The word “patent” originated from the Latin word “patere” meaning of which is “to lay open,” or to make available for public at large.

A ‘Patent’ is an exclusive right of the inventor to prevents any other person from making use of the patented invention in an unauthorized manner. Patent protection extends upto 20 years from the date of filling of the application with complete specification.

Patents are territorial; the patent protection is, therefore, only in those countries where the applicant has actually applied and received patent protection. Thus, a person who has obtained patent protection in America and India, cannot stop a person in Japan from using his invention. However, he has full rights to prevent anyone in any of those countries from using his invention.

In India, Patents are governed by Indian Patents Act, 1970. A person who has obtained a patent is called “Patentee” or a “Patent-holder.”

Patentability Criteria

Before, applying for a patent, one must always check if the invention passes the Patentability Criteria.

• Subject – matter: The subject of the invention should not be non-patentable i.e., it should not fall under the purview of Section 3 and 4 of the Indian Patent Act, 1970.
• Novelty – The invention should essentially be new or something that was not known before. An improved version of already existing things is also considered valid.
• Utility – The said invention must also be capable of industrial applicability.
• Non – obviousness – It should not be prior art and not obvious to anyone who is ordinarily experienced in the field.

All of these criteria must be fulfilled, failure to meet even one of these can lead to revocation or opposition to grant of patent.

Procedure to Obtain a Patent

 The procedure to obtain a patent begins with application for patent followed by different stages like publication, examination, opposition and finally ends with the grant of patent. It is a tedious process involving a great amount of time and money.

So let us understand the procedure to obtain a patent in a detailed manner.

The steps of obtaining a patent are:

1. Application for patent
2. Provisional and Complete Specifications
3. Publication
4. Examination
5. Opposition
6. Grant

1.     APPLICATION FOR PATENT

The first step in the procedure, it to make an application for the grant of patent.

Who can apply? – Sec 6 of Indian Patents Act, 1970

Under Sec. 6 a Patent Application for an invention can be made by any of the following persons:

• True and first inventor of the invention​
• Assignee of the true and first inventor
• The legal representative of any deceased person who immediately before his death was entitled to make such an application

This patent application can be made singly by one inventor or jointly by 2 or more inventors.

Canadian General Electric v. Fada Radio[1]– Where two persons have made the same invention independently and not disclosed it then the inventor who applied first for the patent is to be taken as the first and true inventor of the invention, irrespective of the fact that he made the invention later than the other inventor.

Form of Application

According to Section 7, there must be only 1 invention in an application; unlike trademarks one cannot register multiple marks in one application. The application is to be made at the Patent Office or Online. Under the Patents Act, 1970 patent offices are established at Kolkata, Mumbai, Chennai and New Delhi.  An application for a patent is to be made in the prescribed form in the appropriate patent office. Every such application must be made to the office in which jurisdiction lies: where the inventor resides or where the invention is made or where the business of the inventor is located. Eg: For a person whose business is in Bengaluru, he should make the patent application to Chennai Office.

Every international application made under the Patent Cooperation Treaty (PCT) designating India, a corresponding application is to be filed before the Controller General of Patents, Designs and Trade Marks in India. The filing date of such application and its complete specification shall be the international filing date accorded under the PCT. An applicant in respect of an international application designating India has to pay the prescribed national fee and other fee to the patent office within the prescribed time. If the international application is not filed or published in English, then a translation of the application in English, duly verified by the applicant or the person duly authorized by him that the contents thereof are correct and complete is required.

Where an application is made by the assignee, he has to submit the proof of assignment along with the application thereof.

2. PROVISIONAL AND COMPLETE SPECIFICATION – sec. 9 to 11

Every patent application form must be made along with provisional or complete specifications. Specification is a technical document that describes the invention. These specifications contain name of the inventor, full disclosure of the invention and its operation, the claims made, undertaking that he is the true inventor etc. Sometimes they may also include related developments.

 Provisional specifications are those specifications that give incomplete or preliminary details of the invention. The purpose of Provisional specification is to get priority over other inventors who may make applications for similar inventions.

Complete Specifications give the complete details of the invention.

Essential Requirements of Complete Specification  – Sec 10

Every complete specification is to:

• describe the invention and its operation or use and the method by which it is to be performed;
• disclose the best method of use of the invention;
• include claim(s) that outline the scope of the invention;
• be accompanied by an abstract to provide technical information on the invention

The complete specification must be such that they tell an ordinarily skilled person in the field, how to use the invention, what is the best way to operate such an invention. If the complete specifications do not inform about these things properly, the grant of patent may be opposed on this ground.

If complete specification is not made within 12 months from the date of provisional specification, then the application is abandoned.

