Scope and intent of legislation

What is eligible for protection?

 Inventions are eligible for protection. In order to be deemed patentable, products or processes claiming to be inventions must be (i) new i.e., not anticipated by prior disclosure; (ii) inventive i.e. involving technical advance over prior art or having economic significance, or both, and that makes the invention not obvious to a person skilled in the art^[6] and (iii) capable of industrial application.

Non-patentable subject-matter

 Sections 3 and 4 of the Act prescribe specific subject-matters that are not patentable under the Act. Some examples of non-patentable subject-matters include inventions contrary to public order or morality^[7], mere discovery of a new form of a known substance without enhancement of known efficacy of the substance^[8]and mere discovery of new use of a known substance or of the mere use of a known process and inventions relating to atomic energy^[9]

Who can apply for patent applications?^[10]

Patent applications can be filed by:

• true and first inventors;
• assignees of true and first inventors; and
• legal representative of any deceased person who immediately prior to death was entitled to make a patent application.

Application procedure

Filing: A patent application may be filed as a direct application without a claim to priority, a direct application with a claim to priority, an application under the Patent Cooperation Treaty (PCT), or a provisional application that may be converted into a complete application within one year. An application may be filed using the PCT route within thirty-one months of the priority date, within one year if it is not a PCT application but with a claim to priority from any of the Paris Convention countries, or a non-priority application at any time before publication of the application or invention in any country.

Categories of applicants: Two categories of applicants are set out: (a) individuals, startups, small entities, educational institutions; and (b) body corporates that do not fall in category (a) Official fees payable to the patent office varies depending upon the category of applicant.

Publication:  An application is published within eighteen months from the date of filing or the date of priority of the application, whichever is earlier^[11]

Examination: An application for patent is examined only on filing of a request for examination^[12] A request for examination may be made within forty-eight months^[13]from the priority date. Expedited examination^[14]of applications is also available in certain cases. Expedited examination may be availed if the applicant is an individual, or a startup, or a small entity, or an entity affiliated with the Government of India, or if India has been indicated as the competent international searching authority or elected as the international preliminary examining authority, or if the applicant is eligible under an arrangement for processing applications between the Indian patent office and a foreign patent office.

Upon issue of the first examination report, an applicant is granted a period of six months (extendable by up to 3 more months)^[15] to address the objections raised in the office action from the date of its issue. An application is considered to be in order for grant only if the requirements raised in the office action have been met satisfactorily. Once the Controller is satisfied with the submissions, if any, made by the applicant, the application is put up before the Controller concerned for grant.

An applicant may also request for a hearing in the matter concerned^[16]. Such a request may be made along with the submissions so that an opportunity to be heard is afforded prior to the Controller taking an adverse decision on any given application. However, hearings are often afforded as matter of discretion by the Controller and in particular instances, may be specifically called for by the Controller.

Proof of right: Proof of right^[17]is required to be demonstrated where right to file the application is by way of assignment (from inventors to applicant, enabling the applicant to file the Indian application). Such proof may be demonstrated by way of appropriate assignment(s) or declaration(s) from all inventor(s) on the priority application, international application, and the Indian application. A period of six months (from filing) is provided for submission of proof of right.

Details of corresponding applications: An applicant is required to provide details of corresponding foreign applications^[18]that may become available including names of countries, application numbers, filing dates, status (whether pending, accepted/granted, or abandoned or withdrawn), the dates and numbers of publication and, if granted, the dates of grant and numbers. For corresponding applications already filed, the requested details require to be submitted within six months of the filing of the application or any change in their status. An applicant is also required to keep the patent office informed regarding the applications that are made subsequent to the filing of the Indian application within six months of their filing.

Prosecution

A first examination report is issued upon examination, listing objections against the application. A response due within 6 months, which is extendable by up to 3 more months. The application is required to be placed in order for grant in such time. After a response is filed, the application is re-examined. A patent is granted if there are no outstanding objections. If objections remain, a hearing notice is issued. An application is disposed of once the hearing has been conducted and written submissions have been filed. In cases of expedited examination, the application is required to be disposed of within 3 months of filing a response to the first examination report.

Divisional applications and patents of addition

Divisional applications may be filed any time before grant or refusal of the parent application. Divisional applications are provided as a recourse to claim subject-matter that cannot be maintained on the parent owing to lack of unity with other claims^[19].

