Procedure To Obtain a Patent

1. Filing the Patent Application

    
   • Section 6 of the Patents Act, 1970, specifies the eligible applicants, including the true and first inventor, an assignee (someone to whom the rights have been assigned), or the legal representative of a deceased inventor. It can also be made jointly by 2 or more inventors.
   • The application must be submitted in the prescribed form and filed at the appropriate patent office. The Head Office of the Patent Office is in Kolkata and its Branch offices are located in Chennai, New Delhi, and Mumbai.
   • For international applications filed under the Patent Cooperation Treaty (PCT) designating India, a corresponding national phase application must be filed with the Controller General of Patents, Designs, and Trade Marks in India, along with the prescribed fees and necessary translations (if required).
      

2. Types of Patent Applications

   Specification is a technical document that describes the invention. These specifications contain the 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. The Patents Act provides for two types:
   1. Provisional Specification (Section 9): It is a preliminary disclosure of the invention, serving to establish an early priority date. It should include a brief description of the invention and any relevant drawings or illustrations. The purpose of a provisional specification is to secure a filing date and protect the applicant's position against potential subsequent filers of similar inventions.
   2. Complete Specification (Sections 10 and 11): It is a comprehensive and detailed disclosure of the invention. It should provide a detailed description of the invention, the best method of performing or using the invention, clearly defined claims outlining the scope of the invention, and an abstract summarizing the technical details. The complete specification is subjected to examination and forms the basis for the patent grant. It must be filed within 12 months of the filing date of the provisional specification. Failure to file the complete specification within this time frame will result in the abandonment of the application.
    

3. Publication of the Application (Section 11A)

   • After filing, the patent application is published in the official journal (patent gazette) within 18 months from the filing date or priority date, whichever is earlier.
   • This publication serves to notify the public about the pending patent application and allows interested parties to access its details.
   • Certain exceptions apply to the publication requirement: Applications subject to secrecy directions under Section 35, abandoned applications under Section 9(1), or those withdrawn within three months before the prescribed publication period are not published.
    

4. Examination of the Application

   • No patent application is automatically examined unless the applicant or any other interested party requests an examination by filing Form 18 within 48 months from the filing date.
   • If no request for examination is made within this period, the application is considered withdrawn under Section 11B.
   • Upon receiving the request for examination, the Controller appoints a Patent Examiner to conduct a thorough examination of the application. The Examiner issues a First Examination Report (FER) within one month, highlighting any objections or deficiencies in the application, including non-compliance with legal requirements, lack of novelty, or insufficient disclosure.
   • The FER also includes the results of the search for anticipation (prior art) conducted under Section 13. This search aims to determine if the invention is already patented or if the claims are present in previous patents, ensuring the novelty of the invention.
    

5. Meeting the Objections of the Examination Report

   • Upon receiving the FER, the applicant has an opportunity to respond to the objections raised within the prescribed time limit, typically 6 months, extendable by an additional 3 months.
   • The applicant can submit amendments, additional information, or arguments to address the objections identified by the Examiner.
   • If the applicant's response is unsatisfactory, the Controller may issue a hearing notice, allowing the applicant or their patent agent to present arguments and address any remaining objections during a hearing.
    

6. Pre-grant Opposition (Section 25(1))

   • After the publication of the patent application, the Patents Act provides for a pre-grant opposition procedure.
   • Any person can file a pre-grant opposition by submitting a notice of opposition within 3 months from the publication date.
   • The purpose of pre-grant opposition is to allow third parties to challenge the grant of the patent before it is issued. This process acts as a safeguard against the issuance of patents that may be invalid or unsuitable for protection.
    

7. Grounds for Opposition (Section 25(1)(a) to (k))

   1. Wrongful obtainment of the invention
   2. Prior publication or public knowledge of the invention
   3. Lack of novelty or inventive step
   4. Insufficient description or non-disclosure in the specification
   5. Subject matter not considered an invention or falling under non-patentable categories
   6. Failure to disclose the source of biological material used in the invention
   7. Inclusion of traditional knowledge without proper acknowledgment
   Novartis AG v. UOI. The Supreme Court judgment in 2013 upheld the rejection of a patent for Novartis' beta crystalline form of the cancer drug Imatinib Mesylate (Glivec). The Court interpreted Section 3(d) of the Patents Act strictly, ruling that new forms of known substances are not patentable unless they show significantly enhanced therapeutic efficacy. This prevented the evergreening of patents and balanced innovation with access to affordable medicines by upholding India's strict patentability criteria.  

