In summary
This article provides an overview of patent prosecution under Indian patent law. In India, patent prosecution is regulated by the Patents Act 1970. The patent prosecution process includes various steps and procedures, from filing a patent application to obtaining a grant of a patent. The whole process can be complex and time-consuming, however, understanding the various steps involved and the requirement at each stage is essential to ensure a successful outcome.
Discussion points
- Types of patents granted in India.
- Time and costs involved in getting a patent granted in India.
- Types of patent applications that can be filed in India.
- Examination trends and procedures that potential applicants need to know.
- Procedures related to appeals against patent office decisions, oppositions, and invalidations.
- Recent developments in different prosecution aspects due to recent court decisions.
Referenced in this article.
- Ferid Allani v Union of India
- Microsoft v Assistant Controller of Patents
- Boehringer v Controller of Patents
- Syngenta v Controller of Patents and Designs
- Nippon v Controller of Patents
- Allergan v Controller of Patents
- OpenTV v Controller of Patents
Types of patents granted in India.
India grants patents for inventions relating to products and processes. For products protected by a patent, the patentee has the exclusive right to prevent third parties from making, using, offering for sale, selling, or importing for those purposes that product in India. For a process protected by a patent, the patentee has the exclusive right to prevent third parties from using that process, and from using, offering for sale, selling, or importing for those purposes the product obtained directly by that process in India. India does not have provisions for utility models (also known as petty patents).
Patents are granted for inventions across all areas of science and technology, except those relating to non-patentable subject matters in India. Under the Indian Patents Act 1970, an ‘invention’ means a new product or process involving an inventive step and capable of industrial application. An invention is any invention or technology that has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application.
The inventive step is a feature of an invention that requires having technical knowledge to complete, as opposed to basic knowledge or having economic significance, or both, and that feature makes the invention not obvious to a person skilled in the art.
‘Capability for industrial application’ means that the invention is capable of being made or used in industry.
The following are not patentable under the Indian Patents Act 1970:
- inventions that go against natural laws;
- anything contrary to public order or morality or anything that is harmful;
- discoveries or theories;
- discoveries of new forms, properties or uses of a known substance;
- uses of a known process or machine;
- substances obtained by an admixture;
- arrangements of known devices;
- methods of agriculture or horticulture;
- methods of treatment;
- plants and animals;
- mathematical methods;
- business methods;
- computer programs per se;
- algorithms;
- aesthetic creations;
- schemes or rules;
- methods of performing a mental act;
- methods of playing a game;
- presentations of information;
- topographies of integrated circuits;
- traditional knowledge; and
- inventions relating to atomic energy.
The Indian Patent Office (IPO) generally objects to the subject matter eligibility of computer-related inventions (CRIs) under section 3(k) of the Patents Act 1970, which bars the patentability of inventions directed towards ‘a mathematical or business method or a computer program per se or algorithm’. The IPO has also issued separate guidelines for the examination of CRIs, which emphasise that while examining CRIs, examiners should focus on ascertaining the substance of the claim as a whole and not the form of the claim. If, in substance, the invention is technical and the invention achieves a ‘technical effect’, then the invention does not fall under excluded subject matter. Recently, in May 2023, while referring to Ferid Allani v Union of India,[1] the IP Division of the Delhi High Court affirmed in Microsoft v Assistant Controller of Patents[2] that if the subject matter is implemented on a general-purpose computer, but results in a technical effect that improves the computer system’s functionality and effectiveness, the claimed invention cannot be rejected on non-patentability as a computer program per se. India’s stand on CRIs is similar to the European and UK position.
In the field of pharmaceutical drugs, to prevent patent evergreening, section 3(d) of the Patents Act 1970 excludes, inter alia, inventions that relate to the ‘mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance’ from patentability. Here, ‘efficacy’ means therapeutic efficacy according to the case law.
Further, any invention that relates to a process for the medical treatment of human beings or animals is excluded from patentable subject matter under section 3(i) of the Patents Act 1970. While methods of treatment are non-patentable subject matter, medical devices do not fall under this category.
