Patent Registration and eFiling in India

Patent Registration - An Overview

A patent is a right granted to an individual or enterprise by the government which excludes others from making, using, selling, or importing the patented product or process without prior approval.

Patent filing or patent registration is the first step an inventor takes to protect his/her invention from being misused. Patent filing in India is a fairly complicated ordeal, however, with the right legal guidance, it can be done easily. Any business entity or an individual who believes in securing their patent should get a legal consultation from expert patent practitioners such as ours. Vakilsearch helps you with the simplest way for Patent Registration.

A patent can be filed by any individual or business that wants to protect an invention or an idea. An invention can be a new product or a new process.

Benefits of Patent Filing

The following are some of the advantages of patent filing in India:

• A patent is a form of encouragement for innovations and inventions. Once an applicant is granted the patent, he or she becomes the exclusive owner of the invention or the idea
• Patent Filing in India is important for a business as the patent restricts its competitors from copying, selling, or importing its intellectual property without prior permission. This way the patent holder can protect their patent rights in support of the existing laws of the land
• Patents can be sold and licensed like other forms of property
• A patent is just like any other intellectual property and can be transferred by the inventor
• A patented product is likely to improve brand perception and potentially enable your business to charge a premium
• With exclusive patient rights, the owner of the patent controls the use of the invention for twenty years or longer.

Documents Required for Patent Registration in India

• Application form in duplicate (Form 1)
• The provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months (Form 2)
• Drawing in duplicate (if necessary)
• Abstract of the invention in duplicate
• Information & undertaking listing the number, Patent filing date, & current status of each foreign patent application (if such exist) in duplicate (Form 3)
• Priority document (if the priority date is claimed) in convention application, when directed by the Controller
• Declaration of inventor-ship where the provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5)
• Power of attorney (if filed through any patent agent)
• Fees (to be paid in cash/by cheque/by demand draft).

How to apply for a patent ?A Step-by-Step Guide.

For design registration in India, you must submit the specified forms at the patent office. If you own a digital certificate of Class 3, you can easily submit it online.

In the case of online applications, the patent office will be charging an additional 10% as the fee. The step-by-step process of how to patent your idea or invention/intellectual property is mentioned below:

Step 1: Patent Search

For a successful Patent Registration in India, you need to ensure that your invention/idea is non-obvious and unique. Carrying out a patent search will help you to ensure this and also to avoid lengthy official procedures. You can search for yourself or can take professional help from experts. You can also conduct a patent search with the help of experts.

You may skip the below-mentioned steps if you come across a similar patent registered already.

Step 2: Apply for design patent

For patent e filing in India, one of the most crucial aspects to consider is the preparation of patent specifications. The entire process of drafting a patent specification is a specialized task that can be done best by experienced professionals only.

• Ideation: Here, you need to pen down the idea or concept, clearly mentioning the key details about the invention and the desired patent.
• Visualisation: Visualise your idea and elements in the form of diagrams that explain more about the invention.
• Verification and Patentability Search: The next step is to verify whether your invention is patentable as per provisions mentioned in the Indian Patent Act. Your ideas/inventions must meet the patentability requirements such as:
  • Novelty
  • Non-obviousness
  • Usefulness
  • Patentable subject matter

Drafting a patent application is an art in itself. Seeking the help of a patent professional will be a wise choice here. If you are in the initial stages of the research and development process, then it is best to file an optional preliminary application called the provisional patent application.

Step 3: Preparation of a Patentability Report

Authorized patent professionals or patent agents will then do extensive research and prepare the patentability report that contains the analyses based on the above-mentioned criteria. You should also attach all the specified documents along with the patent application. Have a thorough check on the documents before submission, to avoid any rejection in the future.

Step 4: Publication of Patent Application

The application is then published in the Patent Journal within 18 months. A request for early filing of the patent application can be made along with a prescribed fee.

Publication of Filed Patent

• For patent registration in India, the Indian patent office keeps every patent application confidential until it gets officially published in the patent journal
• The publication of a filed patent happens automatically after 18 months from filing the applications, and there is no need for any request to be raised
• To get the patent published in advance, the applicant has to initiate a formal request and it will get published within 1 month of the request
• The publication date does matter the most as the inventor is entitled to protect his work legally, immediately after the publication.

