grant opposition has become a full-fledged inter partes proceeding. Moreover, since Indian patent law empowers any person to file a pre-grant opposition, a pre-grant opposition can be a dangerous tool in the wrong hands. As such, it is advisable that an applicant minimize the risk of the grant of its patent being opposed, by at least complying with mandatory procedures.
This brings us to the end of part I.
Preview of part II
Tackling tricky office actions, preparing assignment deeds, appealing refusals, etc.