8. Examination of Pre-grant Opposition

   • Upon receiving a notice of opposition, the Controller sends a copy to the applicant, who can file a reply statement within one month.
   • The Controller examines the opposition, considering the evidence and arguments from both parties, and may conduct hearings if necessary.
    

9. Consideration of Pre-grant Opposition

   • If the opposition is found to be valid, the Controller may refuse to grant the patent or require amendments to the application to address the objections raised.
   • However, if the opposition is deemed unjustified, the Controller may proceed with granting the patent.
    

10. Grant of a Patent (Section 43)

    • If the application meets all the legal requirements and no valid opposition is upheld, the Controller grants the patent.
    • The granted patent is issued under the seal of the Patent Office, and its date is the date of the complete specification.
     

11. Post-grant Opposition (Section 25(2))

    • Even after the grant of a patent, the Patents Act provides for a post-grant opposition procedure.
    • Any interested party can file a post-grant opposition within one year from the date of publication of the grant.
    • The grounds for post-grant opposition are similar to those for pre-grant opposition, allowing interested parties to challenge the validity of the granted patent.
    • This mechanism ensures that patents that may have been granted erroneously or in violation of the legal requirements can be rectified or revoked.
     

12. Terms of Patent

    • According to the Patents Act, a patent in India is generally granted for a term of 20 years from the filing date of the application.
    • The patent's validity is subject to the timely payment of renewal fees at prescribed intervals throughout its term.
    • Failure to pay the renewal fees can lead to the lapse or expiration of the patent, as stipulated in Section 53 of the Patents Act and the Patent Rules.

Withdraw Patent Application

• A request for the withdrawal of the application can be filed within 15 months of the date of filing or date of priority, whichever is earlier and accordingly the application will not be published and be treated as withdrawn.
   
• An applicant can withdraw the application before the issuance of the First Examination Report. However, on withdrawal of the application, the applicant can claim a refund of up to 90% of the examination fees.
   
• An applicant can withdraw the application any time after its filing but before the grant of the patent by making a request. There is no fee for withdrawing the application. And also there is no refund of the examination fee.

Patent Infringement:

Patent infringement refers to the unauthorized use, manufacture, sale, or importation of a patented invention without the consent of the patent owner. It is a violation of the exclusive rights granted to the patentee under the Patents Act, 1970.

Types of Patent Infringement

1. Direct Infringement: Direct infringement occurs when a person or entity directly performs one or more of the patented acts without the permission of the patent owner. This includes making, using, offering for sale, selling, or importing the patented invention within the territorial limits of India, as specified in Section 48.
   • Example: Company A holds a patent for a specific drug formulation. If Company B manufactures and sells the same drug formulation without permission from Company A, it constitutes direct infringement.
      
2. Indirect Infringement: Section 107A, Indirect infringement involves facilitating or contributing to the direct infringement by another party. It includes inducing or aiding and abetting the infringement of a patent by others. Substantially similar product (mostly by accidents) is created because the indirect infringer had supplied some necessary components to make the substantially similar product, and the manufacturer ended up making the same without the full set of necessary permissions (licences) for each of the patented components.
   • Example: Company X supplies a key component specifically designed for a patented product to Company Y, knowing that Company Y will use it to manufacture the patented product without permission, thereby indirectly contributing to the infringement.
      
3. Literal Infringement: Literal infringement is the type of direct patent infringement where every component of the patent specifications is taken to constitute the infringing product or process. In other words, all the claims in the patent specification match the features of the infringing product or process.
   • Example: Company P holds a patent for a process with specific steps A, B, C, and D. If Company Q uses a process that includes all the steps A, B, C, and D exactly as claimed in the patent, it is a case of literal infringement.
      
4. Non-literal Infringement (Doctrine of Equivalents): Non-literal infringement is the type of patent infringement where the infringer has made an equivalent product or process to the patented product or process and has been using, selling, marketing, offering for sale, or importing the same without permission of the patentee during the term of such a patent.
   • Example: Company R holds a patent for a widget with three specific components. Company S manufactures a widget with two of the components being identical and the third component being a minor variation that performs substantially the same function in substantially the same way.
      
5. Willful Infringement: Willful infringement is the type of patent infringement in which the infringer intentionally or willfully disregards and violates the patent rights of the patentee. In other words, if the infringer had knowledge of the patent and still violated the same.
   • Example: Company T receives a notice from Company U, the patent owner, informing them about their patent and demanding them to stop infringing activities. However, Company T continues to manufacture and sell the patented product despite being aware of the consequences, constituting willful infringement.
      