Time and costs involved in getting a patent granted in India.
Following continuous efforts, the long backlog of patent applications pending for examination has been largely cleared. Currently, it takes about three years for a patent to be granted in India, provided the applicant completes all actions in a timely manner. Expedited examination is also available, but only to a select category of applicants upon the payment of an additional fee. Under expedited examination, a patent can be granted within a year.
For official fee calculation purposes, applicants are either: natural persons, start-ups, small entities, or educational institutions; or all others that do not fit into the first category (eg, large entities). The applicants that fall under the first category get an approximate 0 per cent discount on the official fee. Foreign applicants can also avail themselves of the benefit of the discounted fee provided they belong in the first category of applicants. There is a surcharge of 10 per cent on the official fee for all physical filings, to promote the e-filing of documents.
The overall cost of obtaining a patent in India is less than in the United States and Europe. As English language filings are acceptable, there are no additional costs for translation at the time of filing or prosecution. The end-to-end cost of obtaining protection in India is generally between US$3,000 and US$4,000.
Types of patent applications that can be filed in India.
To get a patent in India, every complete specification must:
- fully and in detail describe the invention, its operation or use, and how to use it; and
- disclose the best way to use the invention that is known to the applicant and for which they are entitled to claim protection.
Further, the claims must relate to a single invention, or to a group of inventions linked by a single inventive concept; they must be clear and succinct; and they must be fairly based on the matter disclosed in the specification.
The following five types of patent applications can be filed in India:
- ordinary applications;
- conventional applications;
- Patent Cooperation Treaty national phase applications;
- divisional applications; and
- patents of addition.
Only an ordinary application can be filed with a provisional specification. All other types of applications can be filed with a complete specification only.
A divisional application can be filed by the applicant voluntarily or to remedy the objection on the unity of the invention at any time before the patent is granted. As per settled jurisprudence, divisional applications cannot contain claims that were not claimed in the parent application. However, this stand has been recently referred to be considered afresh by a division bench of the Delhi High Court.
A patent of addition, which is similar to a continuation-in-part application, can be filed regarding any improvement or modification of an invention described or disclosed in the complete specification filed for the main invention. A patent of addition cannot be granted for the main invention before a patent is.
There is no provision under the Indian Patents Act 1970 for a continuation application to claim any unclaimed subject matter. In fact, what is not claimed is considered as disclaimed under the doctrine of disclaimer.
Examination trends and procedures that potential applicants need to know.
The application is examined by the IPO after a request for examination or expedited examination is filed. Once the application is examined, a first examination report (FER) is issued by the IPO listing various objections. The applicant is required to file a response to the FER within six months, which can be further extended once by a maximum of three months, provided that a request for extension is filed before the expiry of the initial six-month period. Thereafter, the IPO examines the response and proceeds to grant a patent if all the objections have been addressed and there are no new objections based on the response.
Alternatively, if some objections have not been addressed or the IPO raises new objections based on the response, a hearing notice is issued, providing the applicant at least 10 days’ notice in advance of the hearing. During the hearing, objections raised in the hearing notice are discussed, and the applicant or applicant’s agent presents their case before the Controller in charge of the application. After the hearing, the applicant is required to file written submissions within 15 days of the date of the hearing. Thereafter, the IPO examines the submissions filed by the applicant and proceeds to grant a patent if all the objections raised in the hearing notice have been addressed by the applicant. If the IPO does not agree with the submissions, the application is refused.
Reduced backlog
The completion time of a patent application in India now is substantially less than in recent years. Thanks to extensive recruitment at the IPO and other procedural reforms, the average time to complete an application has been reduced from seven to eight years (the average prosecution time a decade ago) to two to three years.