Step 5: Patent Examination

There would be a formal submission of a request for the patent examination which must be filed within 48 months from the first filing of the patent (provisional patent or complete patent). If the applicant fails to file within the time frame specified in the Patent Act, the application will be treated as withdrawn by the patent office. The examiner then conducts a comprehensive investigation and releases the first examination report called patent prosecution.

Step 6: Patent Objections

It is common for patent applicants to receive objections, like “inconsistent or unclear claims” or “inventions lacking novelty”, etc. Hence, it is mandatory to analyze the patent examination report and draft a proper response to the objections.

Step 7: Grant of Patent

Once all the patentability requirements are met, the notification to grant a patent will be published in the patent journal.

Benefits of Filing a Provisional Patent

A provisional patent application secures your date and work. This means that none of your competitors can file for a similar invention once you file for a provisional patent application.

• As India follows the first-to-file system, this ensures that the holder of the provisional patent stand a good chance of being granted the permanent patent
• There is a buffer time of 12 months to further develop your invention and to specify the complete details. The application gets abandoned upon expiry of 12 months of the application
• The cost and resource involved for provisional patent application are less when compared to the permanent patent
• The provisional specification helps you assess the market potential of your invention before taking the final plunge and filing a complete specification
• Once you are ready with your R&D and your invention’s detailed specifications, you can go in for a complete patent application.

Patent Registration Facts That Will Astound You

Let us look at some fascinating patent facts:

DePenning & DePenning and Indian Intellectual Property Law

On 3 March 1856, George Alfred DePenning, a civil engineer and inventor from Calcutta, India, submitted a petition for exclusive privileges under this Act for his invention, which he named 'An Efficient Punkah-Pulling Machine.' This was the first petition filed under the Act, and it was given the number No.1 of 1856.

George DePenning's personal experience with these petitions made him aware of the difficulties that other inventors face when it comes to patenting new innovations. Therefore, he decided to offer his services to them. As a result, DePenning & DePenning was established in 1856.

DePenning & DePenning is not only India's oldest IP firm, but also the only one that has been in continuous operation for over a century. Thanks to a business strategy based on a wise blend of a strong local presence and strategic contacts at the regional and global levels, it today ranks first in size and experience, servicing clients all over the world.

Basmati Rice Patent

In late 1997, Ricetec Inc, a US-based international corporation headquartered in Texas, received a patent from the US Patent and Trademark Office (USPTO) for a 'new grain' called 'Basmati.'

The Research Foundation for Science, the Centre for Food Safety, and the Centre for Scientific and Industrial Research all objected to RiceTec's use of the brand Basmati for rice developed from Indian rice but not of the same grade as Basmati.

This was found to be a violation of the concept of GIs (Geographical Indicators) and hence a misrepresentation to customers, resulting in the denial of all granted patent rights.

Turmeric Patent

Two Indians from the University of Mississippi Medical Center received U.S. Patent No. 5,401,504 in 1995 for the ‘Use of Turmeric in Wound Healing.' The claim was for ‘a method of enhancing wound healing by providing turmeric to a patient suffering from a wound.' This patent granted them exclusive rights to market and distribute turmeric.

In 1996, CSIR India petitioned the USPTO to revoke the patent due to the existence of patent claims. Documented evidence of traditional knowledge was provided by the CSIR, which included ancient Sanskrit writings and a report published in the Journal of the Indian Medical Association in 1953. The patent was cancelled in 1997 when the USPTO determined that there was no innovation.

The Glossary

Abstract

The section of a patent that provides a brief summary of the invention described in a patent.

Application

A document submitted to the patent office of a country to describe an invention for which a patent is sought.

Claim

A statement that defines the invention protected by a patent.

Intellectual property

A generic description encompassing patents, trademarks, copyrights, and other available forms of protection for the products of mental work.

Licence (of patent)

An agreement, usually in writing, in which the owner of a patent grants to another party the right to practice the patented invention without giving up ownership of the patent. A licence may be granted to the party on an exclusive or nonexclusive basis.

Novelty

A basic requirement for a claimed invention to be patentable.

Priority (claim to priority)

The claim in a patent application to the benefit of the filing date of an earlier filed patent application for the same invention.

Rejection (of claim)

A statement by an examiner that a claim in a patent application is not patentable for a reason specified by the examiner.

Specification

The portion of a patent application that describes in writing the invention, including the background of the invention.