6. Contributory Infringement: Contributory infringement occurs when a person or entity supplies or sells a component or material that is specifically designed for use in the patented invention, knowing that it will be used for infringing purposes. Section 107A(c) of the Patents Act addresses contributory infringement.
   • Example: Company V supplies a unique component that has no substantial non-infringing use to Company W, knowing that Company W will use it to manufacture a patented product without permission. This could be considered contributory infringement by Company V.

 

Remedies

Civil Remedies:

• Injunctions (Section 108): A patent owner can seek a temporary or permanent injunction from the court to prevent further infringement of the patent.
• Damages (Section 108): The patent owner can claim damages from the infringer for the losses suffered due to the infringement. The court can award damages or a share of the profits earned by the infringer, whichever is higher. In cases of willful infringement, the court may increase the damages up to 3 times the amount initially awarded.
• Delivery or Destruction of Infringing Goods (Section 108): The court can order the delivery or destruction of infringing goods, materials, or articles used for the infringement.
• Costs (Section 35): The patent owner can claim the costs of the legal proceedings from the infringer.

Criminal Remedies:

• Imprisonment (Section 118): If the infringement is committed knowingly, the punishment can be imprisonment for a term of up to 2 years, a fine, or both.
• Fine (Section 118): In addition to or instead of imprisonment, the court can impose a fine on the infringer. The fine amount is determined by the court.
• False Marking (Section 119): It is an offense to falsely represent that an article is patented in India when it is not. The punishment can be a fine that may extend to 1 lakh rupees.

What Does Not Amount to Infringement
Section 107A incorporates bolar provision and provision for parallel imports:

• Bolar Provision: It gives rights to the manufacturers of pharmaceutical products to research various patented products so that the products can be brought to market for the welfare of the general public. However, this research can only come into effect after the expiry of the patented product.
   
• Parallel Import Provisions: This gives the right to import the product from the person authorized by the patentee. This meant any person could import patented products from the person who has the due authorization or license without seeking permission from the patentee, and this would not be considered an infringement.

Doctrine of Equivalents
The Doctrine of Equivalents is a legal concept used in patent law that allows a patent holder to claim infringement by a product or process that is not literally identical to the patented invention, but is equivalent in function, use, or result. This doctrine is intended to prevent others from making minor changes to a patented invention in order to avoid infringement. The Doctrine of Equivalents is applied on a case-by-case basis and is determined by considering the scope of the patent claims, the function of the patented invention, and the similarities between the patented invention and the accused infringing product or process.

Doctrine of Colourable Variation
A colourable variation is an immaterial or insignificant variation. According to the doctrine of colourable variation, if the infringer makes a slight modification to the patented product or process but, in fact, takes in substance the essential features of the patented invention, then it shall constitute patent infringement under the doctrine of colourable variation. The Doctrine of Colourable Variation is recognized by Indian courts in determining patent infringement.

• Lektophone Corporation v. The Rola Company (1930), the patentee had a patent for a sound-reproducing instrument where size was essential. The alleged infringer made a smaller version of the same component. The court held that this colourable variation, altering the essential feature, did not infringe the patent under the Doctrine of Colourable Variation.

Patent Licensing
Patent licensing is a legal agreement between a patent owner and another party, in which the patent owner grants permission to the other party to use, manufacture, sell, or import the patented invention for a specified period of time. The terms of the license, including the scope of the rights granted, the duration of the license, and the payment of royalties, are negotiated between the parties and outlined in a written agreement called a license agreement.

According to the Indian Patents Act, 1970, the term of a patent is 20 years from the date of filing of the patent application. However, the patent owner can grant licenses to third parties at any time during the term of the patent. The license agreement can also be extended or renewed upon mutual agreement between the parties.

The Indian Patents Act recognizes two types of licenses:

• A Voluntary License is a license granted by the patent owner to another party to use, manufacture, or sell the patented invention. The terms of the license are negotiated between the parties and can be exclusive or non-exclusive. The patent owner can grant a voluntary license at any time during the term of the patent.
   
• A Compulsory License is a license granted by the government to a third party to use, manufacture, or sell the patented invention without the consent of the patent owner. The Indian Patents Act provides for certain grounds on which a compulsory license can be granted, such as non-working of the patent, public interest, and national emergency. The term of a compulsory license is determined by the Controller General of Patents, Designs and Trademarks and can be for a period of up to five years, but may be extended for further periods.