Divisional applications
India does not have provisions for continuation applications, and a divisional application filed for merely prolonging the patent prosecution is not maintainable. Divisional application claims need to be directed towards a distinct invention, which is different to the parent application claims. The legal position related to the filing and maintainability of divisional applications in India is witnessing a rollercoaster ride as of now. In July 2022, the IP Division of the Delhi High Court in Boehringer v Controller of Patents[3] held that divisional application claims need to be divided from parent application claims. Therefore, a divisional application claiming any unclaimed subject matter from the parent application is likely not maintainable. The High Court also disallowed the duplication of the claims in the parent and divisional applications.
Recently, in July 2023, another judge of the IP Division in Syngenta v Controller of Patents and Designs[4] found that the aforesaid legal position appears to be not supported by the statutory provisions and therefore referred that question before the Chief Justice of the High Court, for constituting a two-judge Bench to examine the issues related to the filing of voluntary divisional applications and on the maintainability of claims in divisional that are carved out from the disclosure and not necessarily from claims of the parent application. It is hoped that the larger bench will clear all of the mist that shrouds the correct legal position on divisional applications under Indian patent laws.
Amendments
Provisions relating to claim amendments require that amended claims do not go beyond the scope of the original claims and are supported by the specification. That is why replacement or addition of claims is generally not permissible. In July 2022, the IP Division of the Delhi High Court in Nippon v Controller of Patents,[5] held that amendments to patent specifications or claims before the patent is granted must be construed more liberally than narrowly. Nothing new can be inserted, but if an amendment restricts claims to disclosures already made, the amendment ought not to be rejected, especially before the grant of a patent.
The aforesaid view was affirmed by the IP Division of the Delhi High Court in January 2023 in Allergan v Controller of Patents[6], where it was held that the exact scope of the claims have to be understood in light of the complete specification and that the claims and complete specification are to be read as a whole. Further, recently in May 2023, the IP Division of the Delhi High Court in OpenTV v Controller of Patents[7] held that reduction or narrowing down of a claim is permissible, but broadening, widening or expansion of a claim is not permissible. Thus, amendments are permissible for claims so long as the said amendments are within the scope of the originally filed claims.
Procedures related to appeals against patent office decisions, oppositions, and invalidations.
Once an application is refused by the IPO, an applicant has two options: review the refusal order or appeal against the refusal order. A review petition can be filed at the IPO within one month of the date of the refusal order. The review petition is placed before the same Controller of the IPO who refused the application. Accordingly, the review petition should be filed only in cases where there is an apparent error in the refusal order or the Controller is willing to consider the review petition on merits, or both. On the other hand, an appeal can be filed before the high court within three months of the date of the refusal order. If the appeal is allowed by the relevant high court, the refusal order is set aside, and the matter is sent back to the IPO for re-examination.
A pre-grant opposition can be filed by any person after the publication of an application and before the patent is granted on any of the grounds provided under the Patents Act 1970. Given recent court orders, anonymous oppositions ought to be discouraged by the IPO. After consideration of the maintainability of the pre-grant opposition, the IPO issues a notice of opposition to the applicant. The applicant is required to file a reply statement within three months of the date of such notice. Thereafter, after hearing both parties, the Controller issues an order either granting a patent or refusing the application.
A post-grant opposition can only be filed by an interested person within one year of the date of publication of the grant of a patent. The patentee is required to file a statement of reply within two months of the date of receipt of the opponent’s written statement in support of the opposition. The opponent can file a reply to the statement of reply of the patentee within one month of the date of receipt of the patentee’s statement of reply. The Controller then appoints an opposition board that examines the notice of opposition, along with documents filed by both parties, and submits a report with reasons on each ground taken in the notice of opposition with its joint recommendation within three months of the date on which the documents were forwarded to them. Thereafter, the Controller, after hearing both parties, either rejects the opposition or revokes the patent.
India does not have any provisions for the re-examination of a patent. However, provisions for pre-grant opposition proceedings any time before the grant, post-grant opposition proceedings up to one year after the grant and revocation proceedings any time after the grant have been provided under the Patents Act 1970, to accommodate third-party representations at various stages of the patent life cycle and at different forums.
