Patent Filing and Registration Process in India

The patent filing process in India is governed by the Patents Act, 1970, and administered by the Indian Patent Office (IPO). The process involves multiple steps, from conducting a patent search to the grant of the patent.

Step 1

Patentability Assessment (Optional but Recommended)

Before filing a patent application in India, it is essential to perform a patentability assessment to determine whether an invention is eligible for patent protection under the Indian Patents Act, 1970.

🔍 What is Patentability Assessment?

Patentability assessment is the process of evaluating an invention against the legal criteria for patent protection. It helps the inventor understand whether the invention is likely to be granted a patent and guides the drafting of a strong application.

📋 Key Criteria for Patentability in India

To qualify for a patent, an invention must meet all of the following conditions:

1. Novelty (Section 2(1)(j)) 🆕

• The invention must be new, meaning it has not been disclosed anywhere in the world before the filing date.
• No prior art (existing public knowledge or use) should contain the same invention.

✅Example: A new kind of biodegradable plastic not mentioned in any previous patent, journal, or product.

2. Inventive Step / Non-Obviousness (Section 2(1) (ja)) 💡

• The invention must involve a technical advancement or economic significance and must not be obvious to a person skilled in that technical field.
• It should not be a simple modification of existing technology.

✅Example: An improved water filtration system that increases efficiency using a unique membrane structure.

3. Industrial Applicability (Section 2(1)(ac)) 🏭

• The invention must be capable of being made or used in an industry.
• Abstract ideas, theories, or scientific principles without practical application are not patentable.

✅Example: A new machine for extracting essential oils that can be used in the perfume industry.

4. Not Excluded under Sections 3 and 4 🚫

Some inventions are not patentable in India, even if they meet the above three criteria. These include:

• Section 3(d): Mere discovery of a new form of a known substance without enhanced efficacy.
• Section 3(e): A mere admixture resulting in the aggregation of properties.
• Section 3(i): Methods of treatment of humans or animals.
• Section 4: Inventions relating to atomic energy.

✅Example (Not Patentable): A new dosage form of a known medicine with no significant improvement in therapeutic effect.

📑 Why Perform a Patentability Assessment?

• Saves time and cost by avoiding unpatentable filings.
• Helps prepare a stronger and more precise application.
• Identifies possible prior art to overcome during examination.
• Assists in drafting clear claims that enhance enforceability.

🧰 Tools for Patentability Search

• Indian Patent Database: ipindiaservices.gov.in
• Google Patents: https://patents.google.com
• WIPO Patentscope: https://patentscope.wipo.int

Step 2

Drafting the Patent Application

A patent application must be carefully drafted as it determines the scope of protection. It includes:

• Title of the invention
• Field of the invention
• Background and prior art
• Summary and detailed description
• Claims (legal boundaries of the invention)

Types of Patent Applications in India

Components of a Patent Application

Step 3

Filing the Patent Application

The patent application can be filed in any of the following ways:

• Physical Filing at the Patent Office (Mumbai, Delhi, Kolkata, Chennai).
• Online Filing via the Indian Patent Office e-filing system.

📄 Forms Required for Filing:

Step 4

Publication of the Application

What is Patent Publication?

Patent publication is the official disclosure of a patent application by the Indian Patent Office (IPO). This step ensures transparency and allows third parties to assess whether the patent should be opposed.

• After filing, the application is published in the Patent Journal within 18 months.

✔ Where is it published?

• The patent application is published in the Official Patent Journal on the Indian Patent Office website (ipindia.gov.in).

✔ Why is it Important?

• It allows the public to raise objections before the grant.

Importance of Patent Publication

✔ Public Awareness: Allows the public, researchers, and competitors to learn about the invention.

✔ Prevents Duplicate Patents: Helps patent examiners check for similar inventions.

✔ Facilitates Opposition: Third parties can file pre-grant oppositions if they find the invention non-patentable.

✔ Gives Rights to Applicant: After publication, the applicant gets provisional patent rights to seek damages in case of infringement.