An application for a patent of addition by a person may be made for improvement or modification of an invention claimed in an earlier application (whether pending or granted, hereinafter referred to as “main application”) by the same person. Such an application can either be made simultaneously with the main application or later but shall be granted only after a patent has been granted on the main application. In the event a patentee owns two patents, one of which is an improvement or modification of the other, one of the patents may be converted to a patent of addition of the other.^[20]

The term of a patent of addition is equal to that of a patent granted on the main application. In case the patent for the main application is revoked, the patent of addition may be converted to an independent patent upon request, for the remainder of the term of patent for the main application. Renewal fees are not payable for patents of addition, unless they are converted to independent patents upon revocation of the patent on the main application.^[21]

Patents of addition are not required to be inventive over the main application, but novelty over the main application is necessary.^[22]

Renewal and restoration

Accumulated annuities are to be paid within 3 months of recordal of a patent in the register of patents, in cases where the patent is granted after more than 2 years of filing^[23] Generally, annuities for a particular year are required to be paid before the expiry of the preceding year.^[24]A grace period^[25]of up to 6 months is available for payment of annuities beyond the prescribed timelines. A request for extension of time with fees for every month of delay is required to be filed if annuities are paid in the grace period.

A lapsed patent may be restored by making a formal request within 18 months from the date on which the patent ceased to have effect. If the Controller is satisfied that failure to pay annuities was unintentional and there has been no undue delay in making the restoration application, the application is published. Hearing is afforded if requested for. Interested persons may oppose the application within 2 months of publication. The application for restoration is decided by the Controller after hearing all parties. A patent is restored if no notice of opposition is received, or if one is received, the Controller’s decision is in favour of the applicant. Restoration is subject to payment of unpaid renewal fees and additional fees, if any.^[26]

Statements of working

A statement of working, for every financial year, is required to be filed within 6 months from the expiry of said financial year.

A statement of working is required to be filed by every patentee and every licensee, whether exclusive or not. The statement requires information to be provided in respect of working.

There are consequences to a failure or refusal to file statements or furnish information on working. Failure or refusal to file a statement of working is chargeable with fine of up to Rs 10,00,000. Where the information furnished in a statement of working is false, or the patentee or licensee knows or has reason to believe it to be false, or does not believe it to be true, the patentee or licensee may be liable for punishment by way of imprisonment of up to six months or fine or both.^[27]

Oppositions, revocation and surrender

Pre-grant opposition against a pending application may be filed by “any person” after an application has been published, but before grant on grounds prescribed under Section 25(1). Post-grant opposition against a granted patent may be filed within 1 year from the date of publication of grant by an “interested person”, on grounds prescribed under Section 25(2). Pre and post-grant oppositions to be filed before the Controller of Patents. A petition for revocation^[28]of a patent may be filed before a relevant High Court by an interested person. Revocation of a patent may also be sought on a counterclaim in a suit for infringement.

Courts have made it clear that in the context of pre-grant oppositions the term “any person” cannot be construed in a manner as would constitute abuse of the provision. The provision has been enacted in the interest of society, which ensures that a patent is not misused. As such, “any person” may include researchers and NGOs (apart from interested parties), whose opposition of a patent application may be in the interest of the society as such information would assist the Controller in coming to a decision^[29]

A patent may be surrendered^[30] by giving notice to the Controller. The offer is subsequently published. Interested persons may oppose the surrender within 3 months of publication of the notice. The surrender is accepted, and patent is revoked if no notice of opposition is received, or in the event that one is received, the Controller’s decision is in favour of the surrender.

Secrecy provisions

Where an invention is considered relevant for defence purposes, publication may be prohibited or restricted by the Controller^[31] The Controller is subsequently required to refer the matter to the Central Government for directions as to whether the publication of the invention would be prejudicial to the defence of India. If not considered prejudicial, the Controller is notified, and secrecy directions are revoked. The question of relevance is required to be reconsidered at intervals of six months, or on a reasonable request made by the applicant^[32] In case of a foreign applicant, if it is found that that the invention is published outside India, Controller is notified by the Central Government, and secrecy directions are required to be forthwith revoked.

Patents are not to be granted, and applications are not to be refused during pendency of secrecy directions^[33]

Foreign filing by or because of a person resident in India is allowed only under authority of a written permit. Written permit is not required if (i) the first application is filed in India; (ii) a minimum of 6 weeks have elapsed therefrom; and (iii) there are no pending secrecy directions^[34]

Contravention with secrecy directions or filing foreign applications in violation of Section 39 would result in the Indian application concerned to be deemed to have been abandoned, and a patent granted, if any, to be revoked^[35]Such actions may also attract penal consequences imprisonment up to 2 years, or fine, or both^[36]

Compulsory licences

A request for compulsory licence may be made by an interested person after the expiration of 3 years from the date of grant of a patent^[37] Such a request may be made under any of the following 3 grounds:

• reasonable requirements of the public with respect to the patented invention have not been satisfied;
• patented invention is not available to the public at a reasonably affordable price; and
• patented invention is not worked in the territory of India.

General principles applicable to working of patented inventions^[38]are required to be duly considered while granting compulsory licences.

The Central Government may notify that compulsory licences should be granted in respect of a patent in circumstances of national emergency, or extreme urgency, or public non-commercial use^[39]. Applications made under such a notification are required to be granted by the Controller.

A compulsory licence can be requested for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity to address public health problems^[40]provided that a compulsory licence has been granted by such country or such country has allowed importation of the patented pharmaceutical products from India.