A petition for the revocation of a patent can be filed by an interested person or by the government before a high court with jurisdiction. The petition for revocation of a patent also lies with the high court if a counterclaim regarding the validity of a patent is made by the defendant in a suit for infringement of that patent. The procedure to be followed for the disposal of such cases is provided under the Commercial Courts Act 2015, as intellectual property-related cases are considered commercial matters, and therefore, the speedy disposal of such matters happens as mandated by the Commercial Courts Act 2015.
A patent can also be revoked under the following conditions:
- revocation of a patent owing to the non-workability under section 85 of the of the Patents Act 1970;
- revocation of a patent in public interest by the government under section 66 of the Patents Act 1970; and
- in cases relating to atomic energy on the directions of the government under section 65 of the Patents Act 1970.
After the abolishment of the erstwhile Intellectual Property Appellate Board (IPAB), which used to take care of revocation matters, the jurisdiction of these cases has been transferred to the high courts. The Delhi High Court (DHC), in February 2022, created the IP Division (IPD) for handling all intellectual property rights (IPR) matters, including those that are to be transferred from the IPAB. To date, more than 45 per cent of the patent appeals transferred from IPAB to the IPD have been disposed of.
Recently, in April 2023, the Madras High Court also created an Intellectual Property Division. Other high courts in the country are also expected to soon set up IP divisions.
The Patents Act 1970 provides that an order from the Controller in respect of a post-grant opposition can be appealed before the High Court within three months of the date of the order. The Act does not expressly provide that a pre-grant opposition order is appealable. However, in practice, the pre-grant opposition order can be appealed considering this as an order under section 15 of the Patents Act 1970, which is a usual order of the Controller either allowing or refusing an application. Further, the writ jurisdiction of the high courts can also be availed against such orders rejecting the application. The Patents Act 1970 also does not expressly provide that a revocation order can be appealed. However, in practice, an order of the high court in a revocation petition can be appealed by the aggrieved party under the letters patent appeal before a division bench of the same high court.
India does not have any provisions for the extension of the term of a patent beyond 20 years from the date of filing or priority, whichever is earlier.
Under section 8(1) of the Patents Act, an applicant is required to furnish the status or details of corresponding foreign applications within six months of the date of filing the application in India or the date of filing the corresponding foreign application, whichever is later. The applicants should diligently file the status of the applications at regular intervals because non-filing of this information is also a ground for opposition or revocation. Under section 8(2) of the Patents Act, applicants are required to submit, only when asked by the IPO, allowed claims and office actions from other jurisdictions with English translations if required.
Further, patentees and licensees are required to submit annual working statements indicating whether the patented invention has been worked or not. Non-submission of the working statement attracts penalties. The format of the working statement has been simplified and is still under discussion for further improvements.
Conclusion
India has come a long way in the protection of patent rights in terms of progressive changes to adopt best practices and improve procedures. With the establishment of the dedicated IP Divisions in the high courts and the landmark decisions issued by them, the patent prosecution and enforcement landscape in India is set to further improve. The IPO has also taken significant steps to reduce the overall patent prosecution time in the country. It is hoped that India will soon be one of the top jurisdictions of choice for applicants to protect and commercialise their patents.
First published by: IAM Media here
Footnotes
[1] Ferid Allani v Union of India and Ors, 2019 SCC OnLine Del 11867.
[2] Microsoft Technology Licensing, LLC v The Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 2772.
[3] Boehringer Ingelheim International GMBH v The Controller of Patents, 2022 SCC OnLine Del 3777.
[4] Syngenta Ltd v Controller of Patents and Designs, 2023 SCC OnLine Del 4366.
[5] Nippon A And L Inc v The Controller of Patents, 2022 SCC OnLine Del 1909.
[6] Allergan Inc v The Controller of Patents, 2023 SCC OnLine Del 295.
[7] Open TV Inc v Controller of Patents and Designs and Anr, 2023 SCC OnLine Del 2771.