Early Publication of Patent (Form 9)

If an applicant does not want to wait for 18 months, they can request early publication by filing Form 9.

✔ Benefits of Early Publication:

• Speeds up the patent examination process.
• Helps secure provisional protection against infringement sooner.

✔ Timeframe for Early Publication:

• The Indian Patent Office publishes the application within one month of receiving Form 9.

✔ When is Early Publication Not Allowed?

• If the invention is against national security or public interest (e.g., defense technologies).

A published patent application contains the following details:

Effect of Publication – Provisional Rights

Once a patent application is published:

✔ The inventor gets provisional rights to claim damages for any infringement that occurs after publication.

✔ However, the inventor can only enforce rights after the patent is granted.

✔ Competitors and the public can review the application and file a pre-grant opposition (Form 7A).

How to Check the Status of a Published Patent?

You can check the publication status of a patent application on:

🔹Indian Patent Office Website: ipindia.gov.in

🔹Google Patents: patents.google.com

🔹WIPO Patentscope: wipo.int

The publication of a patent application is an essential step that ensures transparency, legal protection, and public awareness. Early publication can provide faster legal rights to the inventor, while public opposition ensures only genuine innovations receive patent protection.

Step 5

Request for Examination (RFE)

The Request for Examination (RFE) is a crucial step in the patent registration process under the Indian Patents Act, 1970. Without filing an RFE, the Indian Patent Office will not examine your patent application — regardless of whether it has been published.

🔍 What is Request for Examination (RFE)?

A Request for Examination is a formal request submitted by the applicant (or an authorized agent) asking the Indian Patent Office to begin examining the patent application to determine whether it meets the legal requirements for grant.

This examination includes a review of:

• Novelty
• Inventive step (non-obviousness)
• Industrial applicability
• Compliance with Sections 3 and 4 (non-patentable subject matter)

🕒 Timeline to File RFE

• RFE must be filed within 48 months from:
  • The date of filing of the patent application or
  • The priority date, whichever is earlier.

⚠️ Failure to file RFE within this time leads to abandonment of the application.

📄 Form and Fee

• Form 18: Used to file a standard Request for Examination.
• Form 18A: Used for Expedited Examination (available for startups, MSMEs, and international applicants under the PPH – Patent Prosecution Highway).

💰 Fee (as per the latest schedule):

• ₹4,000 (Individuals)
• ₹10,000 (Small entity)
• ₹20,000 (Other entities)

Expedited Examination has higher fees.

⚙️ Examination Procedure After Filing RFE

1. 📌 The application is queued for examination by the Controller of Patents.
2. 🧾 A First Examination Report (FER) is issued — this includes objections or clarifications required.
3. 🗓️ Applicant must respond to the FER within 6 months (extendable by 3 months).
4. ✅ If all objections are resolved, the application proceeds to grant.
5. ❌ If not resolved, the application may be rejected.

⚡ Expedited Examination (Form 18A)

You can apply for expedited examination under specific categories:

• Startup, MSME
• Female applicants
• Government-supported institutions
• Applicants who chose India as the ISA/IPEA in PCT
• Applicants eligible under PPH (e.g., Japan-India)

🕒 Time saved: Grants are typically faster under this route (as early as 12–18 months vs. several years under ordinary process).

✅ Summary

Step 6

Patent Examination

Once a Request for Examination (RFE) is filed (Form 18 or 18A), the Indian Patent Office initiates the Patent Examination process. This is one of the most critical phases in the journey of a patent application, where the invention is scrutinized to determine whether it meets the legal and technical requirements for grant.

🧾 What is Patent Examination?

Patent examination is a thorough review conducted by a Patent Examiner from the Indian Patent Office to determine if the invention:

Is novel (new),

Has an inventive step (non-obvious),

Is industrially applicable (useful),

Falls outside non-patentable subject matter (as per Sections 3 and 4 of the Patents Act, 1970),

Complies with formal and technical requirements.