In F Hoffmann-la Roche Ltd. and Anr. V. Cipla Limited[2], the court held that the application of anyone desirous of seeking patent has to contain specifications that are to conform to the requirements of Section 10.

Complete specifications must be in line with the provisional specifications. If the complete specifications are completely different from provisional specifications, then the application can be abandoned.

Bajaj Auto Ltd. v. TVS Motor Co. Ltd.[3] – It has been held that the final specifications cannot be invalidated merely because it gives wider construction than provisional specification.

3. PUBLICATION OF THE APPLICATION – Sec.11A

As per Sec. 11A, every application, that is not restricted by the Act, shall be published within the prescribed period from the date of application. However, an early publication is possible; the applicant must make and application for early publication and pay the prescribed fees.

Exceptions to publication of the applications–

• in which secrecy direction is imposed under section 35; or
• has been abandoned under Section 9(1); or
• has been withdrawn 3 months prior to the prescribed period as aforesaid.

From the date of publication, the applicant has the rights of patent like it has already been granted. However, he has no power to institute any infringement proceedings until actual grant of the patent.

4.EXAMINATION OF THE APPLICATION

Request for Examination–Sec. 11B – No application for a patent is to be examined unless the applicant or any other interested person makes a request for such examination. In case the application or any other interested person does not make a request for examination of the application for a patent within 48 months, then the application is to be considered withdrawn.

First Examination Report (FER) – Sec. 12 – The Controller refers a Patent Examiner to the application. Patent Examiner, within 1 month from such appointment, has to give the First Examination Report as to:

• Whether the application & specification are in accordance with the requirements of the Act.
• Whether there are any lawful grounds of objection.
• The result of investigation made under S.13

Search for Anticipation (sec.13):  The Examiner has to search whether the invention is already patented by any previous application or whether the claims made in the application are the claims in any of the previous patents. Search for anticipation is done to ensure, that the invention is question is essentially a new one. The following are not said to be anticipated:

• Previous communication to govt. – Sec 30:
• Public display in exhibition – S.31
• Public Working , if reasonably necessary – 32

Mariappan v. AR Safiullah[4] – Suppose the examiner reports that there is no anticipation for that particular app., but there turns out to be one. The Central Govt. or any other officers cannot be held liable for the same. This is provided under S. 13(4). 

Power of the Controller to accept, dispose or suggest amendments to the application:

Upon receiving the FER, the Controller has power to dispose of or advice and amendments to the application. He must hear the applicant before rejecting. If the Controller finds that the application or any specification or any other document does not comply with the requirements of the Act, the Controller may refuse the application or may require the application, specification or other documents to be amended to his satisfaction before he proceeds with the application and refuse the application on failure of the applicant to do so.

5.OPPOSITION

Opposition proceedings mean the administrative procedure available in most jurisdictions that allow for third parties to formally challenge the granted patent or the pending application for a patent. The purpose is to filter useless, incomplete, or untrue claims. Therefore, it is called litmus test for the patent applications.

There are 2 types of Opposition proceedings – Pre-grant and Post-grant Opposition.

PRE-GRANT OPPOSITION – SEC. 25(1)

• Can be instituted by any person
• It is done after the publication and before the grant of patent. Preferably, within 6 months from the publication date.
• Necessary to obtain complete specification; not possible with only the abstract
• Filed by Form 7A

POST-GRANT OPPOSTION – SEC. 25(2)

• Done after the grant of Patent within 1 year ( Mitra & Co.Pvt.Ltd vs Asst. Controller Of Patents[5]).
• Only by interested parties
• By Form 7.

Grounds for opposition

Section 25(1) (a) to (k) of the Patent Act provides a list of the grounds on which a patent application can be opposed. These grounds are:

1.Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the opponent. 

2.Prior publication: The invention was published before the priority date (earliest filing date which discloses the invention) as subjected to Section 29 of the Act, that provides which publication does not constitute an anticipation.

3.Prior claim: The invention was previously claimed in another Indian patent application, which was published on or after the priority date of the applicant’s claim but whose priority date is earlier than that of the applicant.

4.Prior knowledge or use: The invention is known or used by the public before the priority date. In the case of a process that is being patented, it is deemed to have been publicly known or used if a product made by that process was imported in India, before the first date of filing of the application.

Ravi Kamal Bali v. Kala Tech and Ors[6] – Plaintiff used to sell “tech locks”, a patented lock/seal that was tamperproof. The defendants allegedly were selling a similar thing under the name of “Seal tech”. The plaintiff brought a suit for infringement of patent. The defendants claimed that their product was essentially different from that of the plaintiff’s because they had used a different metal to make their spring and also that the products were different even in exterior looks. The Court applied the Doctrine of Equivalents and held that the defendants were indeed infringing the patent of the plaintiff. Merely, because the product looks different or has used some other metal, it does not become a different product while its functioning and principle are all the same.