Government use

The Central Government may use an invention for government purposes after an application is filed or a patent is granted^[41]. If, before its priority date, an invention has been recorded in a document or tried or tested by or on behalf of the Government, the use by the Government would be royalty or remuneration free. An exception to this would be cases where such recordal or trial is in consequence of communication of the invention to the Government by the patentee (or a person deriving title). In other cases, such government use would be subject to terms agreed upon between the Government and the patentee. In case of a default, terms would be determined by the relevant High Court.

The Central Government also has the power to acquire rights in an invention or a patent for a public purpose by publishing a notification in the Official Gazette^[42] The patentee is compensated.

Appeals and suits

Appeals against a decision of the Controller are required to be filed before respective High Courts^[43]. Revocation petitions are also required to be filed before respective High Courts. Infringement suits are instituted before district courts^[44], and in High Courts having original jurisdiction. Third parties have the right to institute suits for declaration as to non-infringement^[45], and for relief against groundless threats of infringement proceedings^[46]. Reliefs in infringement suits may include injunction, and either damages or account of profits^[47] An exclusive licensee has like rights as a patentee for infringement occurring after the date of the licence^[48]. Holders of a compulsory licence have the right to institute infringement suit if the patentee has refused or neglected to initiate proceedings within 2 months of the licensee notifying the patentee of infringement^[49].

Major recent developments in legislation

The Intellectual Property Appellate Board was abolished in 2021, under the Tribunals Reforms Act, 2021.

“Educational institution” was introduced as a new category of applicants, at the same level as natural persons, startups, and small entities, under the Patents (Amendment) Rules, 2021.

Conclusion

India, over the years, has come to be known as a major jurisdiction, not only in respect of protection of inventions, but also as a significant patent office, functioning as an international searching authority and an international preliminary examining authority under the PCT. The system, entirely digital, has progressively adopted technology to make the interface with stakeholders seamless. The patent system in India reflects a robust regime and strengthens India’s position as an IP friendly jurisdiction.

Footnote

[1] Patents Act, 1970, S. 2(1)(j).

[2] Patents Act, 1970, S. 48.

[3] Patents Act, 1970, S. 53.

[4] Patents Act, 1970, Ch. XI.

[5] Patents Act, 1970, Ch. XVIII

[6] Patents Act, 1970, S. 2(1)(ja).

[7] Patents Act, 1970, S. 3(b).

[8] Patents Act, 1970, S. 3(d).

[9] Patents Act, 1970, S. 4.

[10] Patents Act, 1970, S. 6 (1).

[11] Patents Act, 1970, S. 11-A and Patents Rules, 2003, R. 24.

[12] Patents Act, 1970, S. 11-B.

[13] Patents Rules, 2003, R. 24-B(1).

[14] Patents Rules, 2003, R. 24-C.

[15] Patents Rules, 2003, Rr. 24-B and 24-C.

[16] Patents Act, 1970, S. 14 and Patents Rules, 2003, R. 28)

[17] Patents Act, 1970, S. 7(2).

[18] Patents Act, 1970, S. 8.

[19] Patents Act, 1970, S. 16.

[20] Patents Act, 1970, S. 54.

[21] Patents Act, 1970, S. 55.

[22] Patents Act, 1970, S. 56.

[23] Patents Act, 1970, S. 142(4).

[24] Patents Rules, 2003, R. 80(1)

[25] Patents Rules, 2003, R. 80(1-A)

[26] Patents Act, 1970, Ss. 60, 61 and 62; Patents Rules, 2003, Rr. 84, 85 and 86.

[27] Patents Act, 1970, S. 122.

[28] Patents Act, 1970, S. 64.

[29] Dhaval Diyora v. Union of India, 2020 SCC OnLine Bom 2550.

[30] Patents Act, 1970, S. 63.

[31] Patents Act, 1970, S. 35.

[32] Patents Act, 1970, S. 36.

[33] Patents Act, 1970, S. 37.

[34] Patents Act, 1970, S. 39.

[35] Patents Act, 1970, S. 40.

[36]  Patents Act, 1970, S. 118.

[37] Patents Act, 1970, S. 84.

[38] Patents Act, 1970, S. 83.

[39] Patents Act, 1970, S. 92.

[40] Patents Act, 1970, S. 92-A.

[41] Patents Act, 1970, S. 100

[42] Patents Act, 1970, S. 100

[43] Patents Act, 1970, S. 117-

[44] Patents Act, 1970,

[45] Patents Act, 1970, S. 105

[46] Patents Act, 1970,

[47] Patents Act, 1970, S. 108

[48] Patents Act, 1970, S. 109

[49] Patents Act, 1970, S. 110

This article was originally published in SCC Online on 11 September 2023 Co-written by: J.V. Abhay, Partner and Jogeshwar Mishra, Partner. Click here for original article

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