🗂️ Stages of Patent Examination

1. Allocation to Examiner

Once the RFE is filed, the application is queued and assigned to a Patent Examiner.

The examination is done based on the technical field of the invention.

2. Search for Prior Art

The Examiner conducts a prior art search (existing knowledge or inventions) using global patent databases, scientific publications, etc.

The goal is to check novelty and inventive step.

3. Issuance of First Examination Report (FER)

If the Examiner finds objections or issues, a First Examination Report (FER) is issued to the applicant.

The FER includes:

• Defects in form
• Lack of novelty or inventive step
• Non-patentable subject matter
• Claim clarity or sufficiency of disclosure issues

4. Response to FER

The applicant must respond to the FER within 6 months (extendable by 3 more months).

The response includes:

• Amendments to claims (if required)
• Justifications or arguments against objections

5. Hearing (if required)

If objections persist, a hearing may be scheduled by the Controller.

The applicant presents their case to prove patentability.

6. Final Decision

Based on the response (and hearing, if any), the Controller:

Grants the patent, or

Rejects the application

    📅 Timeline

• The complete examination process may take 1 to 3 years under ordinary examination.
• Expedited examination (Form 18A) may lead to a grant within 12–18 months.
• The patent application is examined for novelty, inventive step, industrial applicability, and compliance with the Act.
• The First Examination Report (FER) is issued with objections, if any.
• The applicant must respond to objections within 6 months (extendable by 3 months).

Step 7

Pre-Grant Opposition (Optional)

Pre-grant opposition is a legal mechanism under the Indian Patents Act, 1970 that allows any person to challenge a patent application before it is granted. It helps maintain the integrity of the patent system by preventing the grant of patents that do not meet the necessary criteria.

🔍 What is Pre-Grant Opposition?

• A pre-grant opposition is a formal objection filed after the patent application is published but before the patent is granted.
• It is governed by Section 25(1) of the Patents Act, 1970.
• Any person (individual, company, or organization) can file it, not necessarily an interested party.

📅 When Can It Be Filed?

• After the publication of the patent application (i.e., 18 months after the filing or earlier if early publication is requested).
• Before the grant of the patent.

📝 Grounds for Pre-Grant Opposition (Section 25(1))

An opposition can be filed on one or more of the following 11 grounds:

1. Wrongful obtaining of the invention.
2. Prior publication (the invention was already published in India or abroad).
3. Prior claiming (the same invention was already claimed in another application).
4. Public knowledge or use before the filing date.
5. Obviousness or lack of inventive step.
6. Non-patentable subject matter under Sections 3 and 4.
7. Lack of disclosure or unclear description of the invention.
8. Non-disclosure of source/origin of biological material used.
9. Anticipation by traditional knowledge.
10. Incomplete or wrong information under Section 8 (regarding foreign filings).
11. Non-compliance with statutory requirements.

🗂️ Procedure for Pre-Grant Opposition

1. Filing Opposition Statement:
   1. File Form 7A with detailed statements and evidence supporting the opposition.
   1. No fee is required for pre-grant opposition.
2. Forwarding to Applicant:
   1. The Controller sends a copy of the opposition to the patent applicant.
3. Reply by Applicant:
   1. The applicant must file a reply and supporting documents within the stipulated time.
4. Hearing:
   1. If required, the Controller may call for a hearing between the parties.
5. Decision:
   1. The Controller may reject the application or allow it to proceed to grant, based on merit.

📌 Key Features

✅ Why is Pre-Grant Opposition Important?

• Prevents frivolous or undeserving patents.
• Protects public interest and access to technology.
• Ensures compliance with patentability criteria.
• Useful in sectors like pharmaceuticals, biotechnology, and traditional knowledge, where unjust patents can have significant impact.

📘 Example: Novartis v. Union of India (2013)

The cancer drug Glivec was opposed under Section 3(d) in a pre-grant and post-grant opposition. Eventually, the Supreme Court denied the patent, citing lack of therapeutic efficacy and attempted “evergreening.”

