BUSINESS BRIEF: INDIA
BUSINESS BRIEF: INDIA Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
“Anything that won't sell, I don't want to invent. Its sale is proof of utility, and utility is success.”— Tomas A. Edison
Te Patent regime in India is governed by Te Patent Act, 1970. Te Patent Rules of 2003 are also provided to supplement the Patent Act. In year 2005, India amended its laws to comply with its obligations under TRIPS and to be at par with other countries. In India, a patent can be secured for a term of 20 years.
Stages for obtaining a patent in India Te following are the successive stages for obtaining a patent in India:
1) Prior art search—We strongly recommend conducting a search and analysing not only the patentability of the invention but also how it should be positioned while draſting.
2) Filing an application for patent accompanied by either a provisional specification or a complete specification—Te provisional specification is required to include the following:
(i) Title (ii) Background of the invention
(iii) Objective and detailed description of the invention
(iv) Drawings (if any)
Tere is no mandatory requirement for the claims to be filed at this stage.
3) Filing the final application within 12 months of filing the provisional application—Te complete specification should fulfil the requirement of reduction to practise the invention, that enables the public to recreate
the invention as envisaged, when it enters the public domain pursuant to expiry of the patent term. It should be accompanied by ‘claims’ outlining the scope and extent of the protection sought for the invention.
4) Publication of the patent in the official journal for initiating third party opposition (if any)
5) Request for examination—(Form 18 and Fee of INR 2,500 [$54])
6) Fast track examination is possible (only for Patent Cooperation Treaty [PCT] national phase applications)—(Form 18 and Fee of INR 3,500 [$70])
7) Overcoming oppositions, if any, prior to grant of patent
8) Examination of the application by the Indian Patent Office (IPO)
9) Acceptance of the application aſter clearance of objections, if any
10) Sealing of grant of patent
11) Post-grant opposition—Post amendment of the Indian patent regime in 2005, India has introduced a ‘blended’ system of both pre- grant and post-grant opposition, whereby an interested person may within one year from the date of publication of grant of the patent file an opposition against the same. Tus, a patent could be revoked even aſter being granted.
National or international coverage Whether to file or not to file for patent protection in a particular country is a business-driven decision depending on factors like business expansion, target markets, possibility of licensing out, etc. India is a signatory to the PCT. International filing proves to be a simpler and economical procedure for those seeking protection in numerous countries.
However, subject matter such as pure soſtware, business methods, treatment of diseases, etc
120 World Intellectual Property Review Annual 2013
(Section 3 of the Patent Act 1970) is not patentable in India. Tus, the same, if originating in India, can be filed in other countries only pursuant to seeking permission of the IPO (Form 25).
What are the costs for obtaining a patent, and what are the costs of defending it?
Te statutory fee for obtaining a patent in India depends on the category of applicant making the application. Te IPO has categorised applicants into two categories: ‘natural persons’ and ‘other than natural persons’. Any individual(s) applying for a patent is considered as a natural person. Te remaining will be categorised in the latter category.
Te IPO collects four times the fee from entities falling under the category of ‘other than natural persons’ as compared to applicants who are natural persons at every stage of obtaining the patent. Te statutory fees in relation to a natural person for procuring a patent in India are as set out below:
•
Filing patent application—A nominal fee of INR 1,000 ($22) has to be paid by a natural person while submitting a patent application in the IPO.
• Early publication (Form 9)—An optional fee of INR 2,500 ($54) may be paid if an applicant wishes to have his patent application published early to expedite the process.
• Request for examination of patent application (Form 18)—A mandatory fee payment of INR 2,500 ($54) has to be made pursuant to which the patent application is lined up for examination. Tis fee is to be mandatorily paid within 48 months
from the date of
priority otherwise the application is treated as abandoned. Tere is no provision in the statute to revive the same, if not filed.
• Additional cost for additional pages of specification—Te IPO accepts a patent specification, which has up to 30 sheets without charging any extra fee. However, for a specification
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