5.Obviousness: The invention is obvious and does not involve any inventive step. This means that no advancements have been to the existing use or literature on the subject.

6.Non-patentable subject matter: The subject of the application is not considered to be an invention under the Patent Act or falls in the category of “non-patentable inventions”.

Diamond v. Chakrabarty[7]– The scientists sought to obtain a patent for a modified bacterium, which enabled it to breakdown components of crude oil. The grant of patent was opposed on the grounds of it being a living thing which cannot be patented. The Court found the bacterium modified as the inventors had added plasmids. Held that it could be patented since it was a non-naturally occurring manufacture or a composition of human ingenuity having distinct character and use.

7.Insufficient description: The patent specification does not properly explain the invention or the method of performing it.

Star Textile Engg Work Ltd. V. James Mackie Holding ltd[8]– When there is proof of insufficient description that cannot enable a person skilled in the field of the invention to operate the invention, then it can be revoked.

8.Non-disclosure: The applicant does not disclose all that is required of him to be disclosed under complete specification.

9.False disclosure: Provision of materially false information in the application.

10.Time limit: If complete specification is not made within 12 months from the date of provisional specification; convention applications must be made offline at the Indian Office within 12 months from the date of international filing.

11.Biological material: The specification failed to disclose the origin or source of the biological material, if any, used in making the invention or has mentioned the incorrect source.

12.Traditional knowledge: The invention is actually a part of the ancient knowledge of indigenous communities.

Turmeric Case[9] – University of Mississippi obtained a patent for “wound healing properties” of turmeric. CSIR, India challenged the grant of patent on the grounds that it was traditional knowledge of India. They were able to prove it with ancient texts and therefore, USPTO revoked the patent granted to them.

Neem Case – WR Grace and the Dept. of Agriculture, USA made a discovery of Antifungal property of neem. They developed a technology with neem-oil formulation to prevent the growth of fungi and they filed an application to obtain a patent over this technology. Indian opposed the grant of patent on the grounds that it is traditional knowledge; already known to India through ancient texts.

Novartis AG v. UOI[10] – Novartis AG’s applied for a patent on a product named Gleevec/Glivec, used for treating blood cancer (leukamia) and Gastro-Intestinal Stromal Tumours (GIST). The Cancer Patients Aid Association of India, Mumbai, and the companies producing the generic versions of the product opposed the grant of patent as it lacked novelty, was obvious to a person skilled in the art; it was considered by them as a mere “new form” of a “known substance” which did not lead to enhancement in the efficacy of the substance. The Patent Office refused to grant patent for it did not meet the requirement of the section 3(d).

Rebuttals of oppositions: A notice of opposition by any person who is interested is allowed within 3 months from the date of publication in the Official Gazette. A copy of such notice of opposition shall be  sent to the applicant to show cause. The applicant may file a reply statement within a month from the date of receipt of the copy. Then the process of providing evidences and hearing goes on. The matter is heard and decided. 

Telefonaktiebolaget LM Ericson v. UOI[11] – When the applicant doesn’t show anything to prove wrong the objections in the FER, the application is deemed to be abandoned.

6.GRANT OF PATENT

If the application is in order and the Controller also does not refuse it, then the Patent should be granted as soon as possible – S. 43

It has to be under the seal of the patent office. The Date of the patent is the date of complete specification. Upon the grant of patent, the Controller shall publish the fact that the patent has been granted and also the application, specification and other related documents for public inspection.

CONCLUSION

This is the procedure to obtain a patent in India. It is a very time-consuming and expensive process. At every stage of application, fees are required to be paid; failure to make any due request or payment of fees can cause for the application to be abandoned.

One has to carefully word the specification and the claims thereby, because they are the ones on which opposition proceedings are instituted. If there is any similarity to any prior patent, then sufficient amendments must be made so as to remove those similarities.

Once, the patent has been granted the patentee has exclusive rights to use his invention. He can prevent anyone from using his invention.

[1]  [1927] S.C.R. 520.

[2] (2008) 37 PTC 71 (Del)

[3] CIVIL APPEAL No. 6309 of 2009 (Arising out of S.L.P.(C) No.13933 of 2009)

[4] 2008 (38) PTC 341 (Mad.).

[5] S.L.P. (C) No.15727 of 2008

[6] (2008) 38 PTC 435.

[7] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[8] O.O.C.S. No. 551 of 1977 Calcutta High Court.

[9] Case of the Turmeric Patent (1997, USPTO)

[10] Novartis AG v. UOI, 13 S.C.R. 148

[11] W.P.(C) No. 9126 of 2009

Procedure To Obtain A Patent And The Importance (ppt format)

Written by Aparna Gupta, University Law College and Dept. of Studies in Law, Bangalore University