Step 8

Grant of Patent

The grant of a patent is the final and most crucial stage in the patenting process. Once a patent application has successfully passed examination and cleared any oppositions, the Indian Patent Office officially grants the patent to the applicant, giving them exclusive legal rights over their invention.

📜 Legal Provision

• The grant of a patent is governed by Section 43 of the Indian Patents Act, 1970.
• It states that if the application meets all the conditions under the Act, the patent shall be granted and entered in the Patent Register.

📅 When Is a Patent Granted?

A patent is granted after the following conditions are fulfilled:

1. Request for Examination (RFE) has been filed and examined.
2. All objections (if any) raised in the First Examination Report (FER) are resolved.
3. No pre-grant opposition is pending, or if filed, is resolved in favor of the applicant.
4. The invention is found to be novel, non-obvious, and industrially applicable.

🧾 Steps Leading to Grant

🏛️ What Happens Upon Grant?

1. Patent Certificate Issued:
   The Indian Patent Office issues an official certificate of grant to the applicant.
2. Publication in Patent Journal:
   The grant is published in the Official Patent Journal, and the status of the application changes to “Granted”.
3. Patent Number Assigned:
   The application receives a unique patent number.
4. Patent Term Begins:
   The term of the patent begins from the date of filing (not the grant date) and is valid for 20 years (subject to renewal).

🔐 Rights Conferred Upon Grant

Once granted, the patentee has:

• Exclusive rights to make, use, sell, or license the invention.
• The right to sue for infringement in case of unauthorized use.
• The ability to commercialize or assign the patent.

Step 9

Post-Grant Compliance

Once a patent is granted in India, the journey doesn’t end there. The patentee (the person or entity who owns the patent) must comply with certain post-grant legal obligations to maintain and enforce their rights. These are known as Post-Grant Compliance Requirements.

📜 Legal Framework

These obligations are mainly governed by:

• The Patents Act, 1970
• The Patents Rules, 2003 (amended from time to time)

📌 Key Post-Grant Compliance Requirements

🔁 1. Renewal of Patent (Maintenance Fees)

• What? Patents are valid for 20 years from the filing date, but renewal fees must be paid annually starting from the 3rd year.
• When? Due before the expiration of the second year (for the 3rd year) and so on.
• Late Fee? A 6-month grace period is allowed with a late fee.
• Form Required: Form 4

📝 2. Working of Patent (Form 27)

• Why? To ensure the patent is being worked (used/commercialized) in India.
• When? Every financial year, to be submitted by September 30 of the next year.
• Form: Form 27
• Details Needed:
  • Whether the invention was worked in India.
  • Revenue/royalties generated.
  • Licensing details.

Non-compliance may attract penalties or even compulsory licensing.

🔁 3. Recordal of Assignment or License

• If the patent is assigned, sold, or licensed, the change must be recorded.
• Use Form 16 for assignments.
• Must be done within a reasonable time.
• Helps third parties know who legally owns or uses the patent.

⚖️ 4. Post-Grant Opposition (Section 25(2))

• Can be filed by an interested party within 12 months from the publication of the grant.
• Grounds are similar to pre-grant opposition (e.g., lack of novelty, obviousness, etc.).
• The Opposition Board examines and recommends, and the Controller makes the final decision.

👨‍⚖️ 5. Patent Infringement Litigation

          Once granted:

• The patentee has the exclusive right to prevent others from making, using, selling, or importing the patented invention.
• They can file civil suits for infringement in District Courts or High Courts.
• Remedies may include injunctions, damages, or account of profits.

➕ 6. Patent of Addition

• If an improvement or modification of an already granted patent is invented, a patent of addition can be filed.
• No renewal fee is required separately.
• Valid as long as the main patent is valid.

🚫 Consequences of Non-Compliance

• Lapse of Patent: Failure to pay renewal fees = patent lapses.
• Compulsory Licensing: If patent not worked, a third party may seek a license.
• Legal Disadvantage: Infringement suits may weaken if Form 27 is not filed.

